Toro v. White
In Toro Company v. White Consolidated Industries, Inc. No. (Fed. Cir. Sept. 13, 2004), the federal circuit held that a patentee’s subjective intent is irrelevant to determining whether unclaimed subject matter has been disclosed in the specification and therefore dedicated to the public. Additionally, the federal circuit held that, in order to implicate the disclosure-dedication rule, the disclosure of the unclaimed subject matter need only be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed (i.e., the disclosure need not comply with the requirements of 35 U.S.C. §112).
Toro’s ‘528 patent is directed to a convertible vacuum-blower with a removable cover having an attached restriction ring. Placement of the restriction ring over the air inlet of the vacuum-blower reduces the diameter of the air intake opening and thereby increases the power of the blower. While the ‘528 patent disclosed both a replaceable ring and a unitary cover/ring structure, the district court construed Claim 16 as covering only a “restriction ring . . . permanently affixed to and included as part of the cover.” Replaceable rings were not construed as included within the scope of the claims. Under the “disclosure-dedication” rule of Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002), subject matter that is disclosed in a patent but unclaimed is dedicated to the public. Accordingly, the district court held Toro was barred from asserting that White’s replaceable ring infringed the ’528 patent under the doctrine of equivalents.
On appeal, Toro argued its failure to claim a cover with a replaceable ring was wholly unintentional and that, as a result, the disclosure-dedication rule should not apply as a matter of law. But the federal circuit was unpersuaded, stating “[w]e hold, as a matter of law, that intent is not part of the Johnson & Johnston disclosure-dedication analysis.” Accordingly, Toro could not prevail as a matter of law based on its argument that it neither failed to claim nor deliberately leave unclaimed the structure of White’s device.
The federal circuit also rejected Toro’s argument that the ‘528 patent disclosure of a replaceable ring was insufficient to enable one of ordinary skill to make and use such a replaceable ring, or show possession of a replaceable ring by the inventor. According to the court, the level of disclosure needed to implicate the disclosure-dedication rule was not the same as the level of disclosure required under §112 to support claims defining the scope of coverage of an invention. Under the disclosure-dedication rule, “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.”
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Lighting World v. Birchwood
In Lighting World, Inc. v. Birchwood Lighting, Inc., Nos. 03-1534,-1535 (Fed. Cir. Sept. 3, 2004), the federal circuit vacated judgments of no literal infringement of Lighting World’s ‘460 and ‘139 patents based on erroneous claim constructions, and held that a party is required as part of its proof of infringement under the doctrine of equivalents to present evidence as to the level of ordinary skill in the art, regardless of whether equivalence is determined by the “function-way-result” test or the “insubstantial differences” test.
At issue was the construction of “connector assembly” in Lighting World’s ‘460 patent and “a plurality of lamp supports mounted on the upper surface of said support member for engaging and supporting said fluorescent lamps adjacent their non-socket ends” in its ‘139 patent, both directed to commercial lighting fixtures. The district court construed “connector assembly” as a means-plus-function claim under § 112, ¶6, and ruled Birchwood did not literally infringe the ‘460 patent. The district court construed the ‘lamp supports’ limitation in the ‘139 patent as requiring that the lamps be supported from below, i.e., against the force of gravity, and ruled in favor of Birchwood on infringement.
On appeal, the federal circuit held that the district court erroneously construed claim 1 of the ‘460 patent as a means-plus-function claim, because the term “connector,” as evidenced by dictionary definitions, had a reasonably well-understood meaning by persons of ordinary skill as a name for structure, even though “connector assembly” did not bring to mind a particular structure, and the structure was defined in terms of the function it performed. In addition, the written description of the ‘460 patent was clear that “connector assembly” was used therein as the name for a structure. For these reasons, the presumption flowing from the absence of the term “means” was not overcome. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318-19 (Fed. Cir. 1999).
The federal circuit also disagreed that that the claimed lamp supports were limited to those providing support from below, i.e., those that would work only if the lamps were oriented toward the ceiling and that would support the lamp against falling down into the socket end of an adjacent lamp. The ordinary meaning of the terms “supporting and engaging” were not limited to support or engagement from below. The failure of the specification to not include figures depicting support and engagement from other orientations was not sufficient to limit the claim language to the particular orientation depicted in the figures.
Finally, the federal circuit sustained the district court’s finding of no infringement under the doctrine of equivalents, because Lighting World failed to present evidence as to the level of ordinary skill in the art as part of its proof of infringement under the doctrine of equivalents. Moreover, equivalence must be evaluated from the perspective of one of ordinary skill in the art whether measured by the “function-way-result” test or by the “insubstantial differences” test.
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