In PSC Computer Products, Inc., v. Foxconn Int'l, Inc. et al., No. 03-1089 (Fed. Cir., January 20, 2004), the federal circuit affirmed a grant of summary judgment of non-infringement of PSC's U.S. Patent No. 6,061,239, which describes an invention for securing a heat sink to a chip using a cam-type retainer clip.
PSC sued Foxconn for infringement under the doctrine of equivalents, acknowledging that Foxconn's clip did not literally infringe the '239 patent because Claim 1 encompassed clips containing "an elongated, resilient metal strap," and Foxconn's clip was made of plastic,. Foxconn, in turn, argued that PSC dedicated the accused equivalent plastic clips to the public, and moved for summary judgment of non-infringement on that ground.
Applying the rule of 'disclosed but unclaimed subject matter articulated' in Johnson & Johnston Associates v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc), the district court relied on language in the specification that "[o]ther prior art devices use molded plastic and/or metal parts that must be cast or forged which again are more expensive metal forming operations" in concluding that the use of plastic as a clip material had been dedicated to the public and could not be recaptured through the doctrine of equivalents.
On appeal, PSC attempted to distinguish Johnson and similar cases on the basis that the specification in those cases was both clear and precise as to the nature of the disclosed but unclaimed subject matter, wherein its '239 patent did not clearly disclaim the use of plastic material for clips.
Expanding the scope of Johnson, the federal circuit found a bar to the application of the doctrine of equivalents where the accused infringing equivalent is part of unclaimed but only generally disclosed matter in the patent:
We thus hold that if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public. This 'disclosure-dedication' rule does not mean that any generic reference in a written specification necessarily dedicates all members of that particular genus to the public. 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.
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