Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc.
Court of Appeals for the Federal Circuit
285 F.3d 1046 (2002)
Johnson & Johnston (J&J) (plaintiff) sued R.E. Service (RES) (defendant) for infringing its patent covering a method of manufacturing printed circuit boards by binding thin copper foil to a thicker piece of aluminum for safe handling, while RES's competing process bound copper foil to steel instead of aluminum. After a finding of no literal infringement, J&J pursued infringement under the doctrine of equivalents, but RES argued that because J&J's patent specification disclosed the copper-steel alternative without claiming it, that embodiment was dedicated to the public and outside the permissible scope of equivalents; the district court sided with J&J, and a jury found infringement, prompting RES's appeal.
Whether a patent holder who discloses two alternate embodiments of an element of the invention in the specification, but claims only one, dedicates the other to the public.