Advertisement

July 27, 2014

Limits on the Use of the Disclosure-Dedication Rule Under Doctrine of Equivalents

Addressing for the first time the issue of whether the disclosure of subject matter in a document incorporated by reference amounts to a dedication of that subject matter to the public under the Johnson & Johnston disclosure-dedication rule, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s summary judgment of non-infringement, holding that the host patent must first sufficiently inform one of ordinary skill that the incorporated document contains subject matter that is an alternative to a claim limitation before the dedication rule can be used to limit equivalents.  SanDisk v. Kingston Tech., Case No. 11-1346 (Fed. Cir., Oct. 9, 2012) (Prost, J.) (Reyna, J. concurring-in-part and dissenting-in-part).

SanDisk brought suit against Kingston alleging infringement of patents relating to various methods and systems for managing data in flash memory systems, including methods for reducing the wear and tear on flash memory cells.  In its doctrine of equivalents analysis the district court granted summary judgment of non-infringement on two grounds, both of which related to the disclosure-dedication rule set forth in Johnson & Johnston (IP Update, Vol. 5, No. 4): SanDisk’s proposed equivalent was dedicated to the public because one of the patents-in-suit disclosed an equivalent, and disclosure in a patent incorporated by reference in the host patent amounted to dedication of the subject matter to the public.  The Federal Circuit disagreed on both accounts. 

First, the Federal Circuit held that the disclosures in one of the patents-in-suit did not satisfy the Johnson & Johnston disclosure-dedication rule.  Under this rule, “[W]hen a patent drafter discloses but declines to claim subject matter . . . this action dedicates that unclaimed subject matter to the public.”  The Federal Circuit clarified, however, that “the disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed.”  The Federal Circuit emphasized that “before unclaimed subject matter is deemed to have been dedicated to the public, that unclaimed subject matter must have been identified by the patentee as an alternative to a claim limitation.”

Turning next to the issue of whether the disclosure of subject matter in a document incorporated by reference amounts to a dedication of that subject matter under Johnson & Johnston, the Federal Circuit held that incorporation by reference does not automatically “convert the invention of the incorporated patent into the invention of the host patent.”  Rather, a district court must first look to the teachings of the host patent in determining whether the incorporated subject matter satisfies the Johnson & Johnston disclosure-dedication rule.  First “the host patent must sufficiently inform one of ordinary skill that the incorporated document contains subject matter that is an alternative to a claim limitation.”  Only then does the inquiry shift to the incorporated document “to assess whether the disclosure of that subject matter is of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed.”

Practice Note:  This ruling will make it harder for defendants to satisfy the Johnson & Johnston disclosure-dedication rule when attempting to restrict application of the doctrine of equivalents.

© 2014 McDermott Will & Emery

About the Author

Associate

Mandy Kim is an associate with the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.  She focuses her practice on intellectual property litigation.

949-757-6061

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.