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Issue 2 | October 8, 2001
This Week In The Federal Circuit


Summary: On Wednesday, October 3, the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., heard oral arguments en banc in Johnson & Johnston v. RE Services, Inc. The Court went en banc to consider whether subject matter that is disclosed in a patent but not literally claimed could be covered by the patent under the Doctrine of Equivalents (DOE) in a patent infringement suit. Many perceive a conflict between the YBM case, which permitted such coverage, and Maxwell v. Baker, which did not. At face value, the Judges' questions at this week's oral argument seemed to lean toward prohibiting such coverage.

Details: Three different rules have been proposed regarding whether the doctrine of equivalents (DOE) is available to reach subject matter that is disclosed in the specification but not literally claimed. The three rules were discussed in the oral argument of Johnson & Johnston as follows:

First proposed rule: DOE is available unless the subject matter was disclosed as an alternative. This is the YBM rule and is the most encompassing of the three rules under consideration at this time. It garnered almost no discussion at the oral argument and could possibly be overruled by the en banc court.

Second proposed rule: DOE is not available unless the subject matter was stated in the specification to be an equivalent. This is the rule proposed by the patentee, Johnson & Johnston. It appears that Johnson & Johnston could embrace neither YBM nor Maxwell because it might well lose under either of those rules as they are often interpreted.

Third proposed rule: DOE is not available. This is generally viewed as the Maxwell rule and is the most restrictive. It garners support from many of the Judges because it is clear and because patent applicants can often file continuation or reissue applications to cover the disclosed but unclaimed subject matter. Some of the judges posited that this rule might be mandated by 35 USC 112, second paragraph, since applicants must set forth in the claims the subject matter they regard as their invention.

Johnson & Johnston argued that the third rule is inconsistent with Graver Tank which appeared to permit the DOE to reach subject matter disclosed but not claimed. Some judges believed that some of the other, invalid, claims in the Graver Tank patent were broad enough to encompass the equivalent subject matter, thus removing it from the whole "disclosed but not claimed" issue. But Judge Dyk stated that he had reviewed the patent at issue in Graver Tank and could not find such generic claims. Since Graver Tank's majority did not address this issue, the Federal Circuit may feel unfettered by Graver Tank. This is a likely issue for any certiori petition.

Some of the Judge's questions at oral argument were along the following lines of inquiry:

Michel: What if appellant intends the disclosed equivalent to be covered?
Archer: What if equivalent alternative is not disclosed but is known in the art?
Michel: Why not have a rebuttable presumption?
Lounie: Doesn't flexible rule defeat the purpose of examination?
Lounie: What about MPEP's requirement for the Examiner to consider equivalents?
Neuman: Why should we permit such a "knock-off" - and this is a "knockoff"
Neuman: Isn't this an economic policy question?
Neuman: We've had the flexible rule for some time, since Graver. Michele: Does 112 - 2 by itself justify Maxwell?
Michele: Shouldn't an inventor distinctly claim an invention?
Clevenger: Hasn't steel been claimed in a continuation application?
Linn: Why can't the public simply look to the specification for information as to what is equivalent?
Linn: "Dedicated" is wrong because now we have multiple applications.
Lounie: Isn't a flexible rule, no rule? Didn't Pfaff say we need bright lines?
Lounie: Graham v. Deere said "public property."
Dyk: I've read the '960 patent from Graver and it has no generic claim to metal silicate in the context of the litigated claim; and it has no suggestion in the spec of equivalency. Graver's '960 patent only claims metal silicate in combination with other things.
Clevenger: The world will never know how to interpret a claim. Why isn't applicant adequately protected by continuation?
Rader: Since you can't import limitations, how can you import breadth?
Bryson: Doesn't continuation strategy covers applicant's rights.
Lounie: Shouldn't broad protection be obtained in a continuation application?
Linn: If an applicant can disclose that something is an equivalent, why can't the applicant be expected to literally claim it?
Archer: Doesn't 112-2 limit coverage?

To discuss the topic above further, please contact the author, James T Carmichael at Lyon & Lyon LLP [JTCarmichael@LYONLYON.com], http://www.lyonlyon.com

The information contained in this e-mail is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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