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In another blow to patent holders, the U.S. Court of Appeals for the Federal Circuit has further restricted their ability to file infringement suits. In a 12-1 decision, the court ruled on March 28 that if an inventor mentions something in his patent but fails to specifically claim it, he can’t then say it is equivalent to an element in the patent. In Johnson & Johnston Associates Inc. v. R.E. Service Co. Inc., 99-1076, the plaintiff claimed that RES infringed its patent covering the use of aluminum as a substrate sheet for copper foils in printed circuit boards. RES uses a stainless steel substrate, which Johnson & Johnston said is equivalent to aluminum. RES argued, however, that since Johnson & Johnston mentioned steel in its patent but failed to claim it, use of the steel substrate was “dedicated to the public.” The Federal Circuit agreed with RES, overturning an opinion of the U.S. District Court for the Northern District of California. “When a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public,” the court ruled. “Moreover, a patentee cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalents to establish infringement because the specification discloses equivalents.” The doctrine of equivalents holds that if a product or process is not substantially different from the elements of a patented invention, it is considered to be infringing. RES attorney Archie Robinson, of San Jose, Calif.’s Robinson & Wood, heralded the decision as curtailing a practice that “arguably gives more power to patentees than is justified.” He said the ruling would force patentees to more clearly articulate their claims. But many attorneys in the patent bar say the decision illustrates that the appeals court has become less favorable to patent holders. “The protection for patentees seems to be shrinking and shrinking,” said Janice Mueller, a visiting professor at Santa Clara University School of Law. Mueller was of counsel on the American Intellectual Property Law Association’s amicus curiae brief supporting Johnson & Johnston. The American Bar Association also submitted an amicus brief in support of the plaintiff. Mueller said patent applicants would be compelled to disclose less background information in their applications. While the ruling won’t have as harsh an impact as the Federal Circuit’s Festo opinion, she said “you can view this as one more nail in the coffin of the doctrine of equivalents.” In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 00-1543, the Federal Circuit ruled that when a patent holder amends a patent application to narrow a claim, the holder is prohibited from applying the doctrine of equivalents in an infringement suit. The U.S. Supreme Court agreed to review the decision and heard oral arguments in January. The fact that the American Bar Association and the American Intellectual Property Law Association both submitted briefs in the case is significant, said Edward Reines, a partner at Weil, Gotshal & Manges’ Redwood Shores, Calif., office. “They think the court wants to write the doctrine of equivalents out of the law.” The fact the Federal Circuit considered the case en banc, which Reines said is rarely done, further illustrates the importance of the case. Justices also submitted four separate concurring opinions to outline their rationale. In a strongly worded dissent, Judge Pauline Newman said her colleagues had established a “new absolute bar to equivalency” and ignored its own previous rulings and those of the Supreme Court. “It is self-evident that the placement of an increasing number of pitfalls in the path of patentees serves only as a deterrent to innovation,” Newman wrote. “After today, whenever a patentee draws a line in a disclosed continuum, the copier who simply crosses the line can avoid even the charge of equivalency; a safe and cheap way to garner the successes of another.”

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