Patent Drafting after Johnston

In Johnson & Johnston Assocs. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) the Federal Circuit turned at least one aspect of patent drafting practice on its ear. Before Johnson, generally accepted patent drafting techniques encouraged the disclosure of alternative subject matter in the specification, particularly for claimed elements of the invention, in order to possibly broaden the scope of the claims of the resultant patent. Post Johnson, such practices may clearly backfire as the court held that subject matter disclosed in a patent's specification, but not claimed, is dedicated to the public. Although Johnson may well have a major impact on claim drafting techniques, this case will likely have a greater impact on techniques used for drafting the patent specification.

One strategy for avoiding the impact of Johnson is to include 'means-plus-function' claims, which cover all structure disclosed in the specification for performing the claimed function. 35 U.S.C. Section 112, paragraph 6 provides that an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.

The inclusion of claims reciting a structural element generic to the disclosed alternatives, as well as Markush claims listing all disclosed alternatives, have also been recommended as mechanisms for avoiding the impact of Johnson.

The Johnson decision reveals the desirability of using a traditional patent drafting technique, claim element disclosure analysis, to reduce the chances of unintentionally dedicating otherwise claimable subject matter to the public. This technique seeks to at least identify, if not eliminate, inconsistencies in the scope of the various disclosures in the specification supporting each element claimed by listing and comparing each of the claim element disclosures. Once such inconsistencies are eliminated, or otherwise accounted for, a comparison of the scope of the disclosure supporting a claimed element and the scope of that element as claimed is almost trivial. Although this approach may at first seem tedious and inefficient, the identified differences in the scope of the supporting disclosure can often be combined to clarify and broaden the support for each claimed element, while highlighting convenient sources of additional, claimable subject matter.

One convenient way of demonstrating and testing the usefulness of this technique is to perform the recommended claim element disclosure analysis on the claims of the patent that was at issue in Johnson, US Patent No. 5,153,050 (the '050 patent). It is important to note that this 'after the fact' or hindsight review of the '050 patent is not intended as a criticism of that patent. Indeed, a jury trial for infringement of this patent resulted in an award of more than $1.1 million. Rather, the intent of this exercise is to illustrate that a formal, pre-filing review of claim element disclosure is both useful and practical. In fact, this review illustrates several portions of the specification that should be changed to avoid the claim-limiting outcome of Johnson.

In Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C97-04382 CRB (N.D. Cal. 1998), a jury found that RES's laminate product willfully infringed claims 1 and 2 of the '050 patent under the doctrine of equivalents and awarded Johnson $1,138,764 in damages. The district court granted enhanced damages, attorney fees and expenses. On appeal to the Federal Circuit, a three-judge panel in Johnson & Johnston Assocs. v. R.E. Serv. Co., 238 F.3d 1347 (Fed. Cir. 2001) ordered an en banc rehearing of the case in order to decisively consider the doctrine of equivalents issues. The Federal Circuit determined that the '050 patent specification disclosed the use of a steel substrate (as used by RES), as an alternate to the use of the claimed aluminum substrate. The court held that the use of a steel substrate was dedicated to the public because it was disclosed but not claimed and therefore could not be recaptured to support a finding of infringement under the doctrine of equivalents.

The invention in the '050 patent is related to the use of a laminate as an intermediate product during the manufacture of printed circuit (PC) boards. By adhering a protective substrate to one or both surfaces of a PC board during manufacture, damage to the copper foil layer of the PC board  by contamination and/or subsequent handling is substantially reduced or prevented. Independent claim 1 recites in pertinent part:

1. A component for use in manufacturing articles such as printed circuit boards comprising: a laminate constructed of a sheet of copper foil ' a sheet of aluminum ' ,[and] a band of flexible adhesive joining the ' surfaces of the sheets together '

A claim element disclosure review of the '050 patent specification, related to the 'sheet of aluminum' claim element, shows that the patent specification teaches the use, or at least the possibility of use, of alternative materials for the substrate in three places: i) While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used. (Col. 5, lines 5-7); ii) The use of the adhered substrate A, regardless of what material it is made of, makes the consumer's (manufacturer's) objective of using thinner and thinner foils and ultimately automating the procedure more realistic since the foil, by use of the invention, is no longer without the much needed support. (Col. 8, lines 25-30); and iii) [A] laminate of a sheet of copper foil and a sheet of aluminum or the like. (Abstract, line 3).

The specification of the '050 patent, under current case law, suggests the need for the use of a more generic term, perhaps 'substrate,' in the claims of the '050 patent to avoid the 'dedication to the public' of any substrate that is not comprised of aluminum. Further, Markush type claims could be utilized to provide a list of possible materials for the substrate such as stainless steel or nickel alloys.

Moreover, under current case law, a patent practitioner should be wary of including statements in the specification regarding the scope of the invention. If statements reveal subject matter that, foreseeably, could have but was not claimed, such subject matter may be deemed to have been dedicated to the public.

As a review of recent Federal Circuit cases illustrates, discrepancies between the claims and the specification have been the basis for much new case law. A claim element disclosure review is one of the few drafting techniques at least potentially useful at the time of filing to minimize the negative effects of later developed case law. Most patent drafters keep at least mental track of the scope of disclosure they are writing for each element to be claimed.

The use of a patent drafting strategy, such as the one described above, that clearly identifies all potentially claimable subject matter disclosed so it may be claimed, may well not be optional. It is not unreasonable to expect that future case law may interpret or extend Johnson to include other fact patterns and/or extend the reach of this 'Dedication to the Public' doctrine. Identifying unclaimed disclosures may become even more important as U.S case law continues to move the patent drafter's target in the direction of protection only for subject matter specifically disclosed.

Norman E. Brunell is a partner with Irell & Manella LLP.

In Johnson & Johnston Assocs. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) the Federal Circuit turned at least one aspect of patent drafting practice on its ear. Before Johnson, generally accepted patent drafting techniques encouraged the disclosure of alternative subject matter in the specification, particularly for claimed elements of the invention, in order to possibly broaden the scope of the claims of the resultant patent. Post Johnson, such practices may clearly backfire as the court held that subject matter disclosed in a patent's specification, but not claimed, is dedicated to the public. Although Johnson may well have a major impact on claim drafting techniques, this case will likely have a greater impact on techniques used for drafting the patent specification.

One strategy for avoiding the impact of Johnson is to include 'means-plus-function' claims, which cover all structure disclosed in the specification for performing the claimed function. 35 U.S.C. Section 112, paragraph 6 provides that an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.

The inclusion of claims reciting a structural element generic to the disclosed alternatives, as well as Markush claims listing all disclosed alternatives, have also been recommended as mechanisms for avoiding the impact of Johnson.

The Johnson decision reveals the desirability of using a traditional patent drafting technique, claim element disclosure analysis, to reduce the chances of unintentionally dedicating otherwise claimable subject matter to the public. This technique seeks to at least identify, if not eliminate, inconsistencies in the scope of the various disclosures in the specification supporting each element claimed by listing and comparing each of the claim element disclosures. Once such inconsistencies are eliminated, or otherwise accounted for, a comparison of the scope of the disclosure supporting a claimed element and the scope of that element as claimed is almost trivial. Although this approach may at first seem tedious and inefficient, the identified differences in the scope of the supporting disclosure can often be combined to clarify and broaden the support for each claimed element, while highlighting convenient sources of additional, claimable subject matter.

One convenient way of demonstrating and testing the usefulness of this technique is to perform the recommended claim element disclosure analysis on the claims of the patent that was at issue in Johnson, US Patent No. 5,153,050 (the '050 patent). It is important to note that this 'after the fact' or hindsight review of the '050 patent is not intended as a criticism of that patent. Indeed, a jury trial for infringement of this patent resulted in an award of more than $1.1 million. Rather, the intent of this exercise is to illustrate that a formal, pre-filing review of claim element disclosure is both useful and practical. In fact, this review illustrates several portions of the specification that should be changed to avoid the claim-limiting outcome of Johnson.

In Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C97-04382 CRB (N.D. Cal. 1998), a jury found that RES's laminate product willfully infringed claims 1 and 2 of the '050 patent under the doctrine of equivalents and awarded Johnson $1,138,764 in damages. The district court granted enhanced damages, attorney fees and expenses. On appeal to the Federal Circuit, a three-judge panel in Johnson & Johnston Assocs. v. R.E. Serv. Co. , 238 F.3d 1347 (Fed. Cir. 2001) ordered an en banc rehearing of the case in order to decisively consider the doctrine of equivalents issues. The Federal Circuit determined that the '050 patent specification disclosed the use of a steel substrate (as used by RES), as an alternate to the use of the claimed aluminum substrate. The court held that the use of a steel substrate was dedicated to the public because it was disclosed but not claimed and therefore could not be recaptured to support a finding of infringement under the doctrine of equivalents.

The invention in the '050 patent is related to the use of a laminate as an intermediate product during the manufacture of printed circuit (PC) boards. By adhering a protective substrate to one or both surfaces of a PC board during manufacture, damage to the copper foil layer of the PC board  by contamination and/or subsequent handling is substantially reduced or prevented. Independent claim 1 recites in pertinent part:

1. A component for use in manufacturing articles such as printed circuit boards comprising: a laminate constructed of a sheet of copper foil ' a sheet of aluminum ' ,[and] a band of flexible adhesive joining the ' surfaces of the sheets together '

A claim element disclosure review of the '050 patent specification, related to the 'sheet of aluminum' claim element, shows that the patent specification teaches the use, or at least the possibility of use, of alternative materials for the substrate in three places: i) While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used. (Col. 5, lines 5-7); ii) The use of the adhered substrate A, regardless of what material it is made of, makes the consumer's (manufacturer's) objective of using thinner and thinner foils and ultimately automating the procedure more realistic since the foil, by use of the invention, is no longer without the much needed support. (Col. 8, lines 25-30); and iii) [A] laminate of a sheet of copper foil and a sheet of aluminum or the like. (Abstract, line 3).

The specification of the '050 patent, under current case law, suggests the need for the use of a more generic term, perhaps 'substrate,' in the claims of the '050 patent to avoid the 'dedication to the public' of any substrate that is not comprised of aluminum. Further, Markush type claims could be utilized to provide a list of possible materials for the substrate such as stainless steel or nickel alloys.

Moreover, under current case law, a patent practitioner should be wary of including statements in the specification regarding the scope of the invention. If statements reveal subject matter that, foreseeably, could have but was not claimed, such subject matter may be deemed to have been dedicated to the public.

As a review of recent Federal Circuit cases illustrates, discrepancies between the claims and the specification have been the basis for much new case law. A claim element disclosure review is one of the few drafting techniques at least potentially useful at the time of filing to minimize the negative effects of later developed case law. Most patent drafters keep at least mental track of the scope of disclosure they are writing for each element to be claimed.

The use of a patent drafting strategy, such as the one described above, that clearly identifies all potentially claimable subject matter disclosed so it may be claimed, may well not be optional. It is not unreasonable to expect that future case law may interpret or extend Johnson to include other fact patterns and/or extend the reach of this 'Dedication to the Public' doctrine. Identifying unclaimed disclosures may become even more important as U.S case law continues to move the patent drafter's target in the direction of protection only for subject matter specifically disclosed.

Norman E. Brunell is a partner with Irell & Manella LLP.