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TechRoadmap Directions
  IP Issues of Interest to High Tech Companies
Vol 2 Issue 5 May 2002

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Swinging into spring, unfortunately

"Specifications teach, claims claim."

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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This is the 14th issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices.

This month we look at a recent appeals court ruling in which the warning "everything you say may be held against you in a court of law" gets applied in the context of the so called doctrine of equivalents.

  • Swinging into spring, unfortunately

Occasionally we come across a patent that makes us wonder how our tax dollars are being spent at the USPTO. The following excerpts are from one of those patents.

Issued on April 9, 2002 "Method of swinging on a swing"

Abstract - A method of swinging on a swing is disclosed, in which a user positioned on a standard swing suspended by two chains from a substantially horizontal tree branch induces side to side motion by pulling alternately on one chain and then the other.

Background - These methods of swinging on a swing, although of considerable interest to some people, can lose their appeal with age and experience. A new method of swinging on a swing would therefore present an advance of great significance and value.

THE INVENTION - The method comprises the steps of: a) positioning a user on the seat; and b) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side, to create side-to-side motion.

...the present invention may be referred to by the present inventor and his sister as "Tarzan" swinging. The user may even choose to produce a Tarzan-type yell while swinging in the manner described, which more accurately replicates swinging on vines in a dense jungle forest. Actual jungle forestry is not required.

The saddest thing about this patent is that the named inventor is a young child and the patent attorney is his father.

See the patent

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  • "Specifications teach, claims claim."
  Many inventors feel they can file their patents for themselves - who knows their invention better than they. Usually, however, inventors realize that they are totally unprepared to write the claims. And, to paraphrase Hamlet, the claim's the thing. Although we are unlikely to know for sure, in the recent Court of Appeals case of Johnson & Johnston v. RES it seems as if the inventor and his patent attorney were not communicating very well, leaving J&J with a much more narrow set of patent claims than their specification would have allowed. To understand why your company's interface with the patent attorney should understand both your technology and the logic of patent claims, read on...

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  • Tip of the Month
Always coordinate the technical description with the claims:
  • Describing alternative embodiments is necessary but not sufficient - You can't claim a patent monopoly on something you haven't taught to the public for its benefit when the patent expires.
  • Claiming alternative embodiments is necessary but not sufficient - Described but unclaimed alternatives are presumed dedicated to the public immediately.
  • The "doctrine of equivalents" is the exception, not the rule. - As the court says, "Specifications teach, claims claim." Your attorney can help you draft "means plus function" claims that effectively claim your invention by what it does.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to this same article in the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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  • "Specifications teach, claims claim." - continued

In an opinion handed down recently, the Court of Appeals made it excruciatingly clear that the doctrine of equivalents cannot be relied upon to extend the coverage of a patent beyond the literal claims, particularly in the case where the inventor could reasonably foresee the equivalent embodiments. In the case at hand, Johnson & Johnston Assoc. v. R. E. Service Co., there appears to be communications gap between the inventor and the patent attorney, leading to a narrow set of claims that ignores disclosures of equivalent embodiments in the description. If J&J had provided a "patent aware" person as their interface with their attorney, perhaps the additional check-and-balance would have avoided the loss of protection.

J&J is the owner of US Patent 5,153,050, which describes a "component" for use during the manufacture of printed circuit boards. In creating these circuit boards, workers manually handle the thin sheets of copper foil, potentially damaging or contaminating the fragile foil. The '050 patent claims an assembly that 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.

The trouble started when J&J asserted the '050 patent against RES in the early 90's. After a number of litigation steps, the parties settled with J&J essentially winning. Then, in 1997, RES began making new laminates using a sheet of steel as the substrate instead of a sheet of aluminum. J&J sued (again) for infringement. Again a series of suits ensued, ultimately hinging on this wording in the specification (but not the claims):

"The use of the adhered substrate, regardless of what material it is made of, makes the consumer's objective of using thinner... more realistic... While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used."
Although a jury originally found that RES willfully infringed under the doctrine of equivalents, the Appeals Court concluded that RES, as a matter of law, could not have infringed the '050 patent and reversed the district court's judgment. Why did the Appeals Court come to this conclusion? Wasn't the use of steel disclosed as equivalent?


Time and time again in their opinion the Justices state that an inventor who makes narrow claims is generally not entitled to protection on broader, equivalent embodiments. They see the doctrine of equivalents as the exception and not the rule; if equivalent embodiments are reasonably claimable to start with, then they should be claimed.

The Court saw two issues:

1.)Is the inventor is avoiding the patent examiner's scrutiny of those alternative embodiments?

2.)Has the inventor's choice of narrow claims failed to give notice (to competitors) that he believes the broader embodiments are protected.
The opinion points out that "both the Supreme Court and this court have adhered to the fundamental principle that claims define the scope of patent protection." It also points out that claims give notice of the scope of patent protection, citing: "The public is notified and informed by the most solemn act on the part of the patentee, that his claim to invention is for such and such an element or combination, and for nothing more." In other words: Specifications teach. Claims claim..


So, where did Johnson and the patent attorney fail in their communication? It appears that the inventor was so focused on the preferred embodiment - the aluminum substrate - that he blinded his attorney to the broader possible claims. The attorney, in turn, overlooked the alternative embodiments embedded in the specification.

But all was not lost. A patentee who inadvertently fails to claim disclosed subject matter is not left without remedy. Within two years from the grant of the original patent, a patentee may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter. In addition, a patentee can file a separate application claiming the disclosed subject matter (if filed before all applications in the chain issue). Notably, Johnston took advantage of the latter of the two options by filing two continuation applications that literally claim the relevant subject matter.

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Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.