Johnson & Johnson Associates Inc., v. R.E. Service Co., Inc.
285 F.3d 1046 (Fed. Cir. 2002)
Johnson & Johnson applied
for a patent on method for printing circuit boards.
The specification said that
a number of materials could be used as the substrate, but the claims only
talked about using aluminum for a substrate.
RES began manufacturing very
similar circuit boards that used steel as a substrate. Johnson &
Johnson sued for infringement.
Johnson & Johnson argued
that the differences between steel and aluminum were very minor, and so
it was infringing via the Doctrine of Equivalents.
The Doctrine of
Equivalents says that a product or
process that does not literally infringe upon the express terms of a
patent claim may nonetheless be found to infringe if there is an equivalence between the elements of the accused product
or process and the claimed elements of the patented invention.
RES argued that when Johnson
& Johnson willfully limited their patent to aluminum, they dedicated
any unclaimed substrates (like copper) to the public.
That's known as the Dedication
Doctrine, which basically says that
anything disclosed in the specification but not claimed must be meant to
be dedicated to the public.
See Maxwell v. J. Baker,
Inc. (86 F.3d 1098 (1996)), and YBM
Magnex, Inc. v. Int'l Trade Comm'n
(145 F.3d 1317 (1998)).
The Trial Court found for
Johnson & Johnson. RES appealed.
The Trial Court found that
the Doctrine of Equivalents
The Appellate Court reversed.
The Appellate Court found
that the Dedication Doctrine was
good law, and that it was mean to discourage patent applicants from
presenting a broad disclosure in the specification and then filing narrow
claims to stop the USPTO from examining the broad claims that could have
been claimed by the broad specification.
The Court found that in
order for the Dedication Doctrine
to apply there has to be multiple distinct embodiments in the
specification where only one is claimed, not a single broad embodiment
with a narrower claim.
So, follow Maxwell where there were two different ways to tie
shoes together but Maxwell only claimed one, don't follow Magnex where there was a broad range of a chemical
disclosed in the specification, but only a narrow range claimed.
The Court noted that if an
inventor makes a broad claim that gets struck down and they are forced to
settle for a narrow claim, things in the denied claim are not considered dedicated like the things they didn't claim at all.
See Graver Tank v. Linde
Air Products Co. (339 U.S. 605
The Court looked at the
wording of Johnson & Johnson specification, which explicitly said
that steel and nickel could be used as a substrate. Since Johnson &
Johnson had disclosed those materials, but never claimed them, they must
have meant to dedicate them to the public.
Therefore the Dedication
Doctrine applies and Johnson &
Johnson cannot assert the Doctrine of Equivalents against RES.
In a concurrence it was argued
that the Dedication Doctrine is
really nothing more than a foreseeability argument. Clearly Johnson &
Johnson foresaw the use of steel since they talked about it. Since the Doctrine
of Equivalents is mostly limited to
unforeseeable differences, Johnson & Johnson shouldn't be allowed to
apply it against RES.