On March 28, an en banc Federal Circuit voted 12-1 in Johnson & Johnston Associates, Inc. v. R. E. Service Co., Inc. n2 to uphold the rule of law announced in Maxwell v. Baker n3 that if an inventor discloses an embodiment of an invention in a patent, but fails to claim (or attempt to claim) that embodiment, then the embodiment is dedicated to the public. Infringement of that embodiment cannot be asserted by the patentee through the doctrine of equivalents. At the most basic level, Johnson & Johnston sought to resolve an apparent conflict between Maxwell and YBM Magnex. n4 At this basic level, Johnson & Johnston establishes that YBM Magnex does not limit Maxwell. At a higher level, the en banc Federal Circuit tried to reconcile the rule of law of Maxwell with Graver Tank-II, n5 and, in this, the result is more problematic. There is separately an issue of the rule of law of Maxwell with certain text that appears in Warner-Jenkinson. n6
The closest intellectual antecedent to the Johnson and Johnston per curiam opinion is the dissent of Justice Black in Graver-II (333 U.S. at 612-619). Justice Black noted that "it is the claim which measures the grant to the patentee" and observes that "what is not specifically claimed is dedicated to the public." Justice Black observed that the claims at issue were merely to compositions [e.g., claim 22: A finely-divided unbonded fusible electric welding composition containing a fluoride and a major proportion of an alkaline earth metal silicate.] However, distinct from the per curiam opinion, Justice Black asserted that the failure to specifically claim manganese was intentional: "In view of the intense study and experimentation of respondent's assignors with manganese silicate, it would be frivolous to contend that failure specifically to include that substance in a precise claim was unintentional. Nor does respondent attempt to give that or any other explanation for its omission." At district court, the defendants had asserted anticipation by prior patents teaching manganese but the district court incorporated a limitation from the specification (acidic and basic constituents be prefused or reacted (86 F. Supp. at 200), which element is not in the composition claims, to defeat anticipation; the district court also compared the accused product (Lincolnweld) to patentee's product (Unionmelt) (86 F. Supp. at 199). The district court relied on the disclosure in the specification to establish equivalents: "no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent of calcium or magnesium . . . the fact than manganese is a proper substitute . . . is fully disclosed in the specification." [Although the district court did not rely on claims which encompassed manganese, note separately the text in Goodyear, 102 U.S. at 227, "He would be [protected against equivalents], whether he had claimed them or not."]
Intent
The per curiam opinion in Johnson & Johnston asserts that the intent of the patentee does not play a role in the Maxwell test. Footnote 1 states:
Nor does this court agree that intent plays any role in the Maxwell rule. To the contrary, one of the advantages of the Maxwell rule is that it is a purely objective test. The patentee's subjective intent is irrelevant to determining whether unclaimed subject matter has been disclosed and therefore dedicated to the public.
However, Judge Dyk's concurring opinion noted:
In other words, I understand the majority to say that the dedication rule is a species of conscious waiver. The patentee has control over the drafting of the claims, and if he discloses but omits to claim certain subject matter, he will be held to have waived the right to capture the disclosed matter under the doctrine of equivalents, and to have dedicated it to the public.
If the dedication rule is a species of "conscious waiver," then one might be looking into the intent of the patentee. While this might be done by objectively viewing the writing of the patentee, there is a broad spectrum of activities. Thus, although one might easily say that the unclaimed subject matter in the Maxwell case was consciously waived, there is great difficulty in asserting that the "unclaimed" subject matter in the Brunswick case was waived, either subjectively or objectively. In Brunswick Corp. v. U.S., 46 USPQ2d 1447 (CAFC 1998) [unpublished], the disqualifying disclosure was somewhat buried in the specification, and required conversion from one unit of measurement (power attenuation/absorption, arguably an extensive unit) to another (surface resistivity, arguably an intensive unit).
Prior Disclosure
As to Graver-II, the per curiam opinion maintained that manganese silicate had been claimed in the broader generic claims to "silicates" and "metallic silicates," which were invalidated in Graver-I for lack of enablement.
The text in footnote 1 states:
This court respectfully disagrees with the statement in the dissent that: "There was no claim to manganese silicate." As earlier explained, composition claims 24 and 26 comprising "silicates" and "metallic silicates" were broad enough to encompass manganese silicate. Therefore, our holding today is in no way in conflict with Graver Tank.
However, the dissent in Graver-II had raised the issue that explicit claims to manganese silicate had been avoided specifically because of prior art in the area. Justice Black, in dissent, wrote: "But the similar use of manganese in prior expired patents, referred to in the Court's opinion, raises far more than a suspicion that its elimination from the valid claims stemmed from fear that its inclusion by name might result in denial or subsequent invalidation of respondent's patent." 85 USPQ at 333.
Foreseeability, Knowledge and Timing
There seems to be tension between the foreseeability test mentioned in the concurring opinion of Rader and text in the concurring opinion of Dyk. Separately, there may be tension with the foreseeability test and text in Warner-Jenkinson.
Thus, Judge Rader states:
This reconciling principle is simple: the doctrine of equivalents does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims.
On the other hand, Judge Dyk quotes from Graver-II at page 612:
It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to and could be substituted for magnesium in the composition of the patented flux and their observations were confirmed by the literature of chemistry.
Judge Dyk also notes:
Ironically it was the respondent (the patentee) that argued that the patent disclosed the equivalent subject matter and that the "substitution was expressly taught by the patent as an equivalent composition. See also Resp. Br. at 21 ("[The] substitution [was one that] the patent itself teaches.") The patentee explicitly urged that, because of the disclosure in the specification, "[the] patentees expected, and these infringers were on notice, that the claims were intended to cover not only the compositions literally within their scope but their equivalents as well." Resp. Br. at 73. The patentee went on to argue that the dedication argument had not been properly raised below.
If the disclosures of the prior art made clear that manganese silicate was useful in welding compositions, then the patent drafter could have foreseen this and included such in the claims.
The dissent in Graver-II argued that the patent drafter did not do so, because of the prior art.
Separately, Judge Newman's dissent brought up the inconsistency with text in Warner-Jenkinson:
The Court held that "rejecting the [argument that equivalency is limited to known equivalents] necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent." 520 U.S. at 37. Thus the Court explicitly recognized that equivalents that are actually disclosed in the patent can infringe under the doctrine of equivalents.
If Johnson & Johnston means that embodiments that are disclosed, but not claimed, are dedicated to the public (and not within the scope of the doctrine of equivalents), why was it necessary for the Supreme Court to reject the argument that equivalents must be actually disclosed in the patent for such equivalents to infringe? If disclosure without claiming means no equivalent infringement, then there is no need to reject the idea that equivalents must be disclosed for infringement. There could be no infringement under the doctrine of equivalents because they are disclosed.
In allowing that equivalents could extend to a substitution that was neither known nor disclosed in the patent, the Warner-Jenkinson court encompassed text of the U.S. Supreme Court in Halliburton Oil Well Cementing, 329 U.S. at 13, shortly before Graver II, that:
The alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was not known at the date of Walker's patent as a proper substitute for the resonator; or (3) had been actually invented after the date of the patent. [underlining added]
However, the Warner-Jenkinson court did not limit equivalents only to that which was not known at the time of the patent.
Written Description in the Enzo Case
Written Description in the Enzo Case
In Enzo Biochem v. Gen-Probe, 2002 US App LEXIS 5642, the Federal Circuit discussed aspects of the "written description" requirement. Merely reproducing text from the specification in the claim does not automatically satisfy written description:
We also conclude that Enzo's claims do not meet the written description requirement simply because they are in ipsis verbis supported by the specification. Even if a claim is supported by the specification, the language of the claim must describe the invention so that one skilled in the art can recognize what is claimed. The appearance of the words of the claim in the specification or as an original claim does not necessarily satisfy that requirement. Indeed, in Eli Lilly, we were faced with another set of facts in which the words of the claim alone did not convey an adequate description of the invention. 119 F.3d at 1567, 43 USPQ2d at 1405. In such a situation, regardless whether the claim appears in the original specification and is thus supported by the specification as of the filing date, § 112 P 1 is not met. ( . . . ) If a purported description of an invention does not meet the requirements of the statute, the fact that it appears as an original claim or in the specification does not save it. A claim does not become more descriptive by its repetition, or its longevity.
Separately, the court wrote in Enzo:
It is true that in Vas-Cath, we stated: The purpose of the "written description" requirement is broader than to merely explain how to "make and use"; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. Vas-Cath, 935 F.2d at 1563-64, 19 USPQ2d at 1117. That portion of the opinion in Vas-Cath, however, merely states a purpose of the written description requirement, viz., to ensure that the applicant had possession of the invention as of the desired filing date. It does not state that possession alone is always sufficient to meet that requirement. Furthermore, in Lockwood v. American Airlines, Inc., we rejected Lockwood's argument that -- all that is necessary to satisfy the description requirement is to show that one is "in possession" of the invention. -- 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Rather, we clarified that the written description requirement is satisfied by the patentee's disclosure of -- such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. -- Id.
In Passing
On April 11, the Associated Press reported that the federal government has admitted infringing an Exxon Mobil Corp. petroleum patent and agreed to pay the oil company $ 2,583. The AP report noted that Justice Department spokesman Charles Miller said Exxon Mobil had claimed that the patent was worth hundreds of millions of dollars and quoted Miller that the settlement amount, which was disclosed by the government but not by Exxon Mobil, "speaks for itself." The litigation was reported at 54 USPQ2d 1519 (Ct. Cl. 2000), reversed by the Federal Circuit at 265 F.3d 1371, 60 USPQ2d 1272 (CAFC 2001). n7
Thailand's Government Pharmaceutical Organization (GPO) reportedly will soon market locally a treatment that combines three AIDS drugs into one. Although each drug is patented individually by Western drug companies, the GPO is attempting to patent the mixture in Thailand.
Of last month's discussion of Taleyarkhan's work on fusion through sonoluminescence, one person wrote "Any article, which purports to be 100% true and accurate, was probably not worth working on/publishing in the first place." This person suggests that there is nothing wrong with Science publishing the fusion work, even if it is partially wrong, because publication opens it up for discussion, analysis, and criticism. Separately, the journal Nature published an editorial note on a paper about engineered corn in Mexico: "Nature has concluded that the evidence available is not sufficient to justify the publication of the original paper." n8
Scientific American published an interview with Lawrence Lessig, Tragedy of the Cyber Commons; a legal scholar issues a glum prognosis for future innovation on the internet. n9 On April 15, the Supreme Court granted cert in a trademark dilution case involving Victoria's Secret and Victor's Little Secret (see earlier case, 54 USPQ2d 1092 (WD Ky 2000)). This case has gathered more immediate attention than the other IP cases now pending before the Supreme Court: Festo (patent) and Eldred (copyright). [some coverage of case: Washington Post, A2; Ottawa Citizen, F6; Newsday, A47; Montreal Gazette, D2; The Independent (London), 13(all 4/16/02)].
Endnotes
n1 The opinions are those of only the author, and not of any employer of the author, past, present or future. The author may be reached by email at ebert.email.com or by phone at 609-514-5951.
n2 Johnson & Johnston Associates, Inc. v. R. E. Service Co., Inc., 2002 WL 466547 (CAFC 99-1076). See also, L. B. Ebert, "Equivalents at the Crossroads," Intellectual Property Today (IPT), p. 27 (March 2001); B. Sandburg, "Ruling is 'Nail in Coffin' of Doctrine of Equivalents," The Recorder (April 3, 2002). See also PTCJ, Volume 63 Number 1567 (April 5, 2002), which is somewhat critical of the per curiam opinion.
n3 Maxwell v. J. Baker, 86 F.3d 1098, 39 USPQ2d 1001 (CAFC 1996). There had been discussion that this panel decision had been limited by the later panel decision in YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d 1317, 46 USPQ2d 1843 (CAFC 1998). See also, L. B. Ebert, "Chiuminatta: 35 USC § 112(6) and the Doctrine of Equivalents," IPT, pp. 32-33 (July 1998), especially the discussion of the unpublished opinion in Brunswick Corp. v. U.S., 46 USPQ2d 1447 (CAFC 1998). See also, L. B. Ebert, "More On Pfaff v. Wells Electronics: Knowing It When You See It," IPT, pp. 16-17 (Sept. 1998), especially endnote 5.
n4 From the per curiam opinion: "In other words, this court in YBM Magnex purported to limit Maxwell to situations where a patent discloses an unclaimed alternative distinct from the claimed invention. Thus, this court must decide whether a patentee can apply the doctrine of equivalents to cover unclaimed subject matter disclosed in the specification." From the concurring opinion of Judge Clevenger: "Our choice in this case was simple: whether to overrule Maxwell or YBM Magnex."
n5 Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 85 USPQ 328 (1950).
n6 Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).
n7 For related legal issues, see also System Management v. Avesta, 137 F. Supp.2d 382 (SDNY 2001) and Union Pacific v. Chesapeake, 236 F.3d 684, 57 USPQ2d 1293 (CAFC 2001).
n8 Marc Kaufman, "Science journal disavows article. US Berkeley pair stand by story on biotech corn," Washington Post, April 4, 2002.
n9 Available at the scientificamerican website at techbiz0402patents.html. However, see also, Devin Leonard, "the most valuable square foot in America," Fortune, pp. 118-124 (April 1, 2002).