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I. Dedication Doctrine

Claim Construction: Dedi cation Doctrine and the Exclusion of Embodiments Nanda Alapati IP Practice in Japan Committee Pre-meeting 2014 AIPLA Mid-Winter Conference January 28-29, 2014. I. Dedication Doctrine. Central Question in Dedication of Disclosed Subject Matter to the Public

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I. Dedication Doctrine

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  1. Claim Construction: Dedication Doctrine and the Exclusion of EmbodimentsNanda AlapatiIP Practice in Japan Committee Pre-meeting2014 AIPLA Mid-Winter ConferenceJanuary 28-29, 2014

  2. 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 (FestoS.Ct. 2002) • Factor #2: 112, ¶1,2 issues • Must “particularly point out” what is being claimed • Must provide written description adequate to enable invention

  3. 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 No infringement

  4. “Clarification” of Disclosure Doctrine (1) • Pfizer v. Teva et al. Cir. 2005) • 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) • “microcrystalline cellulose” disclosed in Example C, but not claimed • If not considered disclosed, then not fair to claim DOE infringement • Fed. Cir: • 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

  5. “Clarification” of Disclosure Doctrine(2) • PSC Computer Products v. Foxconn Int’l (Fed. Cir. 2004) • 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: • “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 substitute

  6. 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

  7. Sandisk v. Kingston (2)

  8. Sandisk v. Kingston (3)

  9. Sandisk v. Kingston (4) ‘424 patent112 Issue (Did Sandisk particularly point out?) • USP 6,763,424 Patent “Partial Block Data Programming…” • “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) • Our Device programs with logical block address + page “offset”; not the same as using page address • Sandisk (Patentee) • Knowing logical block address + fact that pages are sequentially programmed is equivalent to the claimed “logical page address”; DOE

  10. Sandisk v. Kingston (5) ‘424 patent112 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 alternative to a claim limitation”

  11. Sandisk v. Kingston (6) ‘316 patent Incorporation by Reference Issue • USP 6,149,316 – “Flash EEPROM System” • ‘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 and reading circuit on the memory chip

  12. 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

  13. Sandisk v. Kingston (8) - ‘316 patentIncorporation by Reference Issue • Fed. Cir. • Two part test • 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

  14. 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 Walk a fine line - “we did not disclose, but still insubstantial difference”

  15. 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

  16. 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)

  17. II. Exclusion of Embodiments • Central Question in Exclusion of Embodiment from Claim Scope • 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) • Look to specification first to interpret claims

  18. 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

  19. Accent Packaging - USP 7,373,877 (1)

  20. Accent Packaging - USP 7,373,877 (2)

  21. Accent Packaging - USP 7,373,877 (3)

  22. Accent Packaging - USP 7,373,877 (4) • Gripper operator 218 has body 226 which controls the gripper • Cutter operator 224 has body 252 which controls cutting element • Hub gear & ejector operators 220, 222 have bodies 234, 236 • which control knotter and knotter cover

  23. 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

  24. Accent Packaging – Parties’ Arguments Defendant Leggett • 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 • 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 • Agrees with Defendant; no infringement of ‘877 patent

  25. 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 • Patentee Wins Claim Construction

  26. Some Observations about Accent Packaging Preferred embodiments get the benefit of the doubt. • 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” • But specification must support this interpretation • N.B. - might be able to invoke this principle when applying prior art to invalidate a claim P asserts literal infringement despite amended language; no reliance on DOE

  27. Claim Construction to Exclude Embodiments Factors that Fed Cir Will Consider • 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

  28. 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 embodiments” Other claims in P’s patent cover other embodiments (3) Claim construction of claim 10 is not before us

  29. 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 alternative embodiments Inventors chose to draft claim 1 for training on plurality of wafers

  30. 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 are other claims to cover other embodiments).

  31. 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 claims as the patentee drafted them” No infringement

  32. ElektaInstr 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” (2) Will not construe claim to preserve validity

  33. 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

  34. Thanks for your AttentionShitsumongaArimasuka? 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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