Johnson & Johnston Associates v. R.E. Service

• Citation: 285 F.3d 1046
• Decision Date: 28 March 2002
• Docket Number: No. 99-1180.,No. 99-1179.,No. 99-1076.,99-1076.,99-1179.,99-1180.
• Parties: JOHNSON & JOHNSTON ASSOCIATES INC., Plaintiff-Appellee, v. R.E. SERVICE CO., INC. and Mark Frater, Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

285 F.3d 1046

JOHNSON & JOHNSTON ASSOCIATES INC., Plaintiff-Appellee, v. R.E. SERVICE CO., INC. and Mark Frater, Defendants-Appellants.

No. 99-1076.

No. 99-1179.

No. 99-1180.

United States Court of Appeals, Federal Circuit.

DECIDED: March 28, 2002.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff-appellee. With him on the brief were Thomas H. Jenkins, and Virginia L. Carron. Of counsel on the brief were Fay E. Morisseau, and Michael R. O'Neill, McDermott, Will & Emery, of Irvine, California. Also of counsel on the brief were and John L. DuPre', Richard A. Wise, and Deirdre E. Sanders, Hamilton, Brook, Smith & Reynolds, P.C., of Lexington, MA.

Frank P. Porcelli, Fish & Richardson P.C., of Boston, MA, argued for defendants-appellants. With him on the brief was Robert E. Hillman. Of counsel was Charles H. Sanders. Of counsel on the brief were Archie S. Robinson, Thomas R. Fellows, and Rebecca L. Moon, Robinson & Wood, Inc., of San Jose, CA. Of counsel was Jack M. Wiseman. Also of counsel on the 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., of Arlington, VA, for amicus curiae The Standard Register Company. With him on the brief 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 Intellectual Property Law Association. Of counsel on the brief were Janice M. Mueller, Associate Professor, The John Marshall Law School, of Chicago, IL; and Liza K. Toth, General IP Counsel, Matrix Semiconductor, Inc., of Santa Clara, CA.

Martha W. Barnett, former President, American Bar Association, of Chicago, IL, for amicus curiae American Bar Association. With her on the brief were E. Anthony 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 PER CURIAM, in which Chief Judge MAYER, Senior Circuit Judge ARCHER, and Circuit Judges MICHEL, LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST join. Concurring opinion filed by Circuit Judge CLEVENGER, in which Circuit Judges LOURIE, SCHALL, GAJARSA, and DYK join. Concurring opinion filed by Circuit Judge RADER, in which Chief Judge, MAYER joins. Concurring opinion filed by Circuit Judge DYK, in which Circuit Judge LINN joins. Concurring opinion filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge PAULINE NEWMAN.

PER CURIAM.

Johnson and Johnston Associates (Johnston) asserted United States Patent No. 5,153,050 (the '050 patent) against R.E. Service Co. and Mark Frater (collectively RES). A jury found that RES willfully infringed claims 1 and 2 of the patent under the doctrine of equivalents and awarded Johnston $1,138,764 in damages. Upon entry of judgment, the United States District Court for the Northern District of California further granted Johnston enhanced damages, attorney fees, and expenses. Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C97-04382 CRB, 1998 WL 908925 (N.D.Cal.1998). After a hearing before a three-judge panel on December 7, 1999, this court ordered en banc rehearing of the doctrine of equivalents issue, Johnson & Johnston Assocs. v. R.E. Serv. Co., 238 F.3d 1347 (Fed.Cir.2001), which occurred on October 3, 2001. Because this court concludes that RES, as a matter of law, could not have infringed the '050 patent under the doctrine of equivalents, this court reverses the district court's judgment of infringement under the doctrine of equivalents, willfulness, damages, attorneys fees, and expenses.

I.

The '050 patent, which issued October 6, 1992, relates to the manufacture of printed circuit boards. 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. After the pressing and heating steps, workers can remove and even recycle the aluminum substrate. Figure 5 of the '050 patent shows the foil-substrate combination, with the foil layer peeled back at one corner for illustration:

Surface C_i is the protected inner surface of the copper foil; A_i is the inner surface of the aluminum substrate. A band of flexible adhesive 40 joins the substrate and the foil at the edges, creating a protected central zone CZ. The specification explains:

Because the frail, thin copper foil C was adhesively secured to its aluminum substrate A, the [laminate] is stiffer and more readily handled resulting in far fewer spoils due to damaged copper foil.

The use of the adhered substrate A, regardless of what material it is made of, makes the consumer's (manufacturer's) objective of using thinner and thinner foils and ultimately automating the procedure more realistic since the foil, by use of the invention, is no longer without the much needed physical support.

'050 patent, col. 8, ll. 21-30. The specification further describes the composition of the substrate sheet:

While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used. In some instances... polypropelene [sic] can be used.

'050 patent, col. 5, ll. 5-8.

As noted, the jury found infringement of claims 1 and 2:

Claim 1. A component for use in manufacturing articles such as printed circuit boards comprising:

a laminate constructed of a sheet of copper foil which, in a finished printed circuit board, constitutes a functional element and a sheet of aluminum which constitutes a discardable element;

one surface of each of the copper sheet and the aluminum sheet being essentially uncontaminated and engageable with each other at an interface,

a band of flexible adhesive joining the uncontaminated surfaces of the sheets together at their borders and defining a substantially uncontaminated central zone inwardly of the edges of the sheets and unjoined at the interface.

'050 patent, Claim 1, col. 8, ll. 47-60 (emphasis supplied). Claim 2 defines a similar laminate having sheets of copper foil adhered to both sides of the aluminum sheet.

The Northern District of California has patiently handled litigation between these parties over the '050 patent for many years. In prior litigation, a jury found that RES had willfully infringed the '050 patent. The district court entered the judgment 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 in contempt 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: Second Contempt). Ultimately the parties settled 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 Further Manufacture, Use or Sale and Final Judgment).

In 1997, RES began making new laminates for manufacture of printed circuit boards. The RES products, designated "SC2" and "SC3," joined copper foil to a sheet of steel as the substrate instead of a sheet of aluminum. Johnston filed a suit for infringement. See Johnson & Johnston Assocs. v. R.E. Serv. Co. v., No. C-97-04382 CRB, slip op. at 2, 1998 WL 908925 (N.D.Cal. Dec.23, 1998). In this case, the district court granted RES's motion for summary judgment of no literal infringement. Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C-97-04382 CRB, slip op., 1998 WL 545010 (N.D.Cal. Aug.24, 1998). With respect to the doctrine of equivalents, RES argued, citing Maxwell v. J. Baker, Inc., 86 F.3d 1098, 39 USPQ2d 1001 (Fed.Cir.1996), that the '050 specification, which disclosed a steel substrate but did not claim it, constituted a dedication of the steel substrate to the public. Johnston argued that the steel substrate was not dedicated to the public, citing YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d 1317, 46 USPQ2d 1843 (Fed.Cir.1998). On cross-motions for summary judgment, the district court ruled that the '050 patent did not dedicate the steel substrate to the public, and set the question of infringement by equivalents for trial, along with the issues of damages and willful infringement. Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C-97-04382 CRB, slip op., 1998 WL 545010 (N.D.Cal. Aug.24, 1998).

The jury found RES liable for willful infringement under the doctrine of equivalents and awarded Johnston $1,138,764 in damages. Johnson & Johnston Assocs. v. R.E. Serv. Co., No. C-97-04382 CRB, slip op. at 4, 1998 WL 908925 (N.D.Cal. Dec.23, 1998) (noting the Oct. 22, 1998 jury verdict). Exercising its discretion under 35 U.S.C. § 284, the district court enhanced Johnston's damages — doubling the jury's assessment for lost profits and reasonable royalties, but not for price...