|Fed Circuit Issues Opinion
on Doctrine of Equivalents
|3/28. The U.S.
Court of Appeals (FedCir) issued its opinion in Johnson
& Johnston Associates v. R.E. Service, a
per curiam decision regarding the doctrine of equivalents in a
patent infringement case involving printed circuit boards. The
Appeals Court held that the doctrine of equivalents cannot be
asserted to cover disclosed but unclaimed subject matter.
Judge Newman wrote a stirring dissent.
Doctrine of Equivalents. Justice Thomas wrote in Warner
Jenkinson v. Hilton Davis Chemical, 520 U.S. 17 (1997),
that this doctrine provides that "a product or process
that does not literally infringe upon the express terms of a
patent claim may nonetheless be found to infringe if there is
``equivalence´´ between the elements of the accused product
or process and the claimed elements of the patented
invention." See also, Graver
Tank v. Linde Air Products, 339 U.S. 605 (1950).
050 Patent. Johnson & Johnston Associates (JJA) is
the holder of U.S.
Patent No. 5,153,050, which relates to the manufacture of
printed circuit boards. The Court of Appeals wrote the
following explanation: "Printed circuit boards are
composed of extremely thin sheets of conductive copper foil
joined to sheets of a dielectric (nonconductive)
resin-impregnated material called ``prepreg.´´ The process
for making multi layered printed circuit boards stacks sheets
of copper foil and prepreg in a press, heats them to melt the
resin in the prepreg, and thereby bonds the layers. In
creating these circuit boards, workers manually handle the
thin sheets of copper foil during the layering process.
Without the invention claimed in the '050 patent, stacking by
hand can damage or contaminate the fragile foil, causing
discontinuities in the etched copper circuits. The '050 patent
claims an assembly that prevents most damage during manual
handling. The invention adheres the fragile copper foil to a
stiffer substrate sheet of aluminum. With the aluminum
substrate for protection, workers can handle the assembly
without damaging the fragile copper foil."
Defendants' Products. The defendants are R.E. Service
Company, Inc. and Mark Frater (RES). In 1997 RES began making
laminates for manufacture of printed circuit boards which
joined copper foil to a sheet of steel as the substrate
instead of a sheet of aluminum.
District Court. JJA filed a complaint in U.S.
District Court (NDCal) against RES, alleging infringement
of the 050 patent. The District Court granted RES summary
judgment of no literal infringement. As for the doctrine of
equivalents, RES argued that the 050 specification, which
disclosed a steel substrate but did not claim it, constituted
a dedication of the steel substrate to the public. JJA argued
that the steel substrate was not dedicated to the public. The
District Court denied RES's motion for summary judgment on
this issue. The jury then found RES liable for willful
infringement under the doctrine of equivalents and awarded JJA
$1,138,764 in damages. The District Court doubled JJA's
damages, pursuant to 35 U.S.C.
§ 284, and awarded attorney fees and expenses under 35 U.S.C.
§ 285. RES appealed.
Court of Appeals. A three judge panel of the Appeals
Court heard oral argument on December 7, 1999. The Appeals
Court then set the matter for rehearing en banc. This oral
argument took place on October 3, 2001. The Appeals Court
issued its collection of opinions on March 28, 2002. The Court
issued a per curiam opinion, in which Mayer, Archer, Michel,
Lourie, Clevenger, Rader, Schall, Bryson, Gajarsa, Linn, Dyk,
and Prost joined, reversing the District Court. Newman wrote a
solo dissent, in which she argued that the majority wrote new
law, and overruled the Supreme Court opinion in Graver.
Rader wrote a separate opinion, in which Mayer joined, which
concurred as to the result, but offered an alternative
reasoning, involving foreseeabilty. Lourie wrote a separate
opinion on Rader's opinion. Clevenger wrote an opinion, in
which Lourie, Schall, Gajarsa and Dyk joined, which rebutted
Newman's dissent, and argued that the majority opinion is not
new law. Dyk wrote an opinion, in which Linn joined, which
argued that the majority opinion is consistent with Graver.
The Appeals Court heard the case en banc because of a conflict
between two of its opinions: Maxwell
v. J. Baker, 86 F.3d 1098 (1996), and YBM
Magnex v. Int'l Trade Comm'n, 145 F.3d 1317 (1998). It
held that "To the extent that YMB Magnex conflicts
with this holding, this en banc court now overrules that
The majority concluded that RES, as a matter of law, could not
have infringed the '050 patent under the doctrine of
equivalents. It wrote that, "Having disclosed without
claiming the steel substrates, Johnston cannot now invoke the
doctrine of equivalents to extend its aluminum limitation to
encompass steel. Thus, Johnston cannot assert the doctrine of
equivalents to cover the disclosed but unclaimed steel
Newman Dissent. Judge
Pauline Newman wrote the Court's opinion in YBM Magnex,
and dissented vigorously from its being overturned. She wrote
that "Instead of deciding this appeal on the basis on
which it reaches us -- that is, whether to sustain the jury
verdict that stainless steel and aluminum are equivalent
substrates for copper foil laminates -- my colleagues launch
yet another assault on the doctrine of equivalents. The court
today holds that there is no access to equivalency for any
subject matter that is disclosed in a patent specification but
not claimed. Thus the court establishes a new absolute bar to
equivalency, a bar that applies when there is no prosecution
history estoppel, no prior art, no disclaimer, no
She continued that "The court overrules not only its own
decisions but also those of the Supreme Court, and reaches out
to create a new, unnecessary and often unjust, per se rule.
This decision jettisons even the possibility of relief when
relief is warranted, and further distorts the long established
balance of policies that undergird patent supported industrial
innovation. 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."
She added that "Even were this court expert in its
understanding of technology policy and innovation economics,
we have no authority to change the precedent that binds us.
This en banc court has placed itself in egregious conflict
with the Supreme Court's decisions in" Graver Tank
and Warner Jenkinson.
See also, amicus
curiae brief [PDF] of the American
Intellectual Property Law Association (AIPLA).
|FCC Creates Advisory
|3/28. The Federal
Communications Commission (FCC) announced the creation of
a federal advisory committee named the Media Security and
Reliability Council (MSRC). The FCC stated in a release
that the MSRC "will study, develop and report on best
practices designed to assure the optimal reliability,
robustness and security of the broadcast and multichannel
video programming distribution industries."
Dennis FitzSimons, P/COO of Tribune
Company, will be its first chairman. The Designated
Federal Official (DFO) of the MSRC will be Barbara Kreisman.
She is the Chief of the Video Division of the FCC's Media
Bureau. Susan Mort, an Attorney Advisor in the Policy Division
of the Media Bureau, will be the Deputy DFO.
|People and Appointments
|3/28. Peter Bonfield, Lena Torell and Michael
Treschow were elected as new Directors of the Board of Ericsson. The new Board of
Directors elected Treschow as Chairman. Tom Hedelius
and Marcus Wallenberg were re-elected Vice Chairmen.
|FTC Backs Internet Sales of
|3/27. The Federal Trade
Commission (FTC) filed a comment with the
State of Connecticut regarding the sale of disposable
replacement contact lenses over the Internet. The FTC wrote
that "requiring stand alone sellers of replacement
contact lenses to obtain Connecticut optician and optical
establishment licenses would likely increase consumer costs
while producing no offsetting health benefits" and
"serve as a barrier to the expansion of Internet
The FTC noted that "competition has increased
dramatically in the eye care marketplace since the
1970s", since the Supreme Court's decision in Virginia
State Board of Pharmacy v. Virginia Citizens Consumer Council,
425 U.S. 78 (1976). The FTC continued that "The most
recent step in the evolution of this market, and the one that
brings us to the current controversy, is the development of
stand alone sellers of replacement contact lenses. Such firms
tend to focus on the sale of replacement lenses. They do not
sell eyeglasses. They do not fabricate lenses or fit them to
the eye ... Many of these businesses are located in a single
state but ship orders to customers nationwide."
The FTC first noted that "In contrast to prescription
drugs, virtually no consumer is likely to try to ``self
prescribe´´ vision correcting contact lenses." Rather,
wrote the FTC, "the medical purpose of the prescription
requirement (aside from describing the proper lenses) is to
induce the customer to have regular eye exams -- not to
control where the customer may purchase replacement lenses
with a valid prescription." (Parentheses in original.)
The FTC concluded that there is "no systematic evidence
that sales through alternative channels, such as Internet or
mail order, pose any additional health risk as long as the
retailer sells in accordance with a valid prescription."
The FTC wrote that "A variety of other laws and
regulations help protect contact lens consumers and ensure
that customers purchasing contact lenses from sources other
than doctors receive the lenses that are specified in the
prescription." It also stated that "Consumers have
relatively easy recourse if an Internet or mail order firm
fails to deliver the proper lenses. Unlike the situation with
prescription drugs, consumers can easily determine if they
have received the correct product by checking the box to
ensure that it matches the prescription. In some instances,
even if the consumer does not notice that he or she received
the incorrect product, the customer may well discover the
error when trying to wear the lenses. The customer can then
simply remove the incorrect lens. Obviously, this does not
rise to the kind of serious risk of harm as would occur if a
consumer took the wrong prescription drug."
The FTC's comment concludes that "we believe that
requiring stand alone sellers of replacement contact lenses to
obtain Connecticut optician and optical establishment licenses
would likely increase consumer costs while producing no
offsetting health benefits. Indeed, such licensing could harm
public health by raising the cost of replacement contact
lenses, inducing consumers to replace the lenses less
frequently than doctors recommend or to substitute other forms
of contact lenses that pose greater health risks. An overly
narrow interpretation of Connecticut law on these issues will
likely have two significant detrimental effects: (1) it will
restrict the choices available to Connecticut consumers, raise
their costs, and reduce their convenience unnecessarily, and
(2) it will serve as a barrier to the expansion of Internet
commerce in the State of Connecticut. Current federal and
state prescription requirements and consumer protection laws
are sufficient to address the health problems associated with
contact lens use. Such requirements can be implemented in ways
that are either procompetitive or anticompetitive, and the FTC
staff urge the Board to implement the prescription requirement
in a way that protects consumers health, promotes competition,
and maximizes consumer choice."
On March 13, 2002, the Progressive
Policy Institute (PPI) released a related report
[PDF] that addressed state regulation of e-commerce. It
included a section on sale of contact lenses. This report
concluded that "Buying contact lenses online can provide
consumers with substantial savings. In addition, purchasing
lenses online appears to pose no health risks, and in fact in
some cases, may improve health since patients may replace
older lenses more often. However, depending on the state in
which they live, consumers may find it very easy or virtually
impossible to buy contact lenses online."
However, this PPI report also found that "Under the guise
of patient protection, optometrists and other contact lens
providers have successfully lobbied in many states for laws
that limit online competition. Fifteen states effectively
prohibit competition from online lens providers. For example,
Georgia requires contact lenses to be dispensed through a face
to face transaction. Texas' law essentially prohibits
purchasing contact lenses over the phone or through the
Internet. Similarly, New Mexico requires that only a New
Mexico licensed physician or optometrist can sell and dispense
The staff of the FTC's Office of Policy Planning and the
Bureau of Consumer Protection submitted the comment as an
intervenor. Connecticut's Department of Public Health, and its
Board of Examiners for Opticians, are conducting a proceeding
titled "In Re: Declaratory Ruling Proceeding on the
Interpretation and Applicability of Various Statutes and
Regulations Concerning the Sale of Contact Lenses". The
FTC approved the filing of these comments by a vote of 4-0.
|Walter Hewlett Sues Hewlett
Packard Over Merger Vote
|3/28. Walter Hewlett filed a complaint in Delaware Chancery
Court against Hewlett Packard
(HP) regarding its solicitation of votes for approval of the
merger of HP and Compaq.
HP issued a release
in which it stated that "We believe this suit is
completely without merit and intend to vigorously defend it.
We find it regrettable that Mr. Hewlett has chosen to resort
to baseless claims without regard to the impact of his false
accusations on HP's business reputation and employees. We
continue our progress in planning for a successful integration
of our merger with Compaq. We look forward to the receipt of
the certified vote result from the HP shareowner meeting,
which we expect within a few weeks."
See also, release
[PDF] issued by group titled "Vote No on HP Compaq",
which states that "Walter B. Hewlett, individually and as
Trustee of the William R. Hewlett Revocable Trust, and Edwin
E. van Bronkhorst as co-trustee of the William R. Hewlett
Revocable Trust, today filed a complaint in the Delaware
Chancery Court against Hewlett Packard Company (NYSE: HWP).
The complaint raises issues about the process by which Hewlett
Packard solicited votes for the approval of the proposed
merger with Compaq Computer Corporation (NYSE: CPQ) --
particularly from large institutional stockholders including
|Friday, March 29
The House and Senate are both in recess for the Spring
District Work Period. Both bodies will return on Monday, April
The Library of Congress's THOMAS
web site will be unavailable from 6:00 AM to 1:00 PM due
to system testing.
Extended deadline to submit public comments to the FTC
regarding the use of disgorgement as a remedy for competition
violations, including those involving the Hart Scott Rodino
Premerger Notification Act, FTC Act, and Clayton Act. See,
original FTC release
and Federal Register notice,
and FTC release
and Federal Register notice
extending deadline from March 1 to March 29.
Deadline to submit comments to the Federal Trade Commission (FTC)
regarding proposed new Privacy Act system of records. This
system, if adopted, would include telephone numbers and other
information pertaining to individuals who have informed the
Commission that they do not wish to receive telemarketing
calls. See, notice
to be published in the Federal Register.
|Monday, April 1
|The Supreme Court of the U.S. will go on recess until
Monday, April 15.
The USTR will
hold a hearing regarding negotiation of a U.S. Singapore
Free Trade Agreement. The USTR stated in its notice
in the Federal Register that the agreement is "expected
to include provisions on trade in services, investment, trade
related aspects of intellectual property rights, competition,
government procurement, electronic commerce, trade related
environmental and labor matters, and other issues."
10:00 AM. The U.S.
Court of Appeals (FedCir) will hear oral argument in Philip
Jackson v. Casio PhoneMate, No. 01-1456, a patent
infringement case involving telephone answering machines. The
U.S. District Court (NDIll) granted summary judgment to Casio.
Location: Courtroom 201, LaFayette Square, 717 Madison Place,
EXTENDED TO APRIL 22.
to file reply comments with the FCC in response
to its notice of proposed rulemaking (NPRM) regarding the
appropriate regulatory requirements for incumbent local
exchange carriers' provision of broadband telecommunications
services. The FCC adopted this NPRM at its December 12
meeting. This is CC Docket No. 01-337. See, notice
in the Federal Register See, Order
[PDF] extending deadline to April 22.
Deadline to submit written requests to participate as a
panelist in the workshop to be hosted by the FTC
on May 16 and 17 to explore issues relating to the security of
consumers' computers and the personal information stored in
them or in company databases. See, notice
in Federal Register.
|Tuesday, April 2
|10:00 AM. The U.S.
Court of Appeals (FedCir) will hear oral argument in Netscape
Communications v. Allen Konrad, No. 01-1455. Location:
Courtroom 201, LaFayette Square, 717 Madison Place, NW.
1:00 PM ET. The FTC will hold a press
conference to announce an international law enforcement
initiative targeting deceptive spam and Internet fraud. See, FTC
release. Location: the press conference will be held at
the FTC office at 915 Second Ave., Suite 2896, Seattle,
Washington. There will be a video link at the FTC
headquarters, 600 Pennsylvania Ave., NW, Room 481.
2:00 PM. The Institute
for Health Freedom will hold a press conference regarding medical
privacy. For more information, contact Sue Blevins at 202
429-6610. Location: Lisagor Room, National Press Club, 529 14th
St. NW, 13th Floor.
|Wednesday, April 3
|10:00 AM. Texas Instruments will sponsor an event titled High
Tech Broadband Coalition Conference. For more information,
contact Dan Larson at 202 628-3133. Location: Lisagor Room, National Press Club, 529 14th
St. NW, 13th Floor.
12:15 PM. The FCBA's
International Practice Committee will host a brown bag lunch.
The speakers will be Tom Tycz (Chief of the FCC's
International Bureau's Satellite Division), James Ball
(Chief of the FCC's International Bureau's Policy Division),
and Kathryn O'Brien (Chief of the FCC's International
Bureau's Strategic Analysis and Negotiations Division). RSVP
to Laurie Sherman at 202 223-7365 or Patricia Paoletta at 202
719-7532. Location: FCC, 445 12th Street, SW, Conference Room
|Thursday, April 4
|8:30 AM - 5:30 PM. Day one of a two day event hosted by the
Department of Commerce's (DOC's) National Telecommunications
and Information Administration (NTIA) titled
"Spectrum Summit". The summit will address spectrum
allocation and efficiency, the spectrum requirements of new
technologies, and regulatory processes. See, NTIA
notice and notice
in Federal Register. Location: auditorium, Department of
Commerce, 1401 Constitution Ave., NW.
2:00 - 4:00 PM. There will be a meeting of the FCC's Advisory
Committee for the 2003 World Radiocommunication Conference.
notice [PDF], and notice
in Federal Register. Location: FCC, Commission Meeting Room,
Room TW-C305, 445 12th Street, SW.
4:00 PM. Dan
Burk (Professor, University of Minnesota Law School) will
give a lecture titled "Anti Circumvention Misuse".
He will review the history of the equitable misuse doctrine in
the context of patents and copyrights, and argue that the DMCA
anti circumvention right is a new form of intellectual
property that should be subject to the equitable misuse
doctrine. For more information, contact Prof. Robert Brauneis
@main.nlc.gwu.edu or (202) 994-6138. Location: The George
Washington University Law School 720 20th Street, NW.
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