Johnson & Johnson Associates Inc., v. R.E. Service Co., Inc.

Johnson & Johnson Associates Inc., v. R.E. Service Co., Inc.
285 F.3d 1046 (Fed. Cir. 2002)

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 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.

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.