To determine whether matter incorporated by reference into a patent satisfies the disclosure-dedication rule, the host patent must inform one of skill in the art “that the incorporated document contains subject matter that is an alternative to a claim limitation” and the disclosure in the incorporated document must be of such specificity that one of skill in the art “could identify the subject matter that had been disclosed and not claimed.”
The patents at issue covered systems and methods to manage data in flash memory systems and reduce wear and tear on the memory cells. After the district court issued its claim construction order, the patentee withdrew its infringement allegations with respect to certain claims of three of the asserted patents and Both parties filed for summary judgment shortly thereafter. The district court granted the patentee’s motion with respect to its allegations of contributory infringement but granted the alleged infringers’ motion on all of the remaining claims. The patentee challenged the district court’s claim constructions and argued that it erred in entering summary judgment of non-infringement.
The patentee’s challenges to the district court’s non-infringement ruling addressed the application of the disclosure-dedication rule. It argued that the disclosure in the specification did not amount to a dedication because the alleged disclosed embodiment was a figure in another patent that was incorporated by reference into the patent at issue. The Federal Circuit held that to determine whether the incorporated subject matter satisfies the disclosure-dedication rule, the host patent must sufficiently inform one of skill in the art “that the incorporated document contains subject matter that is an alternative to a claim limitation.” The incorporated document must be assessed to determine “whether the disclosure of [the] 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.” The patent at issues did not satisfy the first prong of this analysis and the Federal Circuit overturned the district court’s ruling.
A copy of the opinion can be found here.