American Intellectual Property Law Association
Claim Construction: Dedication Doctrine
and the Exclusion of Embodiments
Nanda Alapati
IP Practice in Japan Committee Pre-meeting
2014 AIPLA Mid-Winter Conference
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January 28-29, 2014
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I. Dedication Doctrine
Central Question in Dedication of Disclosed Subject
Matter to the Public
Is a Patentee entitled to claim scope, under DOE, if Patentee
discloses subject matter in the specification, but does claim it?
If so, what is the claim scope to which patentee is entitled?
Factor #1: Doctrine of Equivalents
Function-Way-Result (Graver Tank S.Ct. 1950)
Insubstantial Differences (Warner-Jenkinson, S.Ct. 1997)
Foreseeability (Festo S.Ct. 2002)
Factor #2: 112, ¶1,2 issues
Must
“particularly point out” what is being claimed
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Must provide written description adequate to enable invention
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Johnson v. RE Services (Fed. Cir. 2002)
Invention has to do with making printed circuit boards
Spec: Laminate of copper + sacrificial substrate. Substrate is
preferably aluminum, but can also use stainless steel and nickel alloys
Claims: use aluminum substrate
RE Services (Defendant)
Uses stainless steel in substrate
Agrees that stainless steel is equivalent to aluminum
BUT -- No DOE - P disclosed, but did not claim steel
Johnson:
Spec says that stainless steel can also be used
DOE applies
Fed Cir (En banc, per curiam, lots of concurrence)
Claims serve Notice function
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infringement
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“Clarification” of Disclosure Doctrine (1)
Pfizer v. Teva et al. Cir. 2005)
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Spec: Example C (not in accordance with invention, uses
“microcrystalline cellulose”)
Claim 1: (c) “suitable amount of saccharide to inhibit hydrolysis”
Co-defendant Ranbaxy: (microcrystalline cellulose to inhibit)
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“microcrystalline cellulose” disclosed in Example C, but not claimed
If not considered disclosed, then not fair to claim DOE infringement
Fed. Cir:
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P did not specify that it is an alternative (non-working Example C)
Insubstantial difference between “saccharide” and “microcrystalline
cellulose,
so DOE infringement is possible
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“Clarification” of Disclosure Doctrine(2)
PSC Computer Products v. Foxconn Int’l (Fed. Cir. 2004)
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Background: prior art includes plastic clips for retaining a heat sink;
plastic clips more expensive
Claims: “clip with resilient metal strap” + other elements
Fed. Cir:
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“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 disclosure-dedication rule requires an inventor who
discloses specific matter to claim it, and to submit the broader claim for
examination. Otherwise, that matter is dedicated to the public and may
not be recaptured under the doctrine of equivalents.
Written description - PHOSITA could tell that plastic clips are a
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substitute
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Sandisk v. Kingston (1) (Fed Cir 2012)
Sandisk owns several patents Regarding Flash Memory
Thumb drives
EEPROM technology w/controllers
Prior Art Technology
Blocks of memory; organized into pages
Erase one block at a time
Write to one page at a time
Repeated erasing and write affects life of memory
‘424 and ‘316 patents directed to how to make memory last longer
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Sandisk v. Kingston (2)
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Sandisk v. Kingston (3)
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Sandisk v. Kingston (4) ‘424 patent
112 Issue (Did Sandisk particularly point out?)
USP 6,763,424 Patent “Partial Block Data Programming…”
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“Partial block recording” - update only certain pages of a new block
using logical addresses of data in old block
Claim 20 –
“programming,… (using) a logical page address of original data,
…(some pages in the new block)”
Kingston’s (Defendant)
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Our Device programs with logical block address + page “offset”; not the
same as using page address
Sandisk (Patentee)
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Knowing
logical block address + fact that pages are sequentially
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programmed is equivalent to the claimed “logical page address”; DOE
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Sandisk v. Kingston (5) ‘424 patent
112 Issue (Did Sandisk particularly point out?)
Kingston’s argument (Dt. Ct. agrees)
Fig. 9 discloses the “logical block + page offset” method
Even if not explicitly stated ,PHOSITA would be able to figure this out
Sandisk did not claim so it’s dedicated to public; no DOE infringement
Sandisk
We did not disclose equivalent; all we show in Fig. 9 is that a logical
page address includes (a) a logical block number, and (b) logical page
offset
Fed. Cir.
Agrees with Sandisk & reverses Dt. Ct.
Embodiment of Fig. 9 not identified as an alternative (See Pfizer)
“Whether a PHOSITA could employ the disclosure to implement the
equivalent
(is not the same as) disclosing that equivalent “as an
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alternative to a claim limitation”
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Sandisk v. Kingston (6) ‘316 patent
Incorporation by Reference Issue
USP 6,149,316 – “Flash EEPROM System”
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‘316 Claim 79 - A memory system . .comprising:
(1) Array of memory cells (memory chip)
(2) Controller (controller chip) connected to array and removably
connectable…having
address generator; and
data transfer control…including
a data writing circuit. . .;
a data reading circuit . . .
‘316 Disclosure
Incorporates by reference the “’338 patent”, which shows data writing
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and reading
circuit on the memory chip
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Sandisk v. Kingston (7) ‘316 patent
Incorporation by Reference Issue
Kingston’s Device
Data writing and reading circuit are on the memory chip
Sandisk
DOE infringement
Dt. Ct.
Document incorporated by reference “becomes effectively part of the
host document as if it were explicitly contained therein”
Disclosed, but not claimed; so no DOE Infringement
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Sandisk v. Kingston (8) - ‘316 patent
Incorporation by Reference Issue
Fed. Cir.
Two part test
(1)
(2)
Check if the host patent (‘316) sufficiently informs one of
ordinary skill that the incorporated document contains subject
matter that is an alternative to a claim limitation. (See Pfizer)
Check if “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. “ (See
PSC)
In this case, test #1 is not satisfied; so no dedication to the
public
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Lessons for Patentees
During Drafting Process
Be careful as to what you say is an “alternative”
Be careful that claims cover all embodiments (at least in dependent
form)
Okay to incorporate by reference (have your cake & eat it too)
During Prosecution
Make sure you are not leaving embodiments on the table
After NOA
Check the claims to make sure that every embodiment is literally
covered. If not, consider filing a CON or DIV
During Litigation
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Walk aLogo
fine line - “we did not disclose, but still insubstantial
difference”
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Lessons for Defendants
Make sure P is not trying to sneak past a claim for Literal
Infringement, when DOE is more proper
If DOE infringement is asserted, check to see whether it
relies on subject matter that is said to be an alternative
to what is being claimed
Convince court that disclosed, but unclaimed equivalent,
satisfies 112 requirements
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Dedication Doctrine - Conclusion
Valid Affirmative Defense to as assertion of DOE
infringement
Must be clear that that the unclaimed subject matter is an
alternative
Unclaimed subject matter must meet 112,1 – enabled &
adequate written description, to be dedicated to the
public (But drafters shouldn’t take chances)
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II. Exclusion of Embodiments
Central Question in Exclusion of Embodiment from
Claim Scope
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Can Defendant interpret claims in a way such that disclosed
embodiments are not covered?
If so, when can Defendant do this?
Relevant Legal Cases Concerning Claim Construction
Markman v. Westview, 52 F3.3d 967 (Fed. Cir. 1995)
Claim construction is a matter of law
Vitronics. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996)
Look to intrinsic evidence; prefer claim construction that
does not exclude the preferred embodiment
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
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Look to specification first to interpret claims
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Accent Packaging v. Leggett & Platt
Field of the Invention
Machines that Crush and Bale Waste Materials
Two patents-in-suit ; “Wire Strapper for Waste Material Baler”
USP 7,373,877; USP 7,412,992 (Divisional) – This talk is about ‘877
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Accent Packaging - USP 7,373,877 (1)
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Accent Packaging - USP 7,373,877 (2)
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Accent Packaging - USP 7,373,877 (3)
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Accent Packaging - USP 7,373,877 (4)
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Gripper operator 218 has body 226 which controls the gripper
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Cutter operator 224 has body 252 which controls cutting element
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Hub
& ejector operators 220, 222 have bodies 234, 236
which control knotter and knotter cover
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Accent Packaging - Language in dispute
Claim 1
“said operator assembly including a pivotal shaft
assembly and elongated operator bodies, with each of
the operator bodies being operably coupled with a
respective one of said gripper, knotter, cutting element
and cover”
N.B. -- Language above was added by amendment after a
first office action on the merits to overcome prior art
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Accent Packaging – Parties’ Arguments
Defendant Leggett
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Claim language requires four operator bodies, each coupled to
exactly one (“a respective one”) of gripper, knotter, cutting element
and cover”
Specification does not define “a respective one”; but sole
embodiment in specification has four operator arms
Plaintiff Accent Packaging
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Claim does not require that there be four operator bodies
No requirement that an operator body can be coupled to one and
only one element
District Court
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Agrees
with Defendant; no infringement of ‘877 patent
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Accent Packaging – CAFC REVERSES
• Turns to Philips & Vitronics (look to specification)
• Specification of ‘877 patent has single embodiment
Two operator bodies are coupled to the knotter and to
the knotter cover
“A claim interpretation that excludes a preferred
embodiment is rarely, if ever, correct”
• Claim language “a respective one” does not preclude
embodiment
“a” and “an” can mean “one or more”
preferred embodiment supports this interpretation
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• Patentee
Wins Claim Construction
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Some Observations about Accent Packaging
Preferred embodiments get the benefit of the doubt.
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Court does not like a claim interpretation excluding the sole
embodiment
Sloppy language might be forgiven
Claim language “each…a respective one” can mean “one or
more”
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But specification must support this interpretation
N.B. - might be able to invoke this principle when applying prior art
to invalidate a claim
Firm literal
Logo infringement despite amended language; no
P asserts
reliance on DOE
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Claim Construction to Exclude Embodiments
Factors that Fed Cir Will Consider
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Is there a single Preferred Embodiment?
Are there Alternate Embodiments which are claimed?
Are all Alternate Embodiments not in scope of claims?
Is the claim language Clear or Ambiguous?
Is there Prosecution History Estoppel?
N. B.– The fact that a certain claim construction will
invalidate a claim (especially a dependent claim)
generally will not make a difference
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Intamin v. Magnetar (Fed. Cir. 2007)
Alternate Embodiment Disclosed – D Wins
USP 6,062,350 -- Braking system for an amusement device
Claim 1 – braking device having fixed device & movable device: rails
extending the length of the fixed device; + other elements
Magnetar (Defendant)
(1) Based on specification, “length” means distance; not direction
Intamin (Patentee)
(1) Limiting “length” to distance would exclude some embodiments
(2) Defining “length” this way renders dependent claim 10
inoperative
CAFC agrees with D:
(1) Claim need not cover all embodiments
.
(2) Patentee may draft different claims to cover different
Firm Logo Other claims in P’s patent cover other embodiments
embodiments”
(3) Claim construction of claim 10 is not before us
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August Technology v. Camtek (Fed. Cir. 2011)
Alternate Embodiment Disclosed – D Wins
USP 6,826,298 – Automated Wafer Inspection System.
Claim 1 – train the system using a “plurality of known good quality
wafers”
Camtek (Defendant)
Trains its system using multiple sections of dies from a single wafer
We don’t use multiple (plurality of) wafers in training our system
August Technology (Patentee)
The term “wafer” can include portions of wafers
Claim 1 does not require wafers to be physically separate items
D’s interpretation would exclude one of the preferred embodiments
CAFC agrees with Defendant:
Exclusion Principle does not apply when patent discloses
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alternative
embodiments
Inventors chose to draft claim 1 for training on plurality of wafers
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TIP Systems v. Phillips et al. (Fed. Cir. 2008)
Alternate Embodiments Disclosed – D Wins
USP 6,512,828 -- Wall mounted telephone
Invention
Phone is for prisons & high crime areas
Earpiece and mouthpiece are mounted on the phone
No telephone cord between handset and phone body
CAFC: “Although the alternative embodiment does not support the court’s
construction, for the reasons discussed above, the claims need not
be construed to encompass all disclosed embodiments when the
claim language is clearly limited to one or more embodiments.” (and
there
other claims to cover other embodiments).
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Lucent v. Gateway (Fed Cir 2008)
No Ambiguity in Claim – D Wins
USP 4,701,954 – Multipulse LPC Speech Processing Arrangement
Claim 6 – get speech frame, generate multipulse code for each speech
frame by iterative process; in each iteration, for each pulse, perform
5 claimed steps
Gateway (Defendant)
Claim says you must perform all 5 steps in each iteration
Lucent (Patentee)
Only one embodiment; shows that only 4 of the 5 steps are done
per pulse; 5th step is done only once each frame; see figures; see
source code (in patent)
CAFC affirms
“When claims are susceptible to only one reasonable construction,
we
construe
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No infringement
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Elekta Instr v. O.U.R. Scientific (Fed. Cir. 2000)
Prosecution History Estoppel - D wins
USP 4,780,898 – Device for Treatment of Brain Tumors
Claim 1 – radiation sources and beam channels located in only within a
zone extending between latitudes of 30°- 45°
Spec: Discloses zone can be between 0°- 45°
PH: Claims amended to 30° - 45° to overcome obviousness rejection
Dt. Ct.: defines zone as “beginning at edge . . . .and extending to a point
between 30° - 45 °” and finds that D infringes since they are
between 0° - 30°
P: Limiting us to between 30° - 45°would exclude preferred and only
embodiment; radiation sources only within 30° - 45° is inoperative
CAFC rejects P’s argument and reverses Dt. Ct.
(1) “unambiguous language of the claim controls” “this is a rare
exception
where preferred embodiment is not covered”
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(2) Will not construe claim to preserve validity
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Claim Construction To Exclude Embodiments
Current State of Law
Sole Preferred Embodiment (Accent Packaging)
CAFC will generally not allow exclusion
No Ambiguity (Lucent; Chef America)
CAFC generally will allow exclusion
Existence of Other Embodiments (Intamin, August, TIP)
CAFC will usually allow exclusion
Prosecution History Estoppel (Elekta)
CAFC will take it into account but no guarantee; but see Accent
Packaging
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Thanks for your Attention
Shitsumon ga Arimasu ka?
Nanda Alapati
Partner
Womble Carlyle
8065 Leesburg Pike - 4th Fl.
Tysons Corner, VA 22182
+1-703-394-2216
+1-240-676-6493 (mobile)
Nalapati@wcsr.com
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