Court Clarifies Disclosure-Dedication Rule
January 20, 2004
Last Month at the Federal Circuit - February 2004
Judges: Gajarsa (author), Mayer, and Clevenger
In PSC Computer Products, Inc. v. Foxconn International, Inc., No. 03-1089 (Fed. Cir. Jan. 20, 2004), the Federal Circuit affirmed a SJ of noninfringement because the patentee had dedicated plastic clips to the public by disclosing that prior art clips were made of plastic, but explicitly claiming only clips made of metal.
PSC Computer Products, Inc. (“PSC”) owns U.S. Patent No. 6,061,239 (“the ’239 patent”) directed to a retainer clip for securing a heat-sink component to a microchip. The written description of the ’239 patent describes the clip as including a component “made of a resilient metal such as stainless steel although other resilient materials may be suitable.” The written description also states that “other prior art devices use molded plastic and/or metal parts that must be cast or forged which again are more expensive metal forming operations.” The patent claim at issue recites a clip including a “resilient metal strap.”
Foxconn International, Inc. (“Foxconn”) sells plastic retainer clips for securing a heat-sink component to a microchip. PSC filed suit against Foxconn alleging that Foxconn’s clip infringed the ’239 patent under the DOE. Foxconn argued that PSC had dedicated clips with plastic parts to the public. The district court agreed with Foxconn and granted SJ of noninfringement.
In affirming the SJ, the Federal Circuit addressed two issues concerning what it coined as the “disclosure-dedication” rule. Namely, the Federal Circuit discussed (1) how specific a disclosure in a written description must be to dedicate matter to the public; and (2) whether the written description of the ’239 patent was sufficiently specific to dedicate plastic parts to the public. With respect to the first issue, the Federal Circuit held that while the disclosure-dedication rule does not mean that any generic reference in a written specification dedicates all members of that particular genus to the public, if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, such unclaimed disclosed matter has been dedicated to the public.
Regarding the second issue, the Federal Circuit found that one of ordinary skill in the art reading the specific disclosure in the ’239 patent relating to prior art devices using molded plastic parts could reasonably conclude that plastic clip parts could be substituted for metal clip parts. Accordingly, the Court concluded, PSC was obliged to either submit a broader claim covering both metal and plastic clips, or dedicate the use of plastic clips to the public. PSC chose the latter, thus putting the public on notice that clips made of metal parts would infringe and those made of plastic would not.