The Dedication Rule's Effect on Business Strategy

While the Federal Circuit's direct assault on the applicability and scope of the doctrine of equivalents may have been set back by the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002), the so-called Dedication Rule continues to limit the scope of equivalents under some circumstances. This controversial rule deems any subject matter that is disclosed in the specification, but falls outside the literal scope of the claims, to be dedicated to the public. This judicially created doctrine effectively denies patent protection, even under the doctrine of equivalents, to the subject matter that is disclosed, but left unclaimed, in the patent. This rule has been criticized both from legal and practical perspectives, and continued adherence to this rule could significantly impact the business policies and prosecution decisions of many patentees.

History of the Dedication Rule

The rule traces its origin to a more-than-a-century-old Supreme Court decision, Miller v. Bridgeport Brass Co., 104 U.S. 350 (1881). The Miller case involved a patent for a safety lamp without chimney, with two vertically stacked domes above a perforated cap, through which the vapor and wick tubes were extended. Many years later, the patent owner filed for a reissue, claiming another embodiment of the safety lamp (which was disclosed, but not claimed in the original patent), the latter embodiment having a single dome and a chimney above it. Noting that the claim to the embodiment with a single dome and a chimney was not omitted from the original patent by mistake, the Supreme Court held that “the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed.” Id. at 352.

Seventy years later, the Supreme Court again addressed the issue of dedication in the context of the doctrine of equivalents in Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605 (1950), which involved claims covering a welding flux, requiring, inter alia, a combination of alkaline earth metal silicates. The accused product utilized silicate of manganese, which is not an earth metal. The manganese, however, was disclosed in the specification, but not recited in the asserted claims. The Court held that the patent infringed under the doctrine of equivalents, and rejected the dissent's argument under Miller that the patentee dedicated the use of silicate of manganese to the public by disclosing manganese as a possible substitute in the specification and failing to claim it.

Recent Federal Circuit Decisions

The Federal Circuit first addressed the Dedication Rule in Maxwell v. Baker, 86 F.3d 1098 (Fed. Cir. 1996), which applied this doctrine to a patent covering a system for fastening together pairs of shoes that don't have eyelets. The patent disclosed, but did not claim, an alternative embodiment wherein the fastening tab was stitched into the lining seam of the shoe. The patentee sued for infringement under the doctrine of equivalents, and the infringer invoked the Dedication Rule under Miller as a defense. The Federal Circuit, in an opinion authored by Judge Alan D. Lourie, reversed the finding of infringement, and held that the alternative (unclaimed) embodiment was dedicated to the public. Judge Lourie distinguished the Supreme Court's holding in Graver Tank based on the fact that certain claims in that patent were broad enough to cover the use of manganese silicate, even though they were not at issue in Graver Tank. Their coverage by the unasserted patent claims, however, was described by the Federal Circuit as an indication of an intent not to dedicate the use of manganese silicate to the public. Id. at 1107-08.

The rationale for adherence to the Rule of Dedication in Maxwell, and in later decisions that followed Maxwell, is to ensure the following: 1) that patent claims provide clear and explicit notice of the actual scope of the patented invention; and 2) that the public is protected against “back-door patenting,” whereby a patentee quickly secures a narrowly drafted claim and avoids examination by the Patent Office of a broadly disclosed, but unclaimed, subject matter, and then recaptures this unclaimed subject matter as an equivalent during litigation. The conflict between Maxwell and the earlier Supreme Court decisions led to a dispute within the Federal Circuit. Less than 2 years after Maxwell, the Federal Circuit refused to apply the Dedication Rule in YBM Magnex, Inc. v. Intern'l Trade Com'n, 145 F.3d 1317 (Fed. Cir. 1998) (Judge Pauline Newman), and limited the holding in Maxwell to its facts. Id. at 1319. A few years later, in Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002), the Federal Circuit resolved the dispute between Judges Lourie and Newman in favor of application of the Dedication Rule to the unclaimed, but disclosed, subject matter. The claims in Johnson & Johnston were directed to manufacturing of printed circuit boards, and included an aluminum substrate to which a copper foil could be attached in order to permit manual handling during manufacture. The specification stated that other metals could be used instead of aluminum, and listed stainless steel as a possible alternative. The accused product utilized stainless steel instead of aluminum. The Federal Circuit held en banc that the disclosure of stainless steel (without claiming it) dedicated it to the public. The court also noted that the applicant should bear the responsibility for presenting broad claims that cover alternative embodiments, and should also bear the risk of forfeiture for failure to do so in the patent. Id. at 1052. This decision effectively overturned YBM Magnex, and reinstated the precedent set forth in Maxwell.

The applicability of the Dedication Rule as a limitation on the scope of the doctrine of equivalents was also recognized and further extended by the Federal Circuit in PSC Computer Prod., Inc. v. Foxconn Intern'l, Inc., 355 F.3d 1353 (Fed. Cir. 2004). In this recent decision, the patent for a heat sink assembly recited an “elongated, resilient metal strap” as a claim element, which was argued to cover a plastic strap of the accused product under the doctrine of equivalents. Id. at 1355-56. Unlike Maxwell and Johnson & Johnston, the specification in PSC did not recite multiple embodiments, but described in the background of the invention that “other prior art devices use molded plastic and/or metal parts that must be cast or forged which again are more expensive metal forming operations.” Id. at 1356. It was held that this disclosure meant that use of non-metallic straps was dedicated to the public, and that the patentee could not rely on the doctrine of equivalents to extend the scope of its patent claims to include plastic.

Impact on Business Decisions and Prosecution Practice

The Dedication Rule and the Federal Circuit's adherence to it require that patentees re-evaluate their business strategy and patent prosecution practice. First, the patentee and his or her attorney must devote significantly more time to ensuring that the submitted patent claims cover not only all the embodiments described in the specification, but also other variants that are described in the background of the invention. Furthermore, this process should be repeated when any significant amendments are made during prosecution, and where some claims are cancelled or narrowed. This poses a significant added burden and additional expenditure for many patent applications, particularly in the biotechnology field, where many different species and groups of species are described in the specification. Second, when there are many different species described in the specification, and it is uncertain whether a genus claim could be secured to cover all these species, it might be preferable to limit the disclosure and rely on the doctrine of equivalents to cover the undisclosed variations. Third, the patentee may elect to cover all the different variations and species as dependent claims. This, however, will also add to the cost of prosecution, and require that more attention be paid to the dependent claims during prosecution. Fourth, it may also be prudent in many circumstances for a patentee to keep a continuing application pending whenever a particular patent is allowed to issue. This at least allows for broader claim coverage (to cover infringing variations) in the continuation in the event that the 2-year deadline for broadening reissue for the issued patent lapses.

Finally, from an alleged infringer's perspective, if a party is accused of patent infringement and is considering modifying the accused product to design around the patent, it may be safer to proceed with a modification that is disclosed, but unclaimed, in the patent as a non-infringing design-around. If the alleged infringer selects an alternative that is not disclosed in the patent specification, it may be open to infringement claims under the doctrine of equivalents, but equivalents is not available to the patentee if the Dedication Rule is held to apply.

While the Federal Circuit's direct assault on the applicability and scope of the doctrine of equivalents may have been set back by the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002), the so-called Dedication Rule continues to limit the scope of equivalents under some circumstances. This controversial rule deems any subject matter that is disclosed in the specification, but falls outside the literal scope of the claims, to be dedicated to the public. This judicially created doctrine effectively denies patent protection, even under the doctrine of equivalents, to the subject matter that is disclosed, but left unclaimed, in the patent. This rule has been criticized both from legal and practical perspectives, and continued adherence to this rule could significantly impact the business policies and prosecution decisions of many patentees.

History of the Dedication Rule

The rule traces its origin to a more-than-a-century-old Supreme Court decision, Miller v. Bridgeport Brass Co., 104 U.S. 350 (1881). The Miller case involved a patent for a safety lamp without chimney, with two vertically stacked domes above a perforated cap, through which the vapor and wick tubes were extended. Many years later, the patent owner filed for a reissue, claiming another embodiment of the safety lamp (which was disclosed, but not claimed in the original patent), the latter embodiment having a single dome and a chimney above it. Noting that the claim to the embodiment with a single dome and a chimney was not omitted from the original patent by mistake, the Supreme Court held that “the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed.” Id. at 352.

Seventy years later, the Supreme Court again addressed the issue of dedication in the context of the doctrine of equivalents in Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605 (1950), which involved claims covering a welding flux, requiring, inter alia , a combination of alkaline earth metal silicates. The accused product utilized silicate of manganese, which is not an earth metal. The manganese, however, was disclosed in the specification, but not recited in the asserted claims. The Court held that the patent infringed under the doctrine of equivalents, and rejected the dissent's argument under Miller that the patentee dedicated the use of silicate of manganese to the public by disclosing manganese as a possible substitute in the specification and failing to claim it.

Recent Federal Circuit Decisions

The Federal Circuit first addressed the Dedication Rule in Maxwell v. Baker , 86 F.3d 1098 (Fed. Cir. 1996), which applied this doctrine to a patent covering a system for fastening together pairs of shoes that don't have eyelets. The patent disclosed, but did not claim, an alternative embodiment wherein the fastening tab was stitched into the lining seam of the shoe. The patentee sued for infringement under the doctrine of equivalents, and the infringer invoked the Dedication Rule under Miller as a defense. The Federal Circuit, in an opinion authored by Judge Alan D. Lourie, reversed the finding of infringement, and held that the alternative (unclaimed) embodiment was dedicated to the public. Judge Lourie distinguished the Supreme Court's holding in Graver Tank based on the fact that certain claims in that patent were broad enough to cover the use of manganese silicate, even though they were not at issue in Graver Tank. Their coverage by the unasserted patent claims, however, was described by the Federal Circuit as an indication of an intent not to dedicate the use of manganese silicate to the public. Id. at 1107-08.

The rationale for adherence to the Rule of Dedication in Maxwell, and in later decisions that followed Maxwell, is to ensure the following: 1) that patent claims provide clear and explicit notice of the actual scope of the patented invention; and 2) that the public is protected against “back-door patenting,” whereby a patentee quickly secures a narrowly drafted claim and avoids examination by the Patent Office of a broadly disclosed, but unclaimed, subject matter, and then recaptures this unclaimed subject matter as an equivalent during litigation. The conflict between Maxwell and the earlier Supreme Court decisions led to a dispute within the Federal Circuit. Less than 2 years after Maxwell, the Federal Circuit refused to apply the Dedication Rule in YBM Magnex, Inc. v. Intern'l Trade Com'n , 145 F.3d 1317 (Fed. Cir. 1998) (Judge Pauline Newman), and limited the holding in Maxwell to its facts. Id. at 1319. A few years later, in Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002), the Federal Circuit resolved the dispute between Judges Lourie and Newman in favor of application of the Dedication Rule to the unclaimed, but disclosed, subject matter. The claims in Johnson & Johnston were directed to manufacturing of printed circuit boards, and included an aluminum substrate to which a copper foil could be attached in order to permit manual handling during manufacture. The specification stated that other metals could be used instead of aluminum, and listed stainless steel as a possible alternative. The accused product utilized stainless steel instead of aluminum. The Federal Circuit held en banc that the disclosure of stainless steel (without claiming it) dedicated it to the public. The court also noted that the applicant should bear the responsibility for presenting broad claims that cover alternative embodiments, and should also bear the risk of forfeiture for failure to do so in the patent. Id. at 1052. This decision effectively overturned YBM Magnex, and reinstated the precedent set forth in Maxwell.

The applicability of the Dedication Rule as a limitation on the scope of the doctrine of equivalents was also recognized and further extended by the Federal Circuit in PSC Computer Prod., Inc. v. Foxconn Intern'l, Inc., 355 F.3d 1353 (Fed. Cir. 2004). In this recent decision, the patent for a heat sink assembly recited an “elongated, resilient metal strap” as a claim element, which was argued to cover a plastic strap of the accused product under the doctrine of equivalents. Id. at 1355-56. Unlike Maxwell and Johnson & Johnston, the specification in PSC did not recite multiple embodiments, but described in the background of the invention that “other prior art devices use molded plastic and/or metal parts that must be cast or forged which again are more expensive metal forming operations.” Id. at 1356. It was held that this disclosure meant that use of non-metallic straps was dedicated to the public, and that the patentee could not rely on the doctrine of equivalents to extend the scope of its patent claims to include plastic.

Impact on Business Decisions and Prosecution Practice

The Dedication Rule and the Federal Circuit's adherence to it require that patentees re-evaluate their business strategy and patent prosecution practice. First, the patentee and his or her attorney must devote significantly more time to ensuring that the submitted patent claims cover not only all the embodiments described in the specification, but also other variants that are described in the background of the invention. Furthermore, this process should be repeated when any significant amendments are made during prosecution, and where some claims are cancelled or narrowed. This poses a significant added burden and additional expenditure for many patent applications, particularly in the biotechnology field, where many different species and groups of species are described in the specification. Second, when there are many different species described in the specification, and it is uncertain whether a genus claim could be secured to cover all these species, it might be preferable to limit the disclosure and rely on the doctrine of equivalents to cover the undisclosed variations. Third, the patentee may elect to cover all the different variations and species as dependent claims. This, however, will also add to the cost of prosecution, and require that more attention be paid to the dependent claims during prosecution. Fourth, it may also be prudent in many circumstances for a patentee to keep a continuing application pending whenever a particular patent is allowed to issue. This at least allows for broader claim coverage (to cover infringing variations) in the continuation in the event that the 2-year deadline for broadening reissue for the issued patent lapses.

Finally, from an alleged infringer's perspective, if a party is accused of patent infringement and is considering modifying the accused product to design around the patent, it may be safer to proceed with a modification that is disclosed, but unclaimed, in the patent as a non-infringing design-around. If the alleged infringer selects an alternative that is not disclosed in the patent specification, it may be open to infringement claims under the doctrine of equivalents, but equivalents is not available to the patentee if the Dedication Rule is held to apply.