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Issue 13 | April 1, 2002
CAFC Further Narrows D.O.E.

Johnson & Johnson Associates v. R.E. Service Co., Inc. et al. (Fed. Cir. en banc, Mar. 28, 2002): Establishes per se rule that the doctrine of equivalents does not protect subject matter that is expressly disclosed but not claimed in a patent.

U.S. Patent No. 5,153,050 ("the `050 patent") relates to the manufacture of printed circuit boards, and more specifically to techniques for handling extremely thin sheets of copper foil during the layering process used to make printed circuit boards. According to the invention, the fragile copper foil is adhered to a relatively stiff substrate sheet during the handling process. The specification states that the substrate is preferably made of aluminum, but also noted that other metals such as steel can be used. However, the claims clearly and expressly recited the use of only aluminum as the substrate. The court's decision makes no reference to any significant prosecution history aside from such disclosure of the specification.

The undisputed evidence showed that the accused product used substrate made of steel, and did not use aluminum. The jury found willful infringement under the doctrine of equivalents. The district court entered final judgment in accord with the jury's verdict. However the Federal Circuit, ruling en banc, reversed and held that there could be no infringement as a matter of law because the pertinent subject matter (i.e., steel substrate) was disclosed in the specification, but not claimed by the patent, and was therefore dedicated to the public. The decision squarely addresses the conflict between Maxwell v. Baker, 86 F.3d 1098 (Fed. Cir. 1996) and YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d. 1317 (Fed. Cir. 1998), and strongly resolves the conflict in Maxwell's favor. ("To the extent that YBM Magnex conflicts with this holding, this en banc court now overrules that case.")

In a 12 to 1 per curiam decision, the en banc Court held that "a patentee cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalence to establish infringement because the specification discloses equivalents. 'Such a result would merely encourage a patent applicant to present a broad disclosure in the specification of the application and file narrow claims, avoiding examination of broader claims that the applicant could have filed consistent with the specification. (citing Maxwell v. Baker, 86 F.3d 1098 (Fed. Cir. 1996). . . . Having disclosed without claiming steel substrates, [patentee] cannot now invoke the doctrine of equivalents to extend its aluminum limitation to encompass steel. Thus, [patentee] cannot assert the doctrine of equivalents to cover the disclosed but unclaimed steel substrates."

Judge Newman, author of the YBM Magnex decision, was the sole dissenting vote in the present case. In a separate dissent, Judge Newman argues that the present decision is contrary to Graver Tank; but the rest of en banc panel concludes either that Graver Tank did not decide the question now presented or that Graver Tank is consistent with the decision now reached.

To discuss this topic further, please contact the author, Daniel A. Boehnen, at McDonnell Boehnen Hulbert & Berghoff. The information contained in this email 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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