Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc.

285 F.3d 1046 (2002)

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Nature of the Case

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Facts

P owns the '050 patent. It involves the manufacture of printed circuit boards. 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 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 so 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. 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 . . . polypropylene can be used. In prior litigation, a jury found that D had willfully infringed the 050 patent. In 1997, D began making new laminates for the manufacture of printed circuit boards. D joined copper foil to a sheet of steel as the substrate instead of a sheet of aluminum. P sued D for infringement. The district court granted D's motion for summary judgment of no literal infringement. D 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. 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. The jury found D liable for willful infringement under the doctrine of equivalents and awarded P $ 1,138,764 in damages. Exercising its discretion under §284, the district court enhanced P's damages -- doubling the jury's assessment for lost profits and reasonable royalties, but not for price erosion. D argues on appeal that P did not claim steel substrates, but limited its patent scope to aluminum substrates, thus dedicating to the public this unclaimed subject matter.