## Facts

- Johnson & Johnston owned U.S. Patent No. 5,153,050 covering methods and materials for manufacturing printed circuit boards using thin copper foil bonded with resin.
- The invention addressed handling damage by attaching the thin copper foil to a substrate that workers could safely manipulate during assembly.
- The asserted claims expressly required an “aluminum” substrate.
- The specification disclosed that other metals, including stainless steel or nickel alloys, could be used as substrates.
- R.E. Service Co. and Mark Frater used a steel substrate in a similar process.
- Johnson & Johnston sued for infringement under the doctrine of equivalents, asserting steel was equivalent to the claimed aluminum substrate.
- A jury found willful infringement and awarded damages; the district court enhanced damages and awarded attorney’s fees and expenses.

## Issues

1. Whether the doctrine of equivalents can extend a claim to cover subject matter disclosed in the specification but not claimed, where the claims are limited to an aluminum substrate and the accused product uses steel.

## Decision

- The Federal Circuit, sitting en banc, reversed the judgment of infringement.
- The court held that subject matter disclosed in the specification but not claimed is dedicated to the public and cannot be recaptured through the doctrine of equivalents.
- Because the patent claimed only aluminum substrates, products using steel substrates did not infringe under the doctrine of equivalents.
- The court set aside the associated damages, enhanced damages, and fee awards.
- The court overruled conflicting Federal Circuit precedent to the extent it permitted equivalents coverage of disclosed-but-unclaimed subject matter.

## Legal Principles

- Patent claims, not the specification, define the scope of the patentee’s right to exclude and provide notice to the public and competitors.
- Infringement analysis—literal or under the doctrine of equivalents—compares the accused product to the properly construed claims, not to disclosed embodiments.
- When a patent discloses alternative subject matter but declines to claim it, the unclaimed subject matter is dedicated to the public.
- The patentee’s subjective intent does not control dedication; the objective disclosure and claim scope govern.
- If a patentee failed to claim disclosed subject matter, the proper remedies are within patent-office procedures (e.g., reissue or continuation), not expansion through the doctrine of equivalents.

## Conclusion

The Federal Circuit held that a patentee cannot use the doctrine of equivalents to cover disclosed but unclaimed subject matter; by claiming an aluminum substrate while disclosing steel and other metals in the specification, the patentee dedicated those unclaimed alternatives to the public, defeating an equivalents-based infringement theory.


Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc)