Maintaining Claim Scope after Johnson & Johnston

The Federal Circuit's holding indicates that sometimes a comprehensive disclosure provides less protection than a bare-bones disclosure that nevertheless satisfies the description, enablement and best mode requirements. After all, had the patentee in Johnson disclosed only the use of aluminum, the Federal Circuit may have affirmed the district court. Thus, as Judge Newman predicted in her Johnson dissent, some practitioners may now be tempted to adopt a minimalist approach to drafting specifications.

However tempting adopting a minimalist approach may be, in most cases following such a practice is a mistake. Comprehensive disclosures often allow claims to be construed more broadly for purposes of literal infringement. And, all other things being equal, literal infringement is more important than infringement under the doctrine of equivalents. Most patent infringement suits hinge on literal infringement. In only one-fifth of the cases in which U.S. courts found infringement were the findings of infringement under the doctrine of equivalents. Samson Vermont, “Patent Risk & Reward ' Some Surprising Statistics,” with related notes and sources, available at www.usa-canada.les.org/chapters/newyork (April 8, 2003).

Comprehensive disclosures facilitate broad literal interpretation because claims are interpreted in light of the specification. For example, when the specification provides many examples that correspond to a generic claim term, a defendant will have a harder time obtaining a narrow construction of the term.

This is particularly true when the term will be construed as a means-plus-function limitation. “Equivalents” for means-plus-function limitations are controlled by statute (35 U.S.C. '112, 6) and are not subject to the case law on the judicially created doctrine of equivalents. Thus, the means-plus-function limitation will not only literally cover all structures, materials, and acts disclosed in the specification that perform the claimed function, it will also cover equivalents of those structures, materials and acts. Therefore, the more embodiments that are disclosed in the specification, the more embodiments that will be covered.

In addition to facilitating broad literal interpretation, comprehensive disclosures also provide a broader scope of prior art that can be used against subsequent inventors. Also, a comprehensive disclosure provides a better foundation for continuation applications, which are important in light of the difficulty in forecasting what the applicant will want to claim years from now.

Expensive Proposition

The Johnson holding seems to require the applicant to pursue all possible claims, leaving no doubt that all contemplated embodiments have been affirmatively claimed. This can become expensive for parties who want to maneuver around Johnson. Practitioners will have to expend more time drafting claims in order to disclose and claim several embodiments. Additional claims may result in increased claim fees, thus all around increasing costs for applicants. In addition, a more complete disclosure with corresponding claims is more likely to result in a restriction requirement. In such cases, applicant may be compelled to pursue divisional applications if generic claims are not allowable.

Moreover, because words are imprecise, if there is any question as to whether certain claims cover all embodiments disclosed in the specification, additional claims must be added to establish clearly that all embodiments are covered. Consider, for example, an independent claim having elements A and B and the limitation that “A is adhered to B.” The specification discloses that A can be bonded to B with an adhesive. An alternative embodiment discloses that A can be coextruded with B. The claim term “adhered” is arguably ambiguous ' does “adhered” cover only “bonded,” or is it sufficiently generic to cover both “bonded” and “coextruded?” By drafting two separate dependent claims to cover “bonded” and “coextruded” to further limit “adhered,” the independent claim becomes more robust because “adhered” more clearly covers both embodiments literally. There is less likelihood that the coextruded embodiment would be deemed to have been dedicated to the public. While drafting numerous dependent claims has always been good practice, Johnson makes the inclusion of such claims more critical than ever.

The Johnson holding also indicates that in drafting the original application the practitioner must draft claims that are generic enough to cover all embodiments, or be prepared to file as many divisional applications as necessary to capture all claimable subject matter of commercial significance. Alternatively, if original claims cannot be generic enough to cover all embodiments, a less expensive option may be to disclose only those embodiments that can be covered generically, so long as they include the best mode. Although this less expensive option would not literally cover all contemplated embodiments, it does not expressly dedicate those embodiments to the public and may enable the patentee to cover those embodiments in some circumstances under the doctrine of equivalents. Ideally, this should only be considered where the alternate embodiments are not commercially competitive.

In the event that prosecution of the application results in amendments limiting a generic claim to fewer than all embodiments, the applicant must decide how to proceed. If the amendments require that certain embodiments be disclaimed in order to distinguish the claims over prior art, then it would seem unnecessary to pursue divisional applications for those embodiments as they are unpatentable in any event.

Johnson also teaches that the practitioner must be cognizant of what is being disclosed in the figures. Graphs with data should be used carefully. In YBM Magnex, Inc. v. ITC, 145 F.3d 1317 (Fed. Cir. 1998), a graph was used in the patent to show the optimum range of the invention. The claims were only directed to the optimum range. An alleged infringer was operating just outside of the claimed range, at a level that was included in the graph. A three-judge panel of the Federal Circuit held that subject matter disclosed in the graph, but not claimed, did not automatically preclude a finding of infringement. Johnson held otherwise, and expressly overruled YBM Magnex. Therefore, unlike the claims at issue in YBM Magnex, claims that include numerical values or ranges should also include language like “about” before any explicit value. This potentially expands the range for literal infringement and in this manner potentially builds some level of equivalents into the claims.

What About Provisional Disclosures?

Practitioners who realize that the allowable claims in a given application are not generic enough to cover everything that has been disclosed in the specification may be tempted to amend the specification to delete material falling outside of the claims. However, it is not at all clear whether the deleted material will nevertheless be considered to be “disclosed” but unclaimed under Johnson. This question is particularly interesting in the context of a provisional application that is later filed as a non-provisional application. Specifically, if a provisional application is filed with a complete disclosure, but at least one embodiment has changed and/or much of the disclosure is no longer the crux of what should be claimed in the non-provisional application, simply leaving the material out of the non-provisional application may avoid publication of the subject matter, but it may not prevent it from being dedicated to the public.

If the material is deleted before the application is published, or excluded from a subsequent non-provisional application claiming priority, it will not be part of any published disclosure and therefore will not be available as prior art under, for example, 35 U.S.C. '102(e). However, the excluded material will forever be a part of the file wrapper and will become publicly available once the patent issues and therefore can be used as prior art under 35 U.S.C. '102(a). See In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).

In Johnson, the Federal Circuit specifically addressed material that was disclosed on the face of the issued patent. If the policy behind the holding of Johnson is to prevent patent holders from asserting equivalents that were specifically recognized but not claimed, it would follow that deleting part of the specification would not be an adequate way to preserve any equivalents disclosed therein. On the other hand, if the policy behind the holding is to provide notice to the public on the face of the patent as to what is the claimed invention and what is dedicated to the public, then deleting part of the specification before the patent issues may be adequate. Because this area of the law is far from settled, this tactic of eliminating parts of the specification should not be relied upon.

The Johnson decision expressly identifies two ways for a patentee to compensate for failing to claim disclosed subject matter, but both require the filing of additional applications, thereby increasing the cost to the applicant. First, as mentioned above, a continuation or divisional application can be filed under 35 U.S.C. '120 before the parent application issues. Second, within two years of issuance, a reissue application can be filed under 35 U.S.C. '251 to broaden the claims.

Fortunately for Johnson & Johnston, two continuation applications were filed to both broadly claim the subject matter (“a metal substrate sheet”) and to specifically claim a different embodiment (“a sheet of stainless steel”). Both applications matured into later issued patents. Although these patents could be asserted against the alleged infringer for literal infringement, damages would be for a significantly lower amount because any finding of infringement would be for a shorter time period.

Protecting the client's invention and commercial product, along with any foreseeable alternatives and improvements, should be the goal of every practitioner ' even before the initial application is drafted. Reliance on the doctrine of equivalents to cover a foreseeable alternative that was disclosed but not claimed has proven to be a foolhardy technique, as evidenced by Johnson.

Jack S. Barufka is an attorney with Pillsbury Winthrop in McLean, VA. He can be reached at 703-905-2012. Emily Bell ([email protected]) is an attorney with Pillsbury Winthrop in McLean, VA. The opinions reflected in this article are those of the author and should not be imputed to Pillsbury Winthrop LLP or to any of its present or former clients.

The Supreme Court's decision in Festo has been hailed by many as being one of the most significant cases to impact the patent system. Festo Corp. v. Shoektsu Kinzoku Kogyo Kabushiki Co., Ltd., 122 S.Ct. 1831 (2002). Some say that more significant than Festo is Johnson, in which the Federal Circuit held that subject matter disclosed but not claimed in a patent cannot be covered by the doctrine of equivalents. See Johnson & Johnston Associates Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc).

The claims at issue in Johnson are directed to a disposable substrate for use in manufacturing articles such as printed circuit boards. The specification says the substrate can be made of aluminum, stainless steel, nickel alloy, or polypropylene. In the claims, the substrate is made of aluminum. The alleged infringers used steel. The district court found that the defendants infringed under the doctrine of equivalents and that such infringement was willful. The Federal Circuit then reversed, holding that because the patentee disclosed but did not claim steel as a substrate, steel had been “dedicated to the public” and therefore could not be construed as an equivalent to aluminum.

Less Disclosure = More Protection?

The Federal Circuit's holding indicates that sometimes a comprehensive disclosure provides less protection than a bare-bones disclosure that nevertheless satisfies the description, enablement and best mode requirements. After all, had the patentee in Johnson disclosed only the use of aluminum, the Federal Circuit may have affirmed the district court. Thus, as Judge Newman predicted in her Johnson dissent, some practitioners may now be tempted to adopt a minimalist approach to drafting specifications.

However tempting adopting a minimalist approach may be, in most cases following such a practice is a mistake. Comprehensive disclosures often allow claims to be construed more broadly for purposes of literal infringement. And, all other things being equal, literal infringement is more important than infringement under the doctrine of equivalents. Most patent infringement suits hinge on literal infringement. In only one-fifth of the cases in which U.S. courts found infringement were the findings of infringement under the doctrine of equivalents. Samson Vermont, “Patent Risk & Reward ' Some Surprising Statistics,” with related notes and sources, available at www.usa-canada.les.org/chapters/newyork (April 8, 2003).

Comprehensive disclosures facilitate broad literal interpretation because claims are interpreted in light of the specification. For example, when the specification provides many examples that correspond to a generic claim term, a defendant will have a harder time obtaining a narrow construction of the term.

This is particularly true when the term will be construed as a means-plus-function limitation. “Equivalents” for means-plus-function limitations are controlled by statute (35 U.S.C. '112, 6) and are not subject to the case law on the judicially created doctrine of equivalents. Thus, the means-plus-function limitation will not only literally cover all structures, materials, and acts disclosed in the specification that perform the claimed function, it will also cover equivalents of those structures, materials and acts. Therefore, the more embodiments that are disclosed in the specification, the more embodiments that will be covered.

In addition to facilitating broad literal interpretation, comprehensive disclosures also provide a broader scope of prior art that can be used against subsequent inventors. Also, a comprehensive disclosure provides a better foundation for continuation applications, which are important in light of the difficulty in forecasting what the applicant will want to claim years from now.

Expensive Proposition

The Johnson holding seems to require the applicant to pursue all possible claims, leaving no doubt that all contemplated embodiments have been affirmatively claimed. This can become expensive for parties who want to maneuver around Johnson. Practitioners will have to expend more time drafting claims in order to disclose and claim several embodiments. Additional claims may result in increased claim fees, thus all around increasing costs for applicants. In addition, a more complete disclosure with corresponding claims is more likely to result in a restriction requirement. In such cases, applicant may be compelled to pursue divisional applications if generic claims are not allowable.

Moreover, because words are imprecise, if there is any question as to whether certain claims cover all embodiments disclosed in the specification, additional claims must be added to establish clearly that all embodiments are covered. Consider, for example, an independent claim having elements A and B and the limitation that “A is adhered to B.” The specification discloses that A can be bonded to B with an adhesive. An alternative embodiment discloses that A can be coextruded with B. The claim term “adhered” is arguably ambiguous ' does “adhered” cover only “bonded,” or is it sufficiently generic to cover both “bonded” and “coextruded?” By drafting two separate dependent claims to cover “bonded” and “coextruded” to further limit “adhered,” the independent claim becomes more robust because “adhered” more clearly covers both embodiments literally. There is less likelihood that the coextruded embodiment would be deemed to have been dedicated to the public. While drafting numerous dependent claims has always been good practice, Johnson makes the inclusion of such claims more critical than ever.

The Johnson holding also indicates that in drafting the original application the practitioner must draft claims that are generic enough to cover all embodiments, or be prepared to file as many divisional applications as necessary to capture all claimable subject matter of commercial significance. Alternatively, if original claims cannot be generic enough to cover all embodiments, a less expensive option may be to disclose only those embodiments that can be covered generically, so long as they include the best mode. Although this less expensive option would not literally cover all contemplated embodiments, it does not expressly dedicate those embodiments to the public and may enable the patentee to cover those embodiments in some circumstances under the doctrine of equivalents. Ideally, this should only be considered where the alternate embodiments are not commercially competitive.

In the event that prosecution of the application results in amendments limiting a generic claim to fewer than all embodiments, the applicant must decide how to proceed. If the amendments require that certain embodiments be disclaimed in order to distinguish the claims over prior art, then it would seem unnecessary to pursue divisional applications for those embodiments as they are unpatentable in any event.

Johnson also teaches that the practitioner must be cognizant of what is being disclosed in the figures. Graphs with data should be used carefully. In YBM Magnex, Inc. v. ITC , 145 F.3d 1317 (Fed. Cir. 1998), a graph was used in the patent to show the optimum range of the invention. The claims were only directed to the optimum range. An alleged infringer was operating just outside of the claimed range, at a level that was included in the graph. A three-judge panel of the Federal Circuit held that subject matter disclosed in the graph, but not claimed, did not automatically preclude a finding of infringement. Johnson held otherwise, and expressly overruled YBM Magnex. Therefore, unlike the claims at issue in YBM Magnex, claims that include numerical values or ranges should also include language like “about” before any explicit value. This potentially expands the range for literal infringement and in this manner potentially builds some level of equivalents into the claims.

What About Provisional Disclosures?

Practitioners who realize that the allowable claims in a given application are not generic enough to cover everything that has been disclosed in the specification may be tempted to amend the specification to delete material falling outside of the claims. However, it is not at all clear whether the deleted material will nevertheless be considered to be “disclosed” but unclaimed under Johnson. This question is particularly interesting in the context of a provisional application that is later filed as a non-provisional application. Specifically, if a provisional application is filed with a complete disclosure, but at least one embodiment has changed and/or much of the disclosure is no longer the crux of what should be claimed in the non-provisional application, simply leaving the material out of the non-provisional application may avoid publication of the subject matter, but it may not prevent it from being dedicated to the public.

If the material is deleted before the application is published, or excluded from a subsequent non-provisional application claiming priority, it will not be part of any published disclosure and therefore will not be available as prior art under, for example, 35 U.S.C. '102(e). However, the excluded material will forever be a part of the file wrapper and will become publicly available once the patent issues and therefore can be used as prior art under 35 U.S.C. '102(a). See In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).

In Johnson, the Federal Circuit specifically addressed material that was disclosed on the face of the issued patent. If the policy behind the holding of Johnson is to prevent patent holders from asserting equivalents that were specifically recognized but not claimed, it would follow that deleting part of the specification would not be an adequate way to preserve any equivalents disclosed therein. On the other hand, if the policy behind the holding is to provide notice to the public on the face of the patent as to what is the claimed invention and what is dedicated to the public, then deleting part of the specification before the patent issues may be adequate. Because this area of the law is far from settled, this tactic of eliminating parts of the specification should not be relied upon.

The Johnson decision expressly identifies two ways for a patentee to compensate for failing to claim disclosed subject matter, but both require the filing of additional applications, thereby increasing the cost to the applicant. First, as mentioned above, a continuation or divisional application can be filed under 35 U.S.C. '120 before the parent application issues. Second, within two years of issuance, a reissue application can be filed under 35 U.S.C. '251 to broaden the claims.

Fortunately for Johnson & Johnston, two continuation applications were filed to both broadly claim the subject matter (“a metal substrate sheet”) and to specifically claim a different embodiment (“a sheet of stainless steel”). Both applications matured into later issued patents. Although these patents could be asserted against the alleged infringer for literal infringement, damages would be for a significantly lower amount because any finding of infringement would be for a shorter time period.

Protecting the client's invention and commercial product, along with any foreseeable alternatives and improvements, should be the goal of every practitioner ' even before the initial application is drafted. Reliance on the doctrine of equivalents to cover a foreseeable alternative that was disclosed but not claimed has proven to be a foolhardy technique, as evidenced by Johnson.

Jack S. Barufka is an attorney with Pillsbury Winthrop in McLean, VA. He can be reached at 703-905-2012. Emily Bell ([email protected]) is an attorney with Pillsbury Winthrop in McLean, VA. The opinions reflected in this article are those of the author and should not be imputed to Pillsbury Winthrop LLP or to any of its present or former clients.