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Dedication-Disclosure Rule Requires Disclosing to One of Ordinary Skill That Equivalent Is an Alternative to a Claim Limitation

October 09, 2012

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Last Month at the Federal Circuit - November 2012

Judges: Prost (author), Reyna (concurring-in-part and dissenting-in-part), Wallach

[Appealed from: W.D. Wis., Senior Judge Crabb]

In SanDisk Corp. v. Kingston Technology Co., No. 11-1346 (Fed. Cir. Oct. 9, 2012), the Federal Circuit reversed two of the district court’s claim constructions as improperly narrow. The Court vacated the judgment of noninfringement as to claims containing those terms, but affirmed the judgment of no literal infringement of another claim. The Court also vacated the district court’s finding of noninfringement under the DOE and remanded to the district court for further proceedings.

SanDisk Corporation (“SanDisk”) owns U.S. Patent Nos. 6,763,424 (“the ’424 patent”); 6,757,842 (“the ’842 patent”); and 6,149,316 (“the ’316 patent”), which are directed to flash memory and, more specifically, to minimizing the wear that results from multiple read/writes of flash memory by identifying pages of data using a combination of logical and physical addressing of the data. A typical flash memory device includes a controller and one or more flash memory chips. Each flash memory chip contains memory cells for storing data. These cells are arranged into pages, and the pages in turn are arranged into blocks. To keep track of data stored in these cells, physical and logical addresses are monitored. SanDisk sued Kingston Technology Co., Inc. and Kingston Technology Corp. (collectively “Kingston”) for infringement of five of SanDisk’s flash memory patents.

After claim construction, SanDisk voluntarily withdrew its infringement claims based on two patents and withdrew certain claims of the ’842 patent. Both parties moved for SJ. The district court granted SanDisk’s motion as to SanDisk’s claim that Kingston was contributorily infringing claims 20, 24, 28, and 30 of the ’424 patent by selling products containing a certain controller. With respect to all remaining asserted claims, the district court found that Kingston was not infringing as a matter of law and ultimately entered judgment in favor of Kingston on those claims. After the district court’s SJ order, the parties entered into a Stipulation and Order Dismissing Remaining Claims for Relief (“Stipulation”), whereby SanDisk dismissed without prejudice its remaining infringement claims involving the ’424 patent, and Kingston dismissed without prejudice its related invalidity and enforceability counterclaims. SanDisk appealed.

On appeal, the Federal Circuit first concluded that it had no jurisdiction to address SanDisk’s claim construction arguments that related only to claims SanDisk had voluntarily dismissed without the parties stipulating to a judgment of noninfringement. Without final judgment by the district court, the Court held that there was no “case or controversy” with respect to these claim terms. Although the parties agreed that the “Stipulation shall not in any way prejudice any parties’ [sic] right to appeal this matter,” the Court clarified that without any final judgment to support the Court’s jurisdiction, the Stipulation cannot, by itself, grant jurisdiction to the Court to address the dismissed claims. Slip op. at 8 (alteration in original) (citation omitted).

The Federal Circuit next concluded that SanDisk had not waived its claim construction arguments for the terms “user data portion” and “overhead data portion” because SanDisk had not raised its arguments in its SJ motion. The Court found that SanDisk had raised the arguments during Markman proceedings and need not repeat unsuccessful arguments to the district court during SJ to preserve these issues for appeal. Thus, the Court addressed the claim construction issues of the “at least a user data portion and an overhead portion” limitation, as well as the “recording a relative time of programming” limitation.

The district court construed “recording a relative time of programming” to cover writing a timestamp on each page of memory, but to exclude the Block Recording Method described in the specification of the ’424 patent. The Block Recording Method, which does not require a timestamp to be stored on each page, records a single timestamp for each block and updates the timestamp each time a page of data is written into the block. The Court reversed the district court’s construction as improperly narrow, finding that, in particular, the claim’s use of “relative” was significant, as it “merely requires recording some indication of the order of programming for those pages sharing a logical address.” Id. at 14. Thus, the Court held that the proper construction of this term includes the Block Recording Method because the claims require only “recording a relative time of programming,” not a “time of programming.”

The Federal Circuit also found improperly narrow the district court’s construction of “user data and overhead information,” which limited the term to only a single user data and a single overhead portion. The Court found that the district court had improperly relied upon the claim’s reference to “the user data portion” and “said overhead portion” for its construction. The Court reiterated the general rule that the use of the indefinite articles “a” and “an” in patent parlance is open ended, meaning “one or more.” Subsequent use of “the” or “said” in a claim to refer back to the same term does not change this general rule. As the facts surrounding SanDisk’s patents did not demonstrate any intention otherwise, the Court held that proper construction included multiple user data and/or overhead portions.

The Federal Circuit then affirmed the district court’s finding of no literal infringement of claim 79 of the ’316 patent, as SanDisk failed to present evidence that read/write components located separate from the controller satisfied the claim’s requirement that the controller include such components.

The Court next addressed the district court’s application of the disclosure-dedication rule from Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc), in finding no infringement of claim 20 of the ’424 patent and claim 79 of the ’316 patent under the DOE. During SJ proceedings, SanDisk had argued that Kingston infringed under an equivalent to the claim limitation “programming . . . a logical page address” shown in Figure 9 of the ’424 patent. The district court held that this proposed equivalent was disclaimed under the disclosure-dedication rule, which finds subject matter that a patent drafter discloses but declines to claim is dedicated to the public, and thus must be excluded from the DOE analysis. But the Federal Circuit clarified that the disclosure-dedication rule does not mean that a generic reference in the specification dedicates all that material to the public. Rather, the disclosure must be one that a person having ordinary skill in the art could identify as the subject matter that had been disclosed and dedicated. Thus, the Court concluded that the disclosure in Figure 9 of the ’424 patent of a proposed equivalent to “programming . . . a logical page address” did not satisfy the requirements of the disclosure-dedication rule.

Likewise, the Court found that the dedication-disclosure rule was not satisfied for the “controller” limitation in claim 79 of the ’316 patent. The district court relied upon a document incorporated by reference into the ’316 patent to satisfy this rule. The Court held that to determine whether incorporated subject matter satisfies the dedication-disclosure rule, the asserted patent must inform one of ordinary skill that the incorporated document contains subject matter that is an alternative to a claim limitation. As the ’316 patent did not satisfy the requirement, the Court held that the dedication-disclosure rule did not apply.

In a separate opinion, Judge Reyna dissented from the majority’s construction of “recording a relative time of programming.” Judge Reyna disagreed that “‘recording a relative time of programming’ merely requires recording some indication of the order of programming for those pages sharing a logical address.” Reyna Dissent at 3 (quoting slip op. at 14). Judge Reyna concluded that a time must be recorded and it must be an actual time, not just an indication of order. Judge Reyna explained that, in the majority’s view, because recording new updates in the next available page in the most recent block implicitly encodes the order in which the updates were received, the majority concluded that the claim was met. In Judge Reyna’s view, this construction improperly ignores express limitations of the claims and uses the specification to broaden the patent.

Summary authored by Theresa M. Weisenberger, Esq.