The interface of "incorporation by reference" and Johnson & Johnston's dedication rule

The CAFC criticized in Sandisk v. Kingston a district court decision:

The court also emphasized this use of “the” and “said” in concluding that “the claim leaves no doubt that it covers a method involv- ing only one user data portion and one overhead portion.” J.A. 8.

This conclusion is contrary to Baldwin Graphics Sys- tems, Inc. v. Siebert, 512 F.3d 1338 (Fed. Cir. 2008). In Baldwin, we explained that the later use of “the” and “said” to refer back to an earlier claim term does not limit that claim term to the singular, and we also articulated the general rule that the use of the indefinite articles “a” or “an” means “one or more”:

[T]his court has repeatedly emphasized that an indefinite article “a” or “an” in patent parlance carries the meaning of “one or more” in open- ended claims containing the transitional phrase “comprising.” That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[] a clear intent” to limit “a” or “an” to “one.” The subsequent use of definite ar- ticles “the” or “said” in a claim to refer back to the same claim term does not change the general plu- ral rule, but simply reinvokes that non-singular meaning.

Id. at 1342 (second alteration in original) (internal quotation marks and citations omitted) (emphasis added). Further, this general rule applies unless “the language of the claims themselves, the specification, or the prosecu- tion history necessitate[s] a departure from the rule.” Id. at 1342-43. In this case, the intrinsic evidence does not demonstrate an intention to exclude multiple user data portions or overhead portions from the claims’ scope.

Of the doctrine of claim differentiation:

Where, as here, the sole difference between the independent claim and the de- pendent claims is the limitation that one party is trying to read into the independent claim, “the doctrine of claim differentiation is at its strongest.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004); see also Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not in the independent claim.”).
Although the doctrine creates only a rebuttable pre- sumption, see, e.g., Liebel-Flarsheim, 358 F.3d at 910, here Kingston has not identified any intrinsic evidence that overcomes this presumption and justifies its narrow construction.

Of confidentiality:

On appeal, Kingston has maintained the con- fidentiality of the specific design implementations of its accused products. To preserve that confidentiality, we limit our discussion of the products to counsels’ state- ments during oral argument, see Oral Argument 12:20- 12:27, available at http://www.cafc.uscourts.gov/oral- argument-recordings/2011-1346/all

As to Johnson and Johnston:

We agree with Sandisk that its proposed equivalent was not dedicated to the public. Under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997). A patentee, however, can disclaim an equivalent by disclosing it in the specification. As we held in Johnson & Johnston, “[W]hen a patent drafter dis- closes but declines to claim subject matter, . . . this action dedicates that unclaimed subject matter to the public.” 285 F.3d at 1054.
Johnson & Johnston’s disclosure-dedication rule is not without restriction. In PSC Computer Products v. Foxconn International, Inc., 355 F.3d 1353 (Fed. Cir. 2004), we explained that the rule “does not mean that any generic reference in a written specification necessarily dedicates all members of that particular genus to the public.” Id. at 1360. Rather, “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.” Id. Additionally, in Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005), this court further clarified that “before unclaimed subject matter is deemed to have been dedicated to the public, that unclaimed subject matter must have been identified by the patentee as an alternative to a claim limitation.” Id. at 1379. Whether the disclosure- dedication rule prevents a patentee from pursuing a doctrine of equivalents infringement theory is a question of law we review de novo. Id. at 1378.

On incorporation by reference:

We have yet to address the circumstances in which the disclosure of subject matter in a document incorporated by reference amounts to a dedication of that subject matter under Johnson & Johnston. Because a document incorporated by reference “becomes effectively part of the host document as if it were explicitly contained therein,” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001), the disclosure of subject matter in an incorporated document can dedicate that subject matter to the public for purposes of the host patent. Incorporation by reference, however, “does not convert the invention of the incorporated patent into the invention of the host patent.” Modine Mfg. Co. v. Int’l Trade Comm’n, 75 F.3d 1545, 1552 (Fed. Cir. 1996). Thus, in determining whether incorporated subject matter satisfies the disclosure-dedication rule standards set forth in Johnson & Johnston and its progeny, we must look first to the teachings of the host patent. Consistent with Pfizer, the host patent must sufficiently inform one of ordinary skill that the incorporated document contains subject matter that is an alternative to a claim limitation. 429 F.3d at 1379.

If it does, the inquiry then shifts to the incorporated document to assess whether 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.” PSC Computer Prods., 355 F.3d at 1360.
Here, the ’316 patent’s discussion of the incorporated ’338 patent does not sufficiently identify to one of ordi- nary skill that the incorporated patent contains subject matter that is an alternative to the claimed controller. To the contrary, in discussing the parent ’579 application, the ’316 patent speaks only in general terms: “Optimized erase implementations have been disclosed in two copend- ing U.S. patent applications,” ’316 patent col.6 ll.3-4; and “Optimized implementations of write operation for Flash EEprom device have been disclosed in two previously cited co-pending U.S. applications . . . ,” id. at col.11 ll.4-6. Such cursory discussion does not sufficiently provide notice to one of ordinary skill that the incorporated ’338 patent contains subject matter that is an alternative to the claimed controller, as required by Pfizer. Conse- quently, we conclude that the district court erred as a matter of law in finding that the ’316 patent dedicated SanDisk’s proposed equivalent to the public.