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Disclosure-Dedication Rule Does Not Impose a § 112 Requirement on Unclaimed Subject Matter

September 13, 2004

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Last Month at the Federal Circuit - October 2004

Judges: Linn (author), Rader, and Dyk

In Toro Co. v. White Consolidated Industries, Inc., No. 03-1424 (Fed. Cir. Sept. 13, 2004), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement in favor of White Consolidated Industries, Inc. (“White”), ruling that (1) the patentee’s intent was not a factor in applying the disclosure-dedication rule; (2) the patentee’s disclosure was sufficiently apparent to one of ordinary skill in the art to trigger the disclosure-dedication rule; and (3) the law of the case doctrine did not preclude application of the disclosurededication rule.

U.S. Patent No. 4,694,528 (“the ‘528 patent”), owned by Toro Company (“Toro”), is directed to a hand-held machine that primarily is used to vacuum or blow leaves and other small lawn debris. White moved for SJ of noninfringement under the DOE, asserting that under Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc), a cover with a replaceable ring structure was dedicated to the public.

The district court granted the SJ motion, holding that the replaceable ring was dedicated to the public and could not be recaptured by application of the DOE. While the specification discloses both a replaceable ring and a permanently affixed ring, the patent claims only the affixed-ring structure.

On appeal, the Federal Circuit initially ruled that the disclosure-dedication rule should be analyzed under the same standard of review as prosecution history estoppel, i.e., as a question of law subject to de novo review.

On the merits of the disclosure-dedication ruling, Toro first argued that any disclosure and subsequent failure to claim the replaceable ring structure was wholly accidental, and therefore, the dedication-disclosure rule should not apply. The Federal Circuit rejected this argument, stating that subjective intent of the patentee is irrelevant. As a matter of law, intent is not a factor in the analysis of the disclosure-dedication rule.

Toro next argued that there was insufficient disclosure of the replaceable ring in the specification, as a matter of law, to trigger the disclosure-dedication rule. The Federal Circuit held that when one of ordinary skill in the art can understand the unclaimed, disclosed teaching upon reading the written description, the disclosure-dedication rule is triggered, and the unclaimed subject matter is dedicated to the public. The Court concluded that this standard is different from the level of disclosure required under § 112 to support claims. The Federal Circuit affirmed the district court’s finding that there is no genuine issue of material fact in concluding that the replaceable ring was adequately disclosed to invoke the disclosure-dedication rule.

Toro further argued that the law of the case precluded SJ. First, Toro contended that the district court’s conclusion that there was disclosure of the unattached ring was contrary to the Federal Circuit’s earlier rulings and violated the law of the case. However, because the law of the case doctrine is limited to issues that were actually decided, the Federal Circuit’s previous statements indicating that the patent neither discloses nor describes any structure other than the attached ring are not law of the case.

Alternatively, Toro argued that if the Federal Circuit upheld the district court’s ruling that an unattached ring is disclosed in the ‘528 patent, then claim construction should be revisited. The Court rejected Toro’s argument because the circumstances of this case are not so “exceptional” to second guess the previous analysis on claim construction.