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1046 285 FEDERAL REPORTER, 3d SERIES

The government may be correct, but onthis record we cannot tell. We thereforeconclude that the appropriate dispositionof this case is to remand to the Board toaward Delta the loss it suffered as a resultof the government’s breach of the contract,in accordance with the views set forth inthis opinion.

CONCLUSION

The decision of the Board is vacated,and the case is remanded to the Board toaward Delta the loss it suffered as a resultof the government’s breach of the contract,in accordance with the views set forth inthis opinion.

VACATED AND REMANDED.

,

JOHNSON & JOHNSTONASSOCIATES INC.,Plaintiff–Appellee,

v.

R.E. SERVICE CO., INC. and MarkFrater, Defendants–Appellants.

Nos. 99–1076, 99–1179, 99–1180.

United States Court of Appeals,Federal Circuit.

DECIDED: March 28, 2002.

Patentee brought action against com-petitor, alleging infringement of patentclaiming invention consisting of copper foilsheets joined with aluminum substrate foruse in manufacturing printed circuitboards. The United States District Courtfor the Northern District of California,Charles R. Breyer, J., entered judgment

upon jury verdict finding infringement un-der the doctrine of equivalents and award-ed damages, attorney fees, and expenses.Competitor appealed. On rehearing enbanc, the Court of Appeals held that pat-ent, which claimed only use of aluminumsubstrate, was not infringed under doc-trine of equivalents by products using steelsubstrate, because use of steel was dis-closed but not claimed in the patent, over-ruling YBM Magnex, Inc. v. Int’l TradeComm’n, 145 F.3d 1317.

Reversed.

Clevenger, Circuit Judge, filed con-curring opinion in which Lourie, Schall,Gajarsa, and Dyk, Circuit Judges, joined.

Rader, Circuit Judge, filed concurringopinion in which Mayer, Chief Judge,joined.

Dyk, Circuit Judge, filed concurringopinion in which Linn, Circuit Judge,joined.

Lourie, Circuit Judge, filed concurringopinion.

Pauline Newman, Circuit Judge, fileddissenting opinion.

1. Patents O165(2)

Patent claims give notice of the scopeof patent protection, giving notice both tothe examiner at the Patent and TrademarkOffice (PTO) during prosecution, and tothe public at large, including potentialcompetitors, after the patent has issued.

2. Patents O165(2), 167(1)

The patent claims, not the specifica-tion, provide the measure of the patentee’sright to exclude.

3. Patents O226.6

The law of patent infringement com-pares the accused product with the claimsas construed by the court; infringement,

1047JOHNSON & JOHNSTON ASSOCIATES v. R.E. SERVICECite as 285 F.3d 1046 (Fed. Cir. 2002)

either literally or under the doctrine ofequivalents, does not arise by comparingthe accused product with a preferred em-bodiment described in the specification, orwith a commercialized embodiment of thepatentee.

4. Patents O82The patentee’s subjective intent is ir-

relevant to determining whether unclaimedsubject matter has been disclosed andtherefore dedicated to the public.

5. Patents O82, 237When a patent drafter discloses but

declines to claim subject matter, this ac-tion dedicates that unclaimed subject mat-ter to the public, and application of thedoctrine of equivalents to recapture sub-ject matter deliberately left unclaimedwould conflict with the primacy of theclaims in defining the scope of the paten-tee’s exclusive right.

6. Patents O167(1.1), 237A patentee cannot narrowly claim an

invention to avoid prosecution scrutiny bythe Patent and Trademark Office (PTO),and then, after patent issuance, use thedoctrine of equivalents to establish in-fringement because the specification dis-closes equivalents; such a result wouldmerely encourage a patent applicant topresent a broad disclosure in the specifica-tion of the application and file narrowclaims, avoiding examination of broaderclaims that the applicant could have filedconsistent with the specification.

7. Patents O237Patent claiming invention consisting of

copper foil sheets joined with aluminumsubstrate for use in manufacturing printedcircuit boards, which specifically limitedclaims to use of aluminum sheets, was notinfringed, under doctrine of equivalents, byaccused products that joined copper foilsheets with steel substrate, because use of

steel substrate was disclosed in the patentspecification but was not claimed in thepatent; overruling YBM Magnex, Inc. v.Int’l Trade Comm’n, 145 F.3d 1317.

8. Patents O110, 141(5)

A patentee who inadvertently fails toclaim disclosed subject matter may, withintwo years from the grant of the originalpatent, file a reissue application and at-tempt to enlarge the scope of the originalclaims to include the disclosed but previ-ously unclaimed subject matter, or paten-tee can file a separate application claimingthe disclosed subject matter under provi-sion of patent statute allowing filing as acontinuation application if filed before allapplications in the chain issue. 35U.S.C.A. §§ 120, 251.

Donald R. Dunner, Finnegan,Henderson, Farabow, Garrett & Dunner,L.L.P., of Washington, DC, argued forplaintiff-appellee. With him on the briefwere Thomas H. Jenkins, and Virginia L.Carron. Of counsel on the brief were FayE. Morisseau, and Michael R. O’Neill,McDermott, Will & Emery, of Irvine, Cali-fornia. Also of counsel on the brief wereand John L. DuPre’, Richard A. Wise, andDeirdre E. Sanders, Hamilton, Brook,Smith & Reynolds, P.C., of Lexington,MA.

Frank P. Porcelli, Fish & RichardsonP.C., of Boston, MA, argued for defen-dants-appellants. With him on the briefwas Robert E. Hillman. Of counsel wasCharles H. Sanders. Of counsel on thebrief were Archie S. Robinson, Thomas R.Fellows, and Rebecca L. Moon, Robinson& Wood, Inc., of San Jose, CA. Of counselwas Jack M. Wiseman. Also of counsel onthe brief were John A. Dragseth, and


Richard J. Anderson, Fish & Richardson,P.C., of Minneapolis, MN.

Charles L. Gholz, Oblon, Spivak,McClelland, Maier & Neustadt, P.C., ofArlington, VA, for amicus curiae The Stan-dard Register Company. With him on thebrief were William T. Enos, Frank J.West, and Andrew M. Ollis.

Joseph S. Cianfrani, Knobbe, Martens,Olson & Bear, LLP, of Newport Beach,CA for amicus curiae American Intellectu-al Property Law Association. Of counselon the brief were Janice M. Mueller, Asso-ciate Professor, The John Marshall LawSchool, of Chicago, IL; and Liza K. Toth,General IP Counsel, Matrix Semiconduc-tor, Inc., of Santa Clara, CA.

Martha W. Barnett, former President,American Bar Association, of Chicago, IL,for amicus curiae American Bar Associa-tion. With her on the brief were E. An-thony Figg, and Jason M. Shapiro.

Before MAYER, Chief Judge,NEWMAN, Circuit Judge, ARCHER,Senior Circuit Judge, MICHEL,LOURIE, CLEVENGER, RADER,SCHALL, BRYSON, GAJARSA, LINN,DYK, and PROST, Circuit Judges.

Opinion of the court filed PERCURIAM, in which Chief Judge MAYER,Senior Circuit Judge ARCHER, andCircuit Judges MICHEL, LOURIE,CLEVENGER, RADER, SCHALL,BRYSON, GAJARSA, LINN, DYK, andPROST join. Concurring opinion filed byCircuit Judge CLEVENGER, in whichCircuit Judges LOURIE, SCHALL,GAJARSA, and DYK join. Concurringopinion filed by Circuit Judge RADER, inwhich Chief Judge, MAYER joins.Concurring opinion filed by Circuit JudgeDYK, in which Circuit Judge LINN joins.

Concurring opinion filed by Circuit JudgeLOURIE. Dissenting opinion filed byCircuit Judge PAULINE NEWMAN.

PER CURIAM.

Johnson and Johnston Associates (John-ston) asserted United States Patent No.5,153,050 (the 8050 patent) against R.E.Service Co. and Mark Frater (collectivelyRES). A jury found that RES willfullyinfringed claims 1 and 2 of the patentunder the doctrine of equivalents andawarded Johnston $1,138,764 in damages.Upon entry of judgment, the United StatesDistrict Court for the Northern District ofCalifornia further granted Johnston en-hanced damages, attorney fees, and ex-penses. Johnson & Johnston Assocs. v.R.E. Serv. Co., No. C97–04382 CRB, 1998WL 908925 (N.D.Cal.1998). After a hear-ing before a three-judge panel on Decem-ber 7, 1999, this court ordered en bancrehearing of the doctrine of equivalentsissue, Johnson & Johnston Assocs. v. R.E.Serv. Co., 238 F.3d 1347 (Fed.Cir.2001),which occurred on October 3, 2001. Be-cause this court concludes that RES, as amatter of law, could not have infringed the8050 patent under the doctrine of equiva-lents, this court reverses the districtcourt’s judgment of infringement underthe doctrine of equivalents, willfulness,damages, attorneys fees, and expenses.

I.

The 8050 patent, which issued October 6,1992, relates to the manufacture of printedcircuit boards. Printed circuit boards arecomposed of extremely thin sheets of con-ductive copper foil joined to sheets of adielectric (nonconductive) resin-impregnat-ed material called ‘‘prepreg.’’ The processfor making multi-layered printed circuitboards stacks sheets of copper foil andprepreg in a press, heats them to melt theresin in the prepreg, and thereby bondsthe layers.


In creating these circuit boards, workersmanually handle the thin sheets of copperfoil during the layering process. Withoutthe invention claimed in the 8050 patent,stacking by hand can damage or contami-nate the fragile foil, causing discontinuitiesin the etched copper circuits. The 8050patent claims an assembly that preventsmost damage during manual handling.The invention adheres the fragile copper

foil to a stiffer substrate sheet of alumi-num. With the aluminum substrate forprotection, workers can handle the assem-bly without damaging the fragile copperfoil. After the pressing and heating steps,workers can remove and even recycle thealuminum substrate. Figure 5 of the 8050patent shows the foil-substrate combina-tion, with the foil layer peeled back at onecorner for illustration:

Surface Ci is the protected inner surface ofthe copper foil; Ai is the inner surface ofthe aluminum substrate. A band of flexi-ble adhesive 40 joins the substrate and thefoil at the edges, creating a protected cen-tral zone CZ. The specification explains:

Because the frail, thin copper foil C wasadhesively secured to its aluminum sub-strate A, the [laminate] is stiffer and

more readily handled resulting in farfewer spoils due to damaged copper foil.

The use of the adhered substrate A,regardless of what material it is madeof, makes the consumer’s (manufactur-er’s) objective of using thinner and thin-ner foils and ultimately automating theprocedure more realistic since the foil,by use of the invention, is no longer


without the much needed physical sup-port.

’050 patent, col. 8, ll. 21–30. The specifica-tion further describes the composition ofthe substrate sheet:

While aluminum is currently the pre-ferred material for the substrate, othermetals, such as stainless steel or nickelalloys, may be used. In some instancesTTT polypropelene [sic] can be used.

’050 patent, col. 5, ll. 5–8.As noted, the jury found infringement ofclaims 1 and 2:Claim 1. A component for use in manu-facturing articles such as printed circuitboards comprising:a laminate constructed of a sheet ofcopper foil which, in a finished printedcircuit board, constitutes a functional el-ement and a sheet of aluminum whichconstitutes a discardable element;one surface of each of the copper sheetand the aluminum sheet being essen-tially uncontaminated and engageablewith each other at an interface,a band of flexible adhesive joining theuncontaminated surfaces of the sheetstogether at their borders and defining asubstantially uncontaminated centralzone inwardly of the edges of the sheetsand unjoined at the interface.

8050 patent, Claim 1, col. 8, ll. 47–60 (em-phasis supplied). Claim 2 defines a similarlaminate having sheets of copper foil ad-hered to both sides of the aluminum sheet.

The Northern District of California haspatiently handled litigation between theseparties over the 8050 patent for manyyears. In prior litigation, a jury foundthat RES had willfully infringed the 8050patent. The district court entered thejudgment under Fed.R.Civ.P. 54(b). R.E.Serv. Co. v. Johnson & Johnston Assocs.,No. C–92–20672 RPA, slip op. (N.D.Cal.Jul. 29, 1994). Later the district court

enforced this judgment against RES incontempt proceedings. R.E. Serv. Co. v.Johnson & Johnston Assocs., No. C–92–20672 RPA, slip op. at 53–54 (N.D.Cal.Jan. 25, 1995) (Order Re Contempt); R.E.Serv. Co. v. Johnson & Johnston Assocs.,No. C–92–20672 RPA, slip op. at 53–54(N.D.Cal. Sept. 6, 1995) (Order Re: Sec-ond Contempt). Ultimately the partiessettled these disputes. R.E. Serv. Co. v.Johnson & Johnston Assocs., No. C–92–20672 RPA, slip op. at 3 (N.D.Cal. Nov. 1,1995) (Stipulated Order Enjoining FurtherManufacture, Use or Sale and Final Judg-ment).

In 1997, RES began making new lami-nates for manufacture of printed circuitboards. The RES products, designated‘‘SC2’’ and ‘‘SC3,’’ joined copper foil to asheet of steel as the substrate instead of asheet of aluminum. Johnston filed a suitfor infringement. See Johnson & John-ston Assocs. v. R.E. Serv. Co. v., No. C–97–04382 CRB, slip op. at 2, 1998 WL908925 (N.D.Cal. Dec.23, 1998). In thiscase, the district court granted RES’s mo-tion for summary judgment of no literalinfringement. Johnson & Johnston As-socs. v. R.E. Serv. Co., No. C–97–04382CRB, slip op., 1998 WL 545010 (N.D.Cal.Aug.24, 1998). With respect to the doc-trine of equivalents, RES argued, citingMaxwell v. J. Baker, Inc., 86 F.3d 1098, 39USPQ2d 1001 (Fed.Cir.1996), that the 8050specification, which disclosed a steel sub-strate but did not claim it, constituted adedication of the steel substrate to thepublic. Johnston argued that the steelsubstrate was not dedicated to the public,citing YBM Magnex, Inc. v. Int’l TradeComm’n, 145 F.3d 1317, 46 USPQ2d 1843(Fed.Cir.1998). On cross-motions for sum-mary judgment, the district court ruledthat the 8050 patent did not dedicate thesteel substrate to the public, and set thequestion of infringement by equivalents for


trial, along with the issues of damages andwillful infringement. Johnson & JohnstonAssocs. v. R.E. Serv. Co., No. C–97–04382CRB, slip op., 1998 WL 545010 (N.D.Cal.Aug.24, 1998).

The jury found RES liable for willfulinfringement under the doctrine of equiva-lents and awarded Johnston $1,138,764 indamages. Johnson & Johnston Assocs. v.R.E. Serv. Co., No. C–97–04382 CRB, slipop. at 4, 1998 WL 908925 (N.D.Cal. Dec.23,1998) (noting the Oct. 22, 1998 jury ver-dict). Exercising its discretion under 35U.S.C. § 284, the district court enhancedJohnston’s damages—doubling the jury’sassessment for lost profits and reasonableroyalties, but not for price erosion. R.E.Serv. Co. v. Johnson & Johnston Assocs.,No. C–97–04382 CRB, slip op. (N.D.Cal.Nov.30, 1998). The court also awardedattorney fees and expenses under 35U.S.C. § 285. Id.

II.

On appeal, RES does not challenge thejury’s factual finding of equivalency be-tween the copper-steel and copper-alumi-num laminates. Instead, citing Maxwell,RES argues that Johnston did not claimsteel substrates, but limited its patentscope to aluminum substrates, thus dedi-cating to the public this unclaimed subjectmatter. On this ground, RES challengesthe district court’s denial of its motion forsummary judgment that RES’s copper-steel laminates are not equivalent, as amatter of law, to the claimed copper-alumi-num laminates. Johnston responds thatthe steel substrates are not dedicated tothe public, citing YBM Magnex. In otherwords, the two parties dispute whetherMaxwell or YBM Magnex applies in thiscase with regard to infringement under thedoctrine of equivalents.

In Maxwell, the patent claimed a systemfor attaching together a mated pair of

shoes. 86 F.3d at 1101–02. Maxwellclaimed fastening tabs between the innerand outer soles of the attached shoes.Maxwell disclosed in the specification, butdid not claim, fastening tabs that could be‘‘stitched into a lining seam of the shoes.’’U.S. Patent No. 4,624,060, col. 2, l. 42.Based on the ‘‘well-established rule that‘subject matter disclosed but not claimedin a patent application is dedicated to thepublic,’ ’’ this court held that Baker couldnot, as a matter of law, infringe under thedoctrine of equivalents by using the dis-closed but unclaimed shoe attachment sys-tem. Maxwell, 86 F.3d at 1106 (quotingUnique Concepts, Inc. v. Brown, 939 F.2d1558, 1562–63, 19 USPQ2d 1500, 1504(Fed.Cir.1991)). This court stated further:

By [Maxwell’s failure] to claim thesealternatives, the Patent and TrademarkOffice was deprived of the opportunityto consider whether these alternativeswere patentable. A person of ordinaryskill in the shoe industry, reading thespecification and prosecution history,and interpreting the claims, would con-clude that Maxwell, by failing to claimthe alternate shoe attachment systemsin which the tabs were attached to theinside shoe lining, dedicated the use ofsuch systems to the public.

Maxwell, 86 F.3d at 1108.

In YBM Magnex, the patent claimed apermanent magnet alloy comprising cer-tain elements, including ‘‘6,000 to 35,000ppm oxygen.’’ U.S. Patent No. 4,588,439(the 8439 patent), col. 3, l. 12. The accusedinfringer used similar magnet alloys withan oxygen content between 5,450 and 6,000ppm (parts per million), which was alleged-ly disclosed but not claimed in the 8439patent. In YBM Magnex, this court stat-ed that Maxwell did not create a new ruleof law that doctrine of equivalents couldnever encompass subject matter disclosedin the specification but not claimed. 145


F.3d at 1321. Distinguishing Maxwell,this court noted:

Maxwell avoided examination of the un-claimed alternative, which was distinctfrom the claimed alternative. In view ofthe distinctness of the two embodiments,both of which were fully described in thespecification, the Federal Circuit deniedMaxwell the opportunity to enforce theunclaimed embodiment as an equivalentof the one that was claimed.

Id. at 1320. In other words, this court inYBM Magnex purported to limit Maxwellto situations where a patent discloses anunclaimed alternative distinct from theclaimed invention. Thus, this court mustdecide whether a patentee can apply thedoctrine of equivalents to cover unclaimedsubject matter disclosed in the specifica-tion.

III.

[1] Both the Supreme Court and thiscourt have adhered to the fundamentalprinciple that claims define the scope ofpatent protection. See, e.g., Aro Mfg. v.Convertible Top Replacement Co., 365 U.S.336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)(‘‘[T]he claims made in the patent are thesole measure of the grantTTTT’’); Cont’lPaper Bag Co. v. E. Paper Bag Co., 210U.S. 405, 419, 28 S.Ct. 748, 52 L.Ed. 1122(1908) (‘‘[T]he claims measure the inven-tion.’’); Atl. Thermoplastics Co. v. FaytexCorp., 974 F.2d 1299, 1300, 24 USPQ2d1138, 1139–40 (Fed.Cir.1992) (‘‘The claimsalone define the patent right.’’); SRI Int’lv. Matsushita Elec. Corp., 775 F.2d 1107,1121, 227 USPQ 577, 585 (Fed.Cir.1985)(‘‘It is the claims that measure the inven-tion.’’). The claims thus give notice of thescope of patent protection. See, e.g.,Mahn v. Harwood, 112 U.S. 354, 361, 5S.Ct. 174, 28 L.Ed. 665 (1884) (‘‘The publicis notified and informed by the most sol-emn act on the part of the patentee, that

his claim to invention is for such and suchan element or combination, and for nothingmore.’’). The claims give notice both tothe examiner at the U.S. Patent andTrademark Office during prosecution, andto the public at large, including potentialcompetitors, after the patent has issued.

[2] Consistent with its scope definitionand notice functions, the claim require-ment presupposes that a patent applicantdefines his invention in the claims, not inthe specification. After all, the claims, notthe specification, provide the measure ofthe patentee’s right to exclude. MilcorSteel Co. v. George A. Fuller Co., 316 U.S.143, 146, 62 S.Ct. 969, 86 L.Ed. 1332 (1942)(‘‘Out of all the possible permutations ofelements which can be made from thespecifications, he reserves for himself onlythose contained in the claims.’’) (quotingMilcor Steel Co. v. George A. Fuller Co.,122 F.2d 292, 294 (2d Cir.1941)); Cont’lPaper Bag, 210 U.S. at 419, 28 S.Ct. 748(‘‘The invention, of course, must be de-scribed and the mode of putting it to prac-tical use, but the claims measure the in-vention.’’); McClain v. Ortmayer, 141 U.S.419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891)(‘‘The claim is the measure of his right torelief, and while the specification may bereferred to to limit the claim, it can neverbe made available to expand it.’’); SRIInt’l, 775 F.2d at 1121, n. 14 (‘‘Specifica-tions teach. Claims claim.’’).

[3] Moreover, the law of infringementcompares the accused product with theclaims as construed by the court. In-fringement, either literally or under thedoctrine of equivalents, does not arise bycomparing the accused product ‘‘with apreferred embodiment described in thespecification, or with a commercialized em-bodiment of the patentee.’’ SRI Int’l, 775F.2d at 1121.

Even as early as the 1880s, the SupremeCourt emphasized the predominant role of


claims. For example, in Miller v. Bridge-port Brass Co., a case addressing a reissuepatent filed fifteen years after the originalpatent, the Supreme Court broadly stated:‘‘[T]he claim of a specific device or combi-nation, and an omission to claim otherdevices or combinations apparent on theface of the patent, are, in law, a dedicationto the public of that which is not claimed.’’104 U.S. 350, 352, 26 L.Ed. 783 (1881).Just a few years later, the Court repeatedthat sentiment in another reissue patentcase: ‘‘[T]he claim actually made operatesin law as a disclaimer of what is notclaimed; and of all this the law chargesthe patentee with the fullest notice.’’Mahn, 112 U.S. at 361. The Court ex-plained further:

Of course, what is not claimed is publicproperty. The presumption is, and suchis generally the fact, that what is notclaimed was not invented by the paten-tee, but was known and used before hemade his invention. But, whether so ornot, his own act has made it public prop-erty if it was not so before. The patentitself, as soon as it is issued, is theevidence of this. The public has theundoubted right to use, and it is to bepresumed does use, what is not specifi-cally claimed in the patent.

Id. at 361.

The doctrine of equivalents extends theright to exclude beyond the literal scope ofthe claims. The Supreme Court first ap-plied the modern doctrine of equivalents inGraver Tank & Mfg. Co. v. Linde AirProds. Co. (Graver II ). In that case, theCourt explained: ‘‘equivalency must be de-termined against the context of the patent,the prior art, and the particular circum-stances of the case.’’ 339 U.S. 605, 609, 70S.Ct. 854, 94 L.Ed. 1097 (1950). In Graver

I, a predecessor case addressing the validi-ty of the claims at issue, the Court heldinvalid composition claims 24 and 26 com-prising ‘‘silicates’’ and ‘‘metallic silicates.’’Graver Tank & Mfg. v. Linde Air Prods.Co., 336 U.S. 271, 276–77, 69 S.Ct. 535, 93L.Ed. 672 (1949) (Graver I ). Specifically,the Court found those claims too broadbecause they encompassed some inopera-tive silicates along with the nine operativemetallic silicates in the specification. Id.at 276, 69 S.Ct. 535. The Court did nothold invalid narrower claims comprising‘‘alkaline earth metals.’’

[4] Thus, in the infringement action ofGraver II, the Supreme Court addressedonly the narrower claims comprising ‘‘alka-line earth metals.’’ The alleged infringingcompositions in Graver II are similar tothe compositions of the narrower claims,except that they substitute silicate of man-ganese—a metallic silicate such as in theearlier invalidated claims—for silicates of‘‘alkaline earth metals’’ (e.g., magnesiumor calcium) claimed in the narrower claims.Because the Court determined that ‘‘underthe circumstances the change was so in-substantial,’’ and because the accused com-positions ‘‘perform[ed] substantially thesame function in substantially the sameway to obtain the same result,’’ the Courtupheld the finding of infringement underthe doctrine of equivalents. Graver II,339 U.S. at 608–10, 70 S.Ct. 854 (quotingSanitary Refrigerator Co. v. Winters, 280U.S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147(1929)). The Court’s holding and the his-tory of Graver II show that the patenteehad not dedicated unclaimed subject mat-ter to the public. In fact, the patentee hadclaimed the ‘‘equivalent’’ subject matter,even if the Court eventually held the rele-vant claims too broad.1

1. This court respectfully disagrees with thestatement in the dissent that: ‘‘There was no

claim to manganese silicate.’’ As earlier ex-plained, composition claims 24 and 26 com-


In 1997, less than a year after this courtdecided Maxwell, the Supreme Court ad-dressed the doctrine of equivalents againin Warner–Jenkinson Co. v. Hilton DavisChem. Co., 520 U.S. 17, 117 S.Ct. 1040, 137L.Ed.2d 146. In that case, Warner–Jen-kinson invited the Court ‘‘to speak thedeath’’ of the doctrine of equivalents. Id.at 21, 117 S.Ct. 1040. The Court declinedthat invitation. In Warner–Jenkinson, thepatentee added the phrase ‘‘at a pH fromapproximately 6.0 to 9.0’’ to claim 1 duringprosecution. Id. at 22, 117 S.Ct. 1040.The alleged infringer operated its ultrafil-tration process at a pH of 5.0. Id. at 23,117 S.Ct. 1040. The Supreme Court stat-ed that ‘‘while a lower limit of [pH] 6.0, byits mere inclusion, became a material ele-ment of the claim, that did not necessarilypreclude the application of the doctrine ofequivalents as to that element.’’ Id. at 32,117 S.Ct. 1040 (emphasis omitted). Onremand, the Supreme Court instructedthis court to determine the patentee’s rea-son, if any, for adding the lower pH limitof 6.0 during prosecution.

The patent at issue in Warner–Jenkin-son did not disclose or suggest an ultrafil-tration process where the pH of the reac-tion mixture was 5.0. Hilton Davis Chem.Co. v. Warner–Jenkinson Co., 114 F.3d1161, 1164 (Fed.Cir.1997). In fact, thespecification practically repeated the claimlanguage: ‘‘it is preferred to adjust the pHto approximately 6.0 to 8.0 before passagethrough the ultrafiltration membrane.’’U.S. Patent No. 4,560,746, col. 7, ll. 59–61(emphasis added). Thus, Warner–Jenkin-son did not present an instance of thepatentee dedicating subject matter to thepublic in its specification. In 1998, less

than a year later, this court decided YBMMagnex.

V.

[5] As stated in Maxwell, when a pat-ent drafter discloses but declines to claimsubject matter, as in this case, this actiondedicates that unclaimed subject matter tothe public. Application of the doctrine ofequivalents to recapture subject matterdeliberately left unclaimed would ‘‘conflictwith the primacy of the claims in definingthe scope of the patentee’s exclusiveright.’’ Sage Prods. Inc. v. Devon Indus.,Inc., 126 F.3d 1420, 1424, 44 USPQ2d1103, 1107 (Fed.Cir.1997) (citing Warner–Jenkinson, 520 U.S. at 29, 117 S.Ct. 1040);see also Conopco, Inc. v. May Dep’t StoresCo., 46 F.3d 1556, 1562, 32 USPQ2d 1225,1228 (Fed.Cir.1994) (‘‘The doctrine ofequivalents cannot be used to erase ‘mean-ingful structural and functional limitationsof the claim on which the public is entitledto rely in avoiding infringement.’ ’’ (inter-nal citations omitted)); Charles Greiner &Co. v. Mari–Med Mfg., Inc., 962 F.2d 1031,1036 (Fed.Cir.1992) (‘‘Most important,however, a court must, in applying thedoctrine, avoid significant conflict with thefundamental principle that claims definethe limits of patent protection.’’).

[6] Moreover, a patentee cannot nar-rowly claim an invention to avoid prosecu-tion scrutiny by the PTO, and then, afterpatent issuance, use the doctrine of equiva-lents to establish infringement because thespecification discloses equivalents. ‘‘Sucha result would merely encourage a patentapplicant to present a broad disclosure inthe specification of the application and file

prising ‘‘silicates’’ and ‘‘metallic silicates’’were broad enough to encompass manganesesilicate. Therefore, our holding today is in noway in conflict with Graver Tank. Nor doesthis court agree that intent plays any role inthe Maxwell rule. To the contrary, one of the

advantages of the Maxwell rule is that it is apurely objective test. The patentee’s subjec-tive intent is irrelevant to determining wheth-er unclaimed subject matter has been dis-closed and therefore dedicated to the public.


narrow claims, avoiding examination ofbroader claims that the applicant couldhave filed consistent with the specifica-tion.’’ Maxwell, 86 F.3d at 1107 (citingGenentech, Inc. v. Wellcome Found. Ltd.,29 F.3d 1555, 1564, 31 USPQ2d 1161, 1167(Fed.Cir.1994)). By enforcing the Max-well rule, the courts avoid the problem ofextending the coverage of an exclusiveright to encompass more than that proper-ly examined by the PTO. Keystone BridgeCo. v. Phoenix Iron Co., 95 U.S. 274, 278,24 L.Ed. 344 (1877) (‘‘[T]he courts have noright to enlarge a patent beyond the scopeof its claim as allowed by the Patent Of-fice, or the appellate tribunal to whichcontested applications are referred.’’).

IV.

[7] In this case, Johnston’s 8050 patentspecifically limited the claims to ‘‘a sheet ofaluminum’’ and ‘‘the aluminum sheet.’’The specification of the 8050 patent, how-ever, reads: ‘‘While aluminum is currentlythe preferred material for the substrate,other metals, such as stainless steel ornickel alloys may be used.’’ Col. 5, ll. 5–10. Having disclosed without claiming thesteel substrates, Johnston cannot now in-voke the doctrine of equivalents to extendits aluminum limitation to encompass steel.Thus, Johnston cannot assert the doctrineof equivalents to cover the disclosed butunclaimed steel substrate. To the extentthat YBM Magnex conflicts with this hold-ing, this en banc court now overrules thatcase.

[8] A patentee who inadvertently failsto claim disclosed subject matter, however,is not left without remedy. Within twoyears from the grant of the original patent,a patentee may file a reissue application

and attempt to enlarge the scope of theoriginal claims to include the disclosed butpreviously unclaimed subject matter. 35U.S.C. § 251 (2000). In addition, a paten-tee can file a separate application claimingthe disclosed subject matter under 35U.S.C. § 120 (2000) (allowing filing as acontinuation application if filed before allapplications in the chain issue). Notably,Johnston took advantage of the latter ofthe two options by filing two continuationapplications that literally claim the rele-vant subject matter.2

CONCLUSION

For the reasons stated above, the dis-trict court erred as a matter of law inconcluding that RES infringed the 8050patent under the doctrine of equivalents byusing a steel substrate. Consequently,this court reverses the district court’sjudgment of infringement under the doc-trine of equivalents, the judgment of will-ful infringement, as well as the award ofenhanced damages and attorney fees andexpenses.

COSTS

Each party shall bear its own costs.

REVERSED.

CLEVENGER, Circuit Judge, withwhom Circuit Judges LOURIE, SCHALL,GAJARSA, DYK join, concurring.

Judge Newman has a different view ofthis case than I do. It is incorrect tocharacterize our decision today as an-nouncing a new rule. It is equally incor-rect to characterize our decision today as amutinous act in the light of the Supreme

2. These applications issued as U.S. PatentNos. 5,725,937 (the 8937 patent) and 5,674,-596 (the 8596 patent) on March 10, 1998 andOctober 7, 1997, respectively. Claims 3 and

6 of the 8596 patent claim ‘‘a metal substratesheet,’’ while independent claims of the 8937patent claim ‘‘a sheet of stainless steel.’’


Court’s decision in Graver Tank & Manu-facturing Co. v. Linde Air Products Co.,339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097(1950). For the reasons stated in the opin-ions for the court and by Judge Dyk, ourdecision is not inconsistent with GraverTank.

We did not take the case en banc tomake new law. The law followed by thecourt in this case is old law. This law wasold law when we decided Maxwell v. J.Baker, Inc., 86 F.3d 1098 (Fed.Cir.1996),for the reasons so aptly stated in the Max-well opinion. Id. at 1106–07. We tookthis case en banc because the parties andthe district court perceived conflict be-tween Judge Lourie’s opinion for the courtin Maxwell and Judge Newman’s opinionfor the court in a later case, YBM Magnex,Inc. v. International Trade Commission,145 F.3d 1317 (Fed.Cir.1998).

An important task of this court is toensure uniformity in the application of ourprecedent. We perform this task when wereassure the district courts and the barthat our previous decision in Maxwellstates the correct rule. For the reasonsstated in the court’s opinion in this case, itis not possible for the older holding inMaxwell to live comfortably with the new-er holding in YBM Magnex. Our choice inthis case was simple: whether to overruleMaxwell or YBM Magnex.

RADER, Circuit Judge, with whomMAYER, Chief Judge, joins, concurring.

While endorsing the results and reason-ing of the court, I would offer an alterna-tive reasoning. This alternative wouldalso help reconcile the preeminent noticefunction of patent claims with the protec-tive function of the doctrine of equivalents.This reconciling principle is simple: thedoctrine of equivalents does not capturesubject matter that the patent drafter rea-sonably could have foreseen during the

application process and included in theclaims. This principle enhances the noticefunction of claims by making them the soledefinition of invention scope in all foresee-able circumstances. This principle alsoprotects patentees against copyists whoemploy insubstantial variations to expro-priate the claimed invention in some un-foreseeable circumstances.

Few problems have vexed this courtmore than articulating discernible stan-dards for non-textual infringement. Onthe one hand, the Supreme Court has rec-ognized that the doctrine of equivalentsprovides essential protection for inven-tions: ‘‘[T]o permit imitation of a patentedinvention which does not copy every literaldetail would be to convert the protection ofthe patent grant into a hollow and uselessthing TTT leav[ing] room for indeed en-courag[ing] the unscrupulous copyist tomake unimportant and insubstantialchanges.’’ Graver Tank & Mfg. Co. v.Linde Air Prods. Co., 339 U.S. 605, 607, 70S.Ct. 854, 94 L.Ed. 1097 (1950). The pro-tective function of non-textual infringe-ment, however, has a price. Recently, theSupreme Court acknowledged that a broaddoctrine of equivalents can threaten thenotice function of claims: ‘‘There can be nodenying that the doctrine of equivalents,when applied broadly, conflicts with thedefinitional and public-notice functions ofthe statutory claiming requirement.’’Warner–Jenkinson Co. v. Hilton DavisChem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040,137 L.Ed.2d 146 (1997). These competingpolicies make it difficult to set a standardthat protects the patentee against insub-stantial changes while simultaneously pro-viding the public with adequate notice ofpotentially infringing behavior.

In general, the Supreme Court and thiscourt have attempted to deal with thesecompeting principles by placing limits onnon-textual infringement. Thus, in fur-


therance of the notice objective, Pennwaltand Warner–Jenkinson require an equiva-lent for each and every element of a claim(applying the doctrine of equivalents to theclaim as a whole gives too much room toenforce the claim beyond its notifying limi-tations). Pennwalt Corp. v. Durand–Way-land, Inc., 833 F.2d 931, 935, 4 USPQ2d1737, 1740 (Fed.Cir.1987) (citing Lemelsonv. United States, 752 F.2d 1538, 1551, 224USPQ 526, 533 (Fed.Cir.1985)); Warner–Jenkinson, 520 U.S. at 40, 117 S.Ct. 1040.Similarly, to enhance notice, Festo andWarner–Jenkinson propose to bar paten-tees from expanding their claim to em-brace subject matter surrendered duringthe patent acquisition process. FestoCorp. v. Shoketsu Kinzoku Kogyo Kabush-iki Co., 234 F.3d 558, 564–65, 56 USPQ2d1865, 1868–70 (Fed.Cir.2000); Warner–Jenkinson, 520 U.S. at 34, 117 S.Ct. 1040.Finally, Wilson Sporting Goods preventsthe doctrine of equivalents from expandingclaim scope to embrace prior art. WilsonSporting Goods Co. v. David Geoffrey &Assocs., 904 F.2d 677, 683, 14 USPQ2d1942, 1947–48 (Fed.Cir.1990).

Perhaps more than each of these otherrestraints on non-textual infringement, aforeseeability bar would concurrentlyserve both the predominant notice functionof the claims and the protective function ofthe doctrine of equivalents. When one ofordinary skill in the relevant art wouldforesee coverage of an invention, a patentdrafter has an obligation to claim thoseforeseeable limits. This rule enhances thenotice function of claims by making themthe sole definition of invention scope in allforeseeable circumstances. When theskilled artisan cannot have foreseen a vari-ation that copyists employ to evade theliteral text of the claims, the rule permitsthe patentee to attempt to prove that an‘‘insubstantial variation’’ warrants a find-ing of non-textual infringement. In eitherevent, the claims themselves and the prior

art erect a foreseeability bar that circum-scribes the protective function of non-tex-tual infringement. Thus, foreseeabilitysets an objective standard for assessingwhen to apply the doctrine of equivalents.

A foreseeability bar thus places a premi-um on claim drafting and enhances thenotice function of claims. To restate, ifone of ordinary skill in the relevant artwould reasonably anticipate ways to evadethe literal claim language, the patent appli-cant has an obligation to cast its claims toprovide notice of that coverage. In otherwords, the patentee has an obligation todraft claims that capture all reasonablyforeseeable ways to practice the invention.The doctrine of equivalents would not res-cue a claim drafter who does not providesuch notice. Foreseeability thus places apremium on notice while reserving a limit-ed role for the protective function of thedoctrine of equivalents.

This court actually already has articulat-ed this foreseeability principle in the con-text of the doctrine of equivalents. Sixmonths after the Supreme Court decidedWarner–Jenkinson, this court decidedSage Prods., Inc. v. Devon Indus., Inc.,126 F.3d 1420, 44 USPQ2d 1103 (Fed.Cir.1997). In that case, this court found noinfringement, either literally or under thedoctrine of equivalents, of a patent on adisposal system for sharp medical instru-ments. Id. at 1421. When addressing thedoctrine of equivalents issue, this courtapplied the foreseeability bar:

The claim at issue defines a relativelysimple structural device. A skilled pat-ent drafter would foresee the limitingpotential of the ‘‘over said slot’’ limita-tion. No subtlety of language or com-plexity of the technology, nor any subse-quent change in the state of the art, suchas later-developed technology, obfuscat-ed the significance of this limitation at


the time of its incorporation into theclaim. If Sage desired broad patentprotection for any container that per-formed a function similar to its claimedcontainer, it could have sought claimswith fewer structural encumbrances.Had Sage done so, then the Patent andTrademark Office (PTO) could have ful-filled its statutory role in helping toensure that exclusive rights issue only tothose who have, in fact, contributedsomething new, useful, and unobvious.Instead, Sage left the PTO with mani-festly limited claims that it now seeks toexpand through the doctrine of equiva-lents. However, as between the patenteewho had a clear opportunity to negoti-ate broader claims but did not do so,and the public at large, it is the patenteewho must bear the cost of its failure toseek protection for this foreseeable alter-ation of its claimed structure.

Id. at 1425 (emphasis added; footnotesand citations omitted). The Sage courtemphasized that a ‘‘skilled patent drafterwould foresee the limiting potential of the‘over the slot’ limitation.’’ Id. Thus, thecourt barred application of the doctrine ofequivalents ‘‘for this foreseeable alterationof [the] claimed structure.’’ Id.

In Sage, this court also noted specificallysome types of subject matter that may notbe foreseeable during the application pro-cess subject matter arising from a ‘‘subse-quent change in the state of the art, suchas later-developed technology,’’ id.; seealso Warner–Jenkinson, 520 U.S. at 37,117 S.Ct. 1040 (noting that the doctrineextends to after-arising technology); AlSite Corp. v. VSI Int’l, Inc., 174 F.3d 1308,1320, 50 USPQ2d 1161, 1168 (Fed.Cir.1999) (‘‘An ‘after-arising’ technology couldthus infringe under the doctrine of equiva-lents without infringing literally as a§ 112, ¶ 6 equivalent.’’); Pennwalt, 833F.2d at 938 (‘‘[T]he facts here do not in-volve later-developed computer technology

which should be deemed within the scopeof the claims to avoid the pirating of aninvention.’’), or subject matter cloaked bythe ‘‘subtlety of language or complexity ofthe technology,’’ 126 F.3d at 1425; see alsoMahn v. Harwood, 112 U.S. 354, 361, 5S.Ct. 174, 28 L.Ed. 665 (1884) (‘‘If thespecification is complicated and the claimis ambiguous or involved, the patenteemay be entitled to greater indulgence; andof this the court can rightfully judge ineach case.’’).

Sage is not the only case to acknowl-edge the value of a foreseeability limit onnon-textual infringement. Fin ControlSys. Pty, Ltd. v. OAM, Inc., 265 F.3d1311, 1320–21, 60 USPQ2d 1203, 1209–10(Fed.Cir.2001); SciMed Life Sys., Inc. v.Advanced Cardiovascular Sys., Inc., 242F.3d 1337, 1346–47, 58 USPQ2d 1059,1066–67 (Fed.Cir.2001); Zodiac PoolCare, Inc. v. Hoffinger Indus., Inc., 206F.3d 1408, 1416, 54 USPQ2d 1141, 1147(Fed.Cir.2000); Moore U.S.A, Inc. v.Standard Register Co., 229 F.3d 1091,1106, 56 USPQ2d 1225, 1235 (Fed.Cir.2000); Antonious v. Spalding & EvenfloCos., 44 F.Supp.2d 732, 738 (D.Md.1998),aff’d in part, rev’d in part, 217 F.3d 849(Fed.Cir.1999); Kinzenbaw v. Deere &Co., 741 F.2d 383, 389, 222 USPQ 929,933 (Fed.Cir.1984). In one of thosecases, Kinzenbaw v. Deere & Co., thiscourt concluded that the ‘‘doctrine ofequivalents is designed to protect inven-tors from unscrupulous copyists TTT andunanticipated equivalents.’’ 741 F.2d at389 (emphasis added). Referencing acase involving after-arising technology,the Federal Circuit did not require thepatent applicant to claim ‘‘all future de-velopments which enable the practice of[each limitation of] his invention in sub-stantially the same way.’’ Id. (quotingHughes Aircraft Co. v. United States, 717F.2d 1351, 1362, 219 USPQ 473, 481 (Fed.


Cir.1983) (a case involving after-arisingtechnology, namely microprocessors in-stalled on board a satellite)). In otherwords, the court acknowledged the role offoreseeability in enforcing the doctrine ofequivalents. Nonetheless, prosecutionhistory estoppel precluded the patentee’sreliance on non-textual infringement.The court explained further that the vari-ation from the claims was neither copiednor unforeseeable to the patentee at thetime of filing. In reaching this result, thecourt suggested that if variation had beenunforeseeable during the application pro-cess, the doctrine of equivalents wouldstill have been available to the patentee.Id.

Finally, turning more specifically to theissue in this case, in Maxwell v. J. Baker,Inc., 86 F.3d 1098, 39 USPQ2d 1001 (Fed.Cir.1996), this court again dealt with thedoctrine of equivalents. This court foundthat ‘‘Maxwell limited her claims to fasten-ing tabs attached between the inner andouter soles.’’ Id. at 1108. This court un-derscored that one of ordinary skill in theshoe industry would have discerned fromreading the patent that the drafter couldhave foreseen and claimed the alternativeshoe attachment system, but declined to doso. Id. Thus, this court concluded thatMaxwell had dedicated the alternative at-tachment system to the public. Id. Whilenot expressly invoking foreseeability as inSage and Kinzenbaw, this court relied onthe perspective of one of skill in the art,thus suggesting that objective foreseeabil-ity adds weight to its foreclosure of equiva-lents.

In this case, Johnston’s 8050 patentclaimed only a ‘‘sheet of aluminum’’ and‘‘the aluminum sheet’’ twice specifying thealuminum limitation. The patent specifica-tion then expressly mentioned other poten-tial substrate metals, including stainlesssteel. col. 5, ll. 5–10. Johnston’s patent

disclosure expressly admits that it foresawother metals serving as substrates. Yetthe patent did not claim anything beyondaluminum. Foreseeability bars Johnstonfrom recapturing as an equivalent subjectmatter not claimed but disclosed. In Sageterms, ‘‘as between [Johnston] who had aclear opportunity to negotiate broaderclaims but did not do so, and the public atlarge, it is [Johnston] who must bear thecost of its failure to seek protection for thisforeseeable alteration of its claimed struc-ture.’’ 126 F.3d at 1425.

Foreseeability relegates non-textual in-fringement to its appropriate exceptionalplace in patent policy. The doctrine ofequivalents should not rescue claim draft-ers who fail to give accurate notice of aninvention’s scope in the claims. The Pat-ent Act supplies a correction process forapplicants who have claimed ‘‘more or lessthan [they] had a right to claim in thepatent.’’ 35 U.S.C. §§ 251, 252 (2001).The doctrine of equivalents need not dupli-cate the statute’s means of correctingclaiming errors.

Implicit in the protective function of thedoctrine of equivalents is the notion thatthe patentees could not have protectedthemselves with reasonable care and fore-sight. Enforcing this Sage principle moreaggressively will help achieve a better bal-ance between the notice function of claimsand the protective function of non-textualinfringement.

DYK, Circuit Judge, with whom LINN,Circuit Judge, joins, concurring.

I join the majority opinion, and writeseparately only to emphasize further whyour decision today is entirely consistentwith the Supreme Court’s decision inGraver Tank & Manufacturing Co., Inc. v.Linde Air Products Co., 339 U.S. 605, 70S.Ct. 854, 94 L.Ed. 1097 (1950) (‘‘GraverTank II’’ ).


In the first Graver Tank decision, Grav-er Tank & Manufacturing Co., Inc. v.Linde Air Products Co., 336 U.S. 271, 276–77, 69 S.Ct. 535, 93 L.Ed. 672 (1949), theCourt approved the district court’s deci-sion that composition claims 24 and 26 ofU.S. Patent No. 2,043,960 (‘‘the 8960 pat-ent’’) relating to electric welding were in-valid on the ground that they were toobroad and comprehended more than theinvention. The Court also approved thedistrict court’s decision that compositionclaims 18, 20, 22, and 23 were valid andinfringed. Id. at 275.

The Court then granted rehearing toreconsider whether the four valid claims18, 20, 22, and 23 were infringed andwhether the doctrine of equivalents ap-plied. Graver Tank II, 339 U.S. at 606, 70S.Ct. 854. On rehearing, the Court in anopinion by Justice Jackson held that thedoctrine of equivalents did in fact apply,and that claims 18, 20, 22, and 23 wereinfringed under the doctrine of equiva-lents:

It is difficult to conceive of a case moreappropriate for application of the doc-trine of equivalents. The disclosures ofthe prior art made clear that manga-nese silicate was a useful ingredient inwelding compositions. Specialists fa-miliar with the problems of weldingcompositions understood that manga-nese was equivalent to and could besubstituted for magnesium in the compo-sition of the patented flux and theirobservations were confirmed by the lit-erature of chemistry.

Id. at 612, 70 S.Ct. 854 (emphasis added).Justice Douglas dissented on the ground

that the equivalent subject matter hadbeen dedicated to the public: ‘‘[The man-ganese silicate flux] was disclosed in theapplication and then excluded from theclaims. It therefore became public prop-erty.’’ Id. at 618, 70 S.Ct. 854 (Douglas,

J., dissenting). See also id. at 617, 70S.Ct. 854 (Black, J., dissenting).

Despite Justice Jackson’s usual eleganceand precision of expression, the majorityopinion does not respond to either dissentor explain why there had been no dedica-tion to the public as a result of the disclo-sures in the specification. As a result, wemust look to the facts of the case to deter-mine the scope of the Court’s holding inGraver Tank II.

The court here explains the consistencyof its rule with Graver Tank II on theground that ‘‘the patentee had claimed the‘equivalent’ subject matter, even if theCourt eventually held the relevant claimstoo broad.’’ Ante at 1053. In otherwords, I understand the majority to saythat the dedication rule is a species ofconscious waiver. The patentee has con-trol over the drafting of the claims, and ifhe discloses but omits to claim certainsubject matter, he will be held to havewaived the right to capture the disclosedmatter under the doctrine of equivalents,and to have dedicated it to the public. Nosuch waiver occurs where, as in GraverTank II, the patentee actually claimed thesubject matter, even if the particularclaims are later held invalid. There is,moreover, in such circumstances far lesspossibility that the patentee is ‘‘gaming’’the system, that is, deliberately writingnarrow claims with the objective of avoid-ing a searching PTO examination and re-capturing the disclosed subject matterthrough the doctrine of equivalents. Thus,the majority concludes, and I agree, thatGraver Tank II is distinguishable on itsfacts because the equivalent subject mat-ter in that case (if disclosed) was alsoclaimed.

In addition, I find another significantfactual distinction between this case andGraver Tank II. In finding its decisionconsistent with Graver Tank II, the major-


ity here assumes that the Graver Tank IIpatent did in fact disclose the equivalentsubject matter later sought to be coveredby the doctrine of equivalents. But a care-ful examination of the record shows that itdid not do so with any clarity. While thedistrict court explicitly found that theGraver Tank II patent disclosed the sub-ject matter sought to be covered by thedoctrine of equivalents,1 this was a matterof some controversy. The invalidatedclaims of the 8960 patent (24 and 26) weregeneral and made no specific reference tothe use of manganese. The specificationmade reference to the possible use of man-ganese, but it was not clear that the speci-fication actually disclosed that manganesesilicate (or the particular combination re-flected in the infringing material) workedfor its intended purpose.2 Thus, this caseis factually different from Graver Tank II,in that the clear disclosures present hereand in Maxwell v. J. Baker, Inc., 86 F.3d1098, 1108, 39 USPQ2d 1001, 1007 (Fed.Cir.1996) did not exist in Graver Tank II.

On this ground our decision here is alsoconsistent with Graver Tank II.

Finally, quite apart from the factual dis-tinctions of Graver Tank II, it seems high-ly likely that the Supreme Court did noteven consider the question of dedication bydisclosure in the specification to be proper-ly before it.

The district court specifically held thatthe manganese equivalent was allowablebecause it was disclosed in the specifica-tion, stating:

[T]he fact that manganese is a propersubstitute for calcium silicate as a majoringredient of the [claimed] welding com-position TTT is fully disclosed in thespecification of their patent.

Linde Air Prods., 86 F.Supp. at 199, 75USPQ at 238.

In the Supreme Court the alleged in-fringer (the petitioner) urged that the pat-entee, by not claiming manganese, haddedicated it to the public and that thepatentee could not reclaim the manganese

1. The district court stated:

In the patent the inventors state, ‘‘[w]e haveused calcium silicate and silicates of sodi-um, barium, iron, manganese, cobalt, mag-nesium, nickel and aluminum, both in bina-ry and ternary combinations, in variousproportions.’’ Thus, the fact that manga-nese is a proper substitute for calcium sili-cate as a major ingredient of the weldingcomposition invented by Jones, Kennedy,and Rotermund is fully disclosed in thespecification of their patent. The defen-dants have urged a construction that wouldhave the sentence in question read, ‘‘[w]ehave used calcium silicate with or plus sili-cates of sodium, etc.’’ It is my view thatthe correct construction of the sentence is,‘‘[w]e have used calcium silicate and alsosilicates of sodium, etc.’’ That this is thecorrect view is borne out by the first appli-cation. That document in part recites:‘‘ * * * and there are other materials suit-able to form the main body of the flux.Magnesium silicate, manganese silicate orthese in combination serve admirably.

* * * Particular fluxes that we have usedare as follows: * * * (2) manganese silicateMnO.SiO2 * * *.’’ Accordingly, it is con-cluded that the patent itself fully disclosesthat welding compositions composed chief-ly of manganese silicate and prepared ac-cording to the teachings of the patent areequivalent to those in which the alkalineearth metals are the principal constituents.

Linde Air Prods. Co. v. Graver Tank & Mfg.Co., 86 F.Supp. 191, 199–200, 75 USPQ 231,238 (N.D.Ind.1947).

2. The relevant portion of the specificationstated:

We have used calcium silicate and silicatesof sodium, barium, iron, manganese, co-balt, magnesium, nickel and aluminum,both in binary and ternary combinations, invarious proportionsTTTT While a number ofthese conductive welding compositions aremore or less efficacious in our process, weprefer to use silicates of the alkaline earthmetals, such as calcium silicateTTTT

8960 patent, col. 3, ll. 62–72.


by describing it in the specification.While the alleged infringer in passing sug-gested that a specification disclosurewould have been a dedication,3 this washardly the focus of its argument. Rather,the alleged infringer concluded that ‘‘[d]is-closure in [the][s]pecification of [m]anga-nese [i]s [i]mmaterial.’’ Pet’r Br. at 41.Moreover, argued the alleged infringer,the specification did not disclose manga-nese as an effective substitute,4 and, infact, the patentees ‘‘knowingly excluded’’the use of manganese silicate from theirpatent, in order to avoid a PTO finding ofanticipation by an earlier patent. Pet’rBr. at 25.

Ironically it was the respondent (thepatentee) that argued that the patent dis-closed the equivalent subject matter andthat the ‘‘substitution was expressly taughtby the patent as an equivalent composi-tion.’’ 5 See also Resp. Br. at 21 (‘‘[The]substitution [was one that] the patent itselfteaches.’’).6 The patentee explicitly urgedthat, because of the disclosure in the speci-

fication, ‘‘[t]he patentees expected, andthese infringers were on notice, that theclaims were intended to cover not only thecompositions literally within their scopebut their equivalents as well.’’ Resp. Br.at 73. The patentee went on to argue thatthe dedication argument had not beenproperly raised below.

Given this reversal of the expected posi-tions of the parties with respect to wheth-er the specification disclosed the effective-ness of manganese and the significance ofsuch a disclosure, it is hardly surprisingthat the Supreme Court majority neveraddressed the issue of dedication by disclo-sure in the specification. It is likely thatthe Supreme Court concluded that the is-sue of specification disclosure had not beensufficiently raised by the alleged infringeras a ground for rejecting the doctrine ofequivalents. (In that connection it is inter-esting that the Supreme Court found dis-closure of manganese in the ‘‘prior art’’and not in the 8960 patent specificationitself.) In short, in my view, the better

3. Petitioners’ Opening Brief Upon Rehearingat 41, n. 32, No. 2, 1949 Term, Graver Tank &Mfg. Co., Inc. v. Linde Air Prods. Co., 339 U.S.605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950).

4. Petitioner argued as follows. (The quota-tions are from the patent; the bracketed ma-terials within the quotes are petitioner’s com-ments):

Note that the specification does not say-as amatter of reading English-what the trialcourt thought it said. The specificationsays: ‘‘We have used calcium silicate andsilicates of sodium, barium, iron, manga-nese, cobalt, magnesium, nickel and alumi-num, both in binary and ternary combina-tions, in various proportions [that is, theysay they have used, not each of the ninesilicates, as the trial court supposed, butcalcium silicate combined with one or two ofthe other silicates mentioned, which, as hasbeen seen, their notes show is preciselywhat they did use]. * * * While a numberof these * * * are more or less efficacious[note that, contrary to the trial court’s read-ing of this language, the patentees do not

say all of the nine are more or less effica-cious, but only that ‘‘a number of’’ them(that is, some of them, but not all) are moreor less efficacious-meaning, plainly enough,that some are not efficacious at all, but thatof the ‘‘number of’’ them which are effica-cious, some are more efficacious than oth-ers-which, again, is precisely what the pat-entees’ notes show] * * * we prefer to use[which again is what their notes show] sili-cates of the alkaline earth metals, such ascalcium silicate.’’

Pet’r Br. at 20–21.

5. Respondent’s Brief on Rehearing at 11, No.2, 1949 Term, Graver Tank & Mfg. Co., Inc. v.Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct.854, 94 L.Ed. 1097 (1950).

6. So too respondent stated:

Far from having increased the store ofknowledge by independent research, peti-tioners were found guilty of appropriatingtheir flux directly from the text of the patent.

Resp. Br. at 32 (emphasis added).


reading of Graver Tank II is that the issueof dedication by specification disclosuresimply was not decided. There is thus noholding on this issue that binds this court.

LOURIE, Circuit Judge, concurring.

I fully concur in the result and the opin-ion of the court. I write separately tocomment on Judge Rader’s concurrence.First, I commend Judge Rader on hiscreative effort to advance the discussionconcerning the doctrine of equivalents.Certainly, he is correct that a patent appli-cant should include in his patent applica-tion whatever is within the scope of hisinventive concept and is foreseeable. Hav-ing myself been a patent lawyer who draft-ed many patent applications in my time,that is what I believe the overwhelmingmajority of patent practitioners do. How-ever, I am not convinced that introducingthe concept of foreseeability is the answerto the equivalence dilemma.

I do not agree that the concept of fore-seeability would simplify equivalence is-sues and make them more amenable tosummary judgment. In fact, it wouldraise new factual issues. Determiningwhat is foreseeable would often requireexpert testimony as to what one skilled inthe art would have foreseen. How would atrial judge know whether to grant sum-mary judgment other than to make factualfindings? What is foreseeable is quite dif-ferent from what is disclosed in the patent,as in our case here, which is readily deter-minable. Foreseeability is not solely aquestion of law.

Moreover, the concept of foreseeabilityseems akin to obviousness. Assuming thatthe concepts are similar, and that foresee-ability or obviousness precludes equiva-lence, would not a plaintiff assertingequivalence have to show that the accuseddevice would not have been obvious, orforeseeable, in order to avoid a finding of

nonequivalence? And would not a defen-dant have to assert that his device wasobvious and hence ineligible for equiva-lence protection in order to escape liabilityfor patent infringement? It seems coun-terintuitive for a patentee to have to as-sert that an accused device was nonobvi-ous or for the accused to have to assertthat it was obvious. A patentee seekingto establish equivalence wants to showthat the accused is merely making a minorvariation of his invention, an obvious one,not a nonobvious improvement. One ac-cused of infringement wants to show thathe has made an important advance, notthat he is a copier, and that his device wasobvious over the patented invention, orforeseeable.

What about the case of a separatelypatented accused device, which is thus pre-sumptively nonobvious? For such a deviceto be eligible for equivalence, the improve-ment therein would have to be found to benot foreseeable, which would seem to runcounter to the frequent rubric that equiva-lence requires substantially the same func-tion, way, and result, a test that is closerto obviousness, not nonobviousness.Should a manufacturer planning to marketa product that is close to the claims of anissued patent have to forego a patent inorder to be able to assert that its devicewould have been obvious, hence foresee-able, and thus not covered by equivalence?That is contrary to the patent policy thatencourages an innovator to file for a patentand disclose his invention. Thus, foresee-ability creates conflicts with conventionalpatent law ideas.

If the concepts of foreseeability and ob-viousness are different, however, we wouldbe inserting new complexity into what isalready an amorphous and vague area ofthe law. That would not be a step for-ward.


Accordingly, while the idea is an inter-esting one, I have serious doubts that fore-seeability is the answer.

PAULINE NEWMAN, Circuit Judge,dissenting.

Instead of deciding this appeal on thebasis on which it reaches us—that is,whether to sustain the jury verdict thatstainless steel and aluminum are equiva-lent substrates for copper foil laminates—my colleagues launch yet another assaulton the doctrine of equivalents. The courttoday holds that there is no access toequivalency for any subject matter that isdisclosed in a patent specification but notclaimed. Thus the court establishes a newabsolute bar to equivalency, a bar thatapplies when there is no prosecution histo-ry estoppel, no prior art, no disclaimer, noabandonment.

The court overrules not only its owndecisions but also those of the SupremeCourt, and reaches out to create a new,unnecessary and often unjust, per se rule.This decision jettisons even the possibilityof relief when relief is warranted, and fur-ther distorts the long-established balanceof policies that undergird patent-supportedindustrial innovation. It is self-evidentthat the placement of an increasing num-ber of pitfalls in the path of patenteesserves only as a deterrent to innovation.Before taking so deliberate a step, thecourt should at least consider the conse-quences. For example, the adverse effecton the disclosure of information in pat-ents—an immediate and foreseeable resultof this ruling—has not been recognized byany of my colleagues, despite the fervidwarnings of the bar.

Even were this court expert in its un-derstanding of technology policy and inno-vation economics, we have no authority tochange the precedent that binds us. Thisen banc court has placed itself in egregious

conflict with the Supreme Court’s deci-sions in Graver Tank & Mfg. Co. v. LindeAir Prods. Co., 339 U.S. 605, 70 S.Ct. 854,94 L.Ed. 1097, 85 USPQ 328 (1950) andWarner–Jenkinson Co. v. Hilton DavisChemical Co., 520 U.S. 17, 117 S.Ct. 1040,137 L.Ed.2d 146, 41 USPQ2d 1865 (1997).The Federal Circuit is no less subject tostare decisis than is any other court ofappeals. See Rodriguez de Quijas v.Shearson/American Express, Inc., 490U.S. 477, 484, 109 S.Ct. 1917, 104 L.Ed.2d526 (1989) (the courts of appeals should‘‘leav[e] to this Court the prerogative ofoverruling its own decisions’’). Shruggingoff this obligation, my intrepid colleaguesadopt the position of the dissenters inGraver Tank. I must, respectfully, dissent.

Stare Decisis and Supreme Court Prece-dent

In Graver Tank the Court consideredthe doctrine of equivalents and reiteratedits century-old holding that ‘‘the essence ofthe doctrine of equivalents is that one maynot practice a fraud on the patent.’’ 339U.S. at 608, 70 S.Ct. 854. The Courtreviewed the history of the doctrine start-ing with Winans v. Denmead, 56 U.S. (15How.) 330, 14 L.Ed. 717 (1853), as well asthe function-way-result criteria establishedin Union Paper–Bag Machine Co. v. Mur-phy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed.935 (1877) and reiterated in Sanitary Re-frigerator Co. v. Winters, 280 U.S. 30, 42,50 S.Ct. 9, 74 L.Ed. 147 (1929) (‘‘generallyspeaking, one device is an infringement ofanother ‘if it performs substantially thesame function in substantially the sameway to obtain the same result’ ’’). TheGraver Tank Court observed that the doc-trine of equivalents ‘‘has been consistentlyapplied by this Court and the lower federalcourts, and continues today ready andavailable for utilization when the propercircumstances for its application arise,’’ id.at 608, 70 S.Ct. 854, and expressed concern


lest ‘‘the protection of the patent grant [beconverted] into a hollow and uselessthing.’’ Id. at 607, 70 S.Ct. 854.

The Court held in Graver Tank thatequivalency was available as to the accusedmanganese silicate welding flux, which wasdisclosed in the specification but notclaimed, and had been found by the dis-trict court to be equivalent in fact. Thetwo dissenters took the position that be-cause the manganese silicate flux was dis-closed but not claimed it was dedicated tothe public and not reachable under thedoctrine of equivalents. Justice Black,joined by Justice Douglas, wrote in dissentthat ‘‘the function of claims under R.S.§ 4888, as we have frequently reiterated,is to exclude from the patent monopolyfield all that is not specifically claimed,whatever may appear in the specifications.See, e.g., Marconi Wireless Co. v. UnitedStates, 320 U.S. 1, 23, 63 S.Ct. 1393, 87L.Ed. 1731, and cases there cited. Todaythe Court tacitly rejects those cases.’’Graver Tank, 339 U.S. at 614, 70 S.Ct. 854(Black, J., dissenting). Justice Douglaswrote a separate dissent, stating that thedisclosed but unclaimed subject matterwas public property: ‘‘Manganese silicate,the flux which is held to infringe, is not analkaline earth metal silicate. It was dis-closed in the application and then excludedfrom the claims. It therefore became pub-lic property.’’ Id. at 618, 70 S.Ct. 854(Douglas, J., dissenting).

The Graver Tank Court, rejecting thedissenters’ position, held that the questionof equivalency is to be decided ‘‘against thecontext of the patent, the prior art, and theparticular circumstances of the case,’’ 339U.S. at 609, 70 S.Ct. 854, and stated thatequivalency ‘‘in the patent law, is not theprisoner of a formula.’’ Id. The Courtsustained the availability of equivalency ofthe manganese silicate flux, over the dis-senters’ protestations that it was disclosed

and not claimed and therefore public prop-erty.

The Court in Warner–Jenkinson reaf-firmed Graver Tank, summarizing that‘‘we considered the application of the doc-trine of equivalents to an accused chemicalcomposition for use in welding that dif-fered from the patented welding materialby the substitution of one chemical ele-ment.’’ 520 U.S. at 24, 117 S.Ct. 1040.The Warner–Jenkinson Court made clearthat the Graver Tank Court had declinedto adopt the arguments of the dissent. Id.at 26 and n. 3, 117 S.Ct. 1040. Perhapsrecognizing that Graver Tank is a power-ful obstacle to this court’s new per se rule,my colleagues propose various gambits todistinguish Graver Tank. The per curiamopinion proposes that the inclusion of man-ganese silicate in invalid claims was criticalto the decision in Graver Tank, althoughneither the majority nor the dissentingopinions mentioned it. My colleagues thustake the curious position that the inclusionof disclosed subject matter in invalidclaims renders that subject matter avail-able for equivalency, but that otherwisethe subject matter is barred from equiva-lency. That is not, of course, the holdingof Graver Tank.

This court’s new rule contravenes notonly Graver Tank but also Warner–Jen-kinson. The Court in Warner–Jenkinsonwas presented with the defendant’s argu-ment that access to the doctrine of equiva-lents should be limited to subject matterthat is actually disclosed in the patent.The Court held that ‘‘rejecting the [argu-ment that equivalency is limited to knownequivalents] necessarily rejects the moresevere proposition that equivalents mustnot only be known, but must also be actu-ally disclosed in the patent in order forsuch equivalents to infringe upon the pat-ent.’’ 520 U.S. at 37, 117 S.Ct. 1040.Thus the Court explicitly recognized that


equivalents that are actually disclosed inthe patent can infringe under the doctrineof equivalents. The obligation of the lowercourts is to adhere to the law as it isannounced by the Supreme Court, and inkeeping with the Court’s stated purposes.See, e.g., Williams v. United States, 240F.3d 1019, 1030 (Fed.Cir.2001) (holdingthat this court is ‘‘strictly bound’’ to ad-here to Supreme Court precedent); Paynev. Tennessee, 501 U.S. 808, 828, 111 S.Ct.2597, 115 L.Ed.2d 720 (1991) (‘‘Consider-ations in favor of stare decisis are at theiracme in cases involving property and con-tract rights, where reliance interests areinvolved.’’); Arizona v. Rumsey, 467 U.S.203, 212, 104 S.Ct. 2305, 81 L.Ed.2d 164(1984) (‘‘any departure from the doctrineof stare decisis demands special justifica-tion’’).

The facts of the Johnston patent here insuit do not differ from those of GraverTank in any discernible way. The natureof the disclosure of manganese silicate inthe patent in Graver Tank is not distin-guishable from the nature of the disclosureof stainless steel in the Johnston patent.In the patent in Graver Tank the manga-nese silicate was disclosed in the specifica-tion as follows:

We have used calcium silicate and sili-cates of sodium, barium, iron, manga-nese, cobalt, magnesium, nickel and alu-minum, both in binary and tertiarycombinations, in various proportions.We have also used calcium titanate andvarious titano-silicates, these being usedwhen it is desirable to introduce titani-um into the weld metal. While a num-ber of these conductive welding compo-sitions are more or less efficacious inour process, we prefer to use silicates ofthe alkaline earth metals, such as calci-um silicate, TTT

Linde Air Products Patent No. 2,043,960,col. 3, lines 62–73. The only claims before

the Court were for the silicates of thealkaline earth metals. There was no claimfor manganese silicate; manganese is notan alkaline earth metal. The Court heldthat infringement by manganese silicatecould be reached under the doctrine ofequivalents, subject to findings of the trierof fact as to equivalency.

In the Johnston patent the stainlesssteel substrate was disclosed in the specifi-cation as follows:

While aluminum is currently the pre-ferred material for the substrate, othermetals, such as stainless steel or nickelalloys may be used. In some instances,such as in laminating plastic creditcards, polypropylene can be used.

Johnston Patent No. 5,153,050, col. 5, lines5–9. The only claims before the courtwere for the aluminum metal substrate.There was no claim for the stainless steelsubstrate. The district court held thatinfringement by the stainless steel sub-strate could be reached under the doctrineof equivalents, subject to findings of thetrier of fact as to equivalency.

Graver Tank states that equivalency‘‘must be determined against the contextof the patent, the prior art, and the partic-ular circumstances of the case.’’ 339 U.S.at 609, 70 S.Ct. 854. Binding precedentthus excludes a per se bar to equivalencysimply because stainless steel was dis-closed in the specification. Our obligationis to apply the Court’s precedent, and todo so with fidelity to the Court’s meaning.Hutto v. Davis, 454 U.S. 370, 375, 102S.Ct. 703, 70 L.Ed.2d 556 (1982) (per cu-riam ) (‘‘But unless we wish anarchy toprevail within the federal judicial system, aprecedent of this Court must be followedby the lower federal courts no matter howmisguided the judges of those courts maythink it to be.’’). This court’s adoption ofthe position of the dissents in Graver Tankis, simply, improper.


The court states that ‘‘the patentee’ssubjective intent is irrelevant in determin-ing whether unclaimed subject matter hasbeen disclosed and therefore dedicated tothe public.’’ Per curiam op. n. 1. I agreethat subjective intent is not relevant towhat is actually disclosed. However, ob-jective evidence of intent to dedicate isrelevant to the question of dedication. Itis not disputed that Johnston filed twocontinuing applications with claims to thestainless steel substrate. Johnston’s U.S.Patent No. 5,725,937 claims the stainlesssteel explicitly; 1 for example:

1. A component for use in manufactur-ing articles such as printed circuitboards comprising:a laminate constructed of a sheet of

copper foil which, in a finished printedboard, constitutes a functional elementand a sheet of stainless steel whichconstitutes a discardable element; TTT

This alone defeats an absolute bar that isbased on a theory of dedication, for prece-dent holds that claiming of subject matterin a continuing application rebuts any in-ference that the disclosed but unclaimedsubject matter was abandoned. In reGibbs, 58 C.C.P.A. 901, 437 F.2d 486, 494,168 USPQ 578, 582 (CCPA 1971). Thisaspect of the court’s decision appears toraise a further conflict with precedent.

Federal Circuit Cases Contrary to To-day’s Decision

In addition to denying the precedent ofthe Supreme Court, this court en bancimpeaches several of its own prior deci-sions, for equivalency has routinely beendeemed applicable to disclosed but un-claimed subject matter. To reach this pol-icy-driven result the court juxtaposes twoextreme factual situations of disclosed but

unclaimed subject matter, exemplified byMaxwell v. J. Baker, Inc., 86 F.3d 1098, 39USPQ2d 1001 (Fed.Cir.1996) and YBMMagnex Inc. v. International Trade Com-mission, 145 F.3d 1317, 46 USPQ2d 1843(Fed.Cir.1998), and holds that the facts areirrelevant and equivalency is never avail-able. Thus the court holds that despitethe extreme diversity of factual situationsthat arise in technical disclosures and inclaiming practices, access to equivalencywill always be barred for disclosed subjectmatter. Such a heavy-handed approachremoves from the courts and parties theopportunity and right to review of themerits of individual cases in dispute.

Per se legal rules are appropriate onlywhen the policy is so clear and the out-come so inevitable that a blanket rule is areasonable shortcut. See Continental T.V.Inc. v. GTE Sylvania Inc., 433 U.S. 36, 50,97 S.Ct. 2549, 53 L.Ed.2d 568 (1977) (perse rules require ‘‘broad generalizations’’and reflect the judgment that while somesituations may fall outside the generaliza-tion they ‘‘are not sufficiently common orimportant to justify the time and expensenecessary to identify them’’). Today’s perse rule is not of that class. It simplyavoids the court’s obligation to reach con-sidered decisions on the merits, by holdingthat equivalency is unavailable whateverthe facts. See Albertson’s, Inc. v. Kirking-burg, 527 U.S. 555, 566, 119 S.Ct. 2162, 144L.Ed.2d 518 (1999) (stating that ‘‘[t]hesevariables are not the stuff of a per se rule’’in declining to classify disease as a per sedisability due to the potential for differingfact scenarios). Similarly, the diversity oftechnological situations in patents requiresa more sensitive legal framework than thebludgeon of a per se rule.

1. Johnston’s patents in which stainless steel isclaimed had not issued during the pendency

of most of this litigation.


Absent a per se rule, the facts of Max-well v. Baker and YBM Magnex couldindeed be resolved to reach divergent re-sults under the existing law. In Maxwellv. Baker the patentee had fully describedand enabled two distinct methods of at-taching a pair of shoes. Only one methodwas claimed; the accused infringer usedthe other. This court held that equivalen-cy was not available to reach the un-claimed method, reasoning that a patenteecan not choose to claim only one of twodistinct and fully disclosed inventions,thereby avoiding examination of the other,and then later grasp the unclaimed inven-tion as an equivalent of the first. Thecourt held that the patentee had dedicatedthe unclaimed method to the public, andcould not resort to the doctrine of equiva-lents. On the facts of that case, this was areasonable decision.

In contrast, in YBM Magnex the un-claimed magnet compositions differed fromthose that were claimed solely by theamount of one of the components of thecomposition. The specification describediron-neodymium-boron magnetic alloyscontaining oxygen, illustrated the effect ofoxygen on magnet stability, and claimedthe alloys with the optimum oxygen range.

The accused magnets were made of thesame alloys but the amount of oxygen wasbelow the optimum range. The amount ofoxygen was the only difference betweenthe claimed and the accused magnets.The court held that access to the doctrineof equivalents was not barred, distinguish-ing Maxwell v. Baker as directed to adifferent kind of factual situation, and ex-plaining that Supreme Court precedent‘‘does not permit the blanket rule thateverything disclosed but not claimed isbarred from access to the doctrine ofequivalents, whatever the facts, circum-stances, and evidence.’’ YBM Magnex,145 F.3d at 1320, 46 USPQ2d at 1846.The en banc court today replaces thisholding with a per se bar to equivalency,eliminating the opportunity for consider-ation of the facts, circumstances, and evi-dence.2

Application to the facts of YBM Magnexillustrates the court’s new rule. Theclaimed and unclaimed subject matter ap-pear in the following Figure from the pat-ent in suit. The Figure is a graph show-ing the effect of variation in the oxygencontent on the stability of the iron-neody-mium-boron magnets:

2. The court stresses that an advantage of itsnew rule is that the courts need not considerthe equivalency of ‘‘more than that properlyexamined by the PTO.’’ Per curiam op. at1055. The idea that the patentee can chooseto avoid examination by refraining fromclaiming disclosed equivalent subject matteris contrary to the rules of patent examination.MPEP § 904.01(b) states:

All subject matter that is the patentableequivalent of the subject matter as defined

in the claim even though specifically differ-ent from the definition in the claim, mustbe considered.

Disclosing without claiming simply enlargesthe field of the examiner’s search and citationof prior art, enlarging the prosecution history.It thus serves to generate estoppels, not toprovide an opportunity to avoid examination.


The patentee claimed the range of oxygencontent represented in the segment of thegraph designated ‘‘Excellent Resistance’’at the top of the curve; the claims are foran oxygen content of 0.6 to 3.5 weightpercent (claimed as 6,000 to 35,000 ppm).The accused iron-neodymium-boron mag-nets contained the claimed proportions ofthe same metallic elements, but they hadoxygen contents ranging from 0.545 to 0.6weight percent. The oxygen content ofthe accused magnets was within or veryclose to the ‘‘excellent resistance’’ part ofthe curve, although those below 0.6 weightpercent were outside of the literal scope ofthe claims. Today’s per se rule wouldpreclude the assertion of equivalencyagainst the magnets with an oxygen con-tent below 0.6 weight percent, solely be-cause such content was disclosed in thespecification. Issues of estoppel, prior art,dedication, or abandonment, have become

irrelevant; disclosure alone is an absolutebar to access to the doctrine of equiva-lents.

Patentees often must draw lines in orderto claim their invention with specificity.See 35 U.S.C. § 112 (the claims must ‘‘par-ticularly point[ ] out and distinctly claim[ ]the subject matter which the applicant re-gards as his invention.’’) The establish-ment of a per se rule so heavily weightedagainst disclosure is not only inappropri-ately simplistic, but is contrary to the poli-cy of the patent law. It may be that thedata for magnetic alloy oxygen contentsoutside of the optimum range is only ofscientific interest. I do not know its scien-tific value to students of magnetism, but Ican think of no value whatsoever of design-ing a patent law that fosters its withhold-ing.

There is extensive Federal Circuit pre-cedent where the accused infringing device


or composition was within the disclosure.See, e.g., Uniroyal, Inc. v. Rudkin–WileyCorp., 939 F.2d 1540, 1544, 19 USPQ2d1432, 1436 (Fed.Cir.1991) (‘‘the patentspecification teaches that a device other-wise satisfying the claim limitations worksin the same manner, but not as efficiently,if it is of a different height or positioneddifferently’’); Miles Labs., Inc. v. ShandonInc., 997 F.2d 870, 877, 27 USPQ2d 1123,1128 (Fed.Cir.1993) (use of a separate cab-inet was disclosed although the claimswere limited to a single cabinet; equiva-lency was available); Pall Corporation v.Micron Separations, Inc., 66 F.3d 1211,1220, 36 USPQ2d 1225, 1231 (Fed.Cir.1995) (the asserted equivalent polyamideresin was disclosed but not claimed); Mod-ine Mfg. Co. v. International Trade Com-mission, 75 F.3d 1545, 37 USPQ2d 1609,1615–16 (Fed.Cir.1996) (the assertedequivalent range was disclosed in the spec-ification but not literally included in theclaim). Heretofore, the breadth of thetechnical content in the specification didnot entail legal consequences that would beunknowable until after examination anddefinition of the claimed invention.

In ostensible support of its position theper curiam opinion offers several citationsto authority. However, most of the casescited do not concern the doctrine of equiv-alents, but simply state that the claimsestablish the scope of the patented inven-tion. That has always been the law, a lawthat has coexisted with the doctrine ofequivalents. E.g., McClain v. Ortmayer,141 U.S. 419, 12 S.Ct. 76, 35 L.Ed. 800(1891) (no issue of equivalency; at issuewere literal infringement and novelty);Milcor Steel Co. v. George A. Fuller Co.,316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332(1942) (no issue of equivalency; invaliditydue to improper addition of new claimelements); Aro Mfg. Co. v. ConvertibleTop Replacement Co., 365 U.S. 336, 81S.Ct. 599, 5 L.Ed.2d 592 (1961) (no issue of

equivalency; question of contributory in-fringement); Atlantic Thermoplastics Co.v. Faytex Corp., 974 F.2d 1299, 24USPQ2d 1138 (Fed.Cir.1992) (no issue ofequivalency).

Of the two cited cases that do relate tothe doctrine of equivalents, neither casesupports a disclosed-but-not-claimed theo-ry. In Continental Paper Bag Co. v. E.Paper Bag Co., 210 U.S. 405, 415, 28 S.Ct.748, 52 L.Ed. 1122 (1908) the Court af-firmed infringement under the doctrine ofequivalents, stating that ‘‘the range ofequivalents depends upon and varies withthe degree of invention.’’ In SRI Int’l v.Matsushita Elec. Corp., 775 F.2d 1107,1123, 227 USPQ 577, 587 (Fed.Cir.1985)this court stated that ‘‘the law acknowl-edges that one may appropriate another’spatented contribution not only with a prod-uct precisely described in a patent claim(literal infringement) but also with a prod-uct that is not quite so described TTT (doc-trine of equivalents).’’ These cases pro-vide no support for the per se rule nowadopted.

The per curiam opinion’s only citationsrelating to disclosed but unclaimed subjectmatter, Miller v. Bridgeport Brass Co.,104 U.S. 350, 26 L.Ed. 783 (1881) andMahn v. Harwood, 112 U.S. 354, 5 S.Ct.174, 28 L.Ed. 665 (1884), concern reissuepatent entitlement, not equivalency. Bothcases relate to the availability of a broad-ening reissue after a prolonged period,sixteen years in Miller, four years inMahn. In both cases the Court invokedlaches, not dedication, to invalidate thereissue. Rulings on reissue laches are notauthority for this court’s adoption of theGraver Tank dissent.

The new challenges and new burdens oftoday’s ruling are as unnecessary as theyare ill-conceived. I take note that a col-league writes separately to propose that


today’s en banc rule is no more than reso-lution of a perceived conflict between twoFederal Circuit opinions and the court’spreference for the earlier (Maxwell ) overthe later (YBM Magnex ). However, nopre-Maxwell case adopted a per se rulebarring equivalency for all unclaimed dis-closures, and Maxwell itself violated ourrule of precedence. However, my concernis not with whether this court has authori-ty to resolve perceived conflict among ourown cases, for of course we can do so. Myconcern is that if this case is indeed viewedby my colleagues as no more than a quib-ble between two recent holdings, it showsthe court’s lack of comprehension of thesignificance of its action.3

The public interest in fostering innova-tion and technological advance is notserved by a judicial decision that imposeslegal obstacles to the disclosure of scienti-fic and technologic information. Informa-tion dissemination is a critical purpose ofthe patent system. By penalizing the in-clusion of information in the specificationthe patent becomes less useful as a sourceof knowledge, and more a guarded legalcontract.

No patentee deliberately chooses thedoctrine of equivalents to protect commer-cial investment. Yet every patentee mustguard against infringement at the edges ofthe invention. After today, whenever apatentee draws a line in a disclosed contin-uum, the copier who simply crosses theline can avoid even the charge of equiva-

lency; a safe and cheap way to garner thesuccesses of another. Each new pitfall forinventors simply diminishes the value ofthe patent incentive, and ultimately inhi-bits technological innovation. Concern forthe effectiveness of the patent system hasalways been a factor in innovation activity.A study by Wesley M. Cohen et al., Pro-tecting Their Intellectual Assets: Appro-priability Conditions and Why U.S. Man-ufacturing Firms Patent (Or Not), Nat’lBureau of Econ. Research Working Paper7552, at 14 (2000), reported that in a 1994survey of R & D managers 65% of therespondents cited the ease of avoiding pat-ent claims as the main deterrent to patent-based investment in technology, and 47%also cited concern for disclosing technicalinformation without adequate protection.

Discovery of and commercialization ofnew things is notoriously risk-laden, yet itis the inventor and the innovator, thosewhose ingenuity and ambition create newthings while taking the risk of loss, whoprovide the basis of industrial advance andeconomic growth. See, e.g., Edwin Mans-field, Intellectual Property Protection,Foreign Direct Investment, and Technolo-gy Transfer, International Finance Corp.,Discussion Paper No. 19 (The World Bank,1997) at 1 (80% of industry members sur-veyed considered patent strength a majorconsideration in allocating global researchand development dollars); Office of Tech-nology Assessment, U.S. Congress, Inno-

3. The amicus curiae briefs filed on behalf ofthe American Intellectual Property Law Asso-ciation and American Bar Association state instrong terms their concern that inventors willrestrict the technical content of patent specifi-cations. Of course, avoiding the pitfalls oftoday’s per se rule will not be easy in view ofthe vicissitudes of patent examination—fur-ther illustrating the burden of this change inthe law.

By resolution of the House of Delegates, theAmerican Bar Association adopted the Sec-

tion’s position that ‘‘a per se rule in this situa-tion would be ill advised and would unneces-sarily eliminate a scope of protection to whichmany patentees should be entitled. The pre-clusion of the doctrine of equivalents shouldbe limited to those situations in which thepatentee’s failure to claim disclosed subjectmatter would indicate to the public that suchsubject matter was disclaimed or dedicated tothe public.’’


vation and Commercialization of Emerg-ing Technology, 20–96 (1995) (discussingcosts borne by the innovator).

The role of patent systems in the alloca-tion of commercial resources is of ever-increasing economic importance, as tech-nology dominates the economy. See, e.g.,Kenneth W. Dam, The Economic Under-pinnings of Patent Law, 23 J. Legal Stud-ies 247 (1994) (analyzing how creation ofproperty rights in technology encouragesinvestment in innovation); Symposium onPatents and Technology Licensing, 21Rand J. Econ. 103 (1990) (investigatinglink between patent law, innovation, andeconomic development); see generally F.Scott Kieff, Property Rights and PropertyRules for Commercializing Inventions, 85Minn. L.Rev. 697, 699 (2001) (discussingrelationships between patent systems andeconomic growth; collecting authorities).

A judicial change in the balance betweeninnovator and imitator should not be madein disregard of the consequences. Theneatness of a per se rule is not necessarilysound legal or economic policy. Nor is itsound judicial policy, for in addition toissues of commerce and technology-basedindustry, this case raises questions of fun-damental fairness as to disputes that will

now be excluded from judicial review.Fairness is the foundation of due process;it is superior to, not subordinate to, per serules.

Decision of this Case

This appeal can be decided on the pres-ent law. It is unnecessary to create a new,absolute, and unchallengeable dedication ofeverything in the specification that is notincluded in the claims.

The Johnston specification states thatthe substrate serves as a disposable carri-er for the copper foil, that aluminum ispreferred, and that steel can be used. Thespecification also states that the nature ofthe substrate is not material to the inven-tion. The factual question of equivalencywas tried to a jury. On appellate reviewin accordance with the rules for review ofjury verdicts, there was substantial evi-dence in support of the jury verdict. Thatis all that was appropriate to decision ofthis appeal.

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