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
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
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
Lounie: Isn't a flexible rule, no rule? Didn't Pfaff say we need
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
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
Bryson: Doesn't continuation strategy covers applicant's rights.
Lounie: Shouldn't broad protection be obtained in a continuation
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],
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