Dedication-Disclosure Rule Requires Disclosing To One Of Ordinary Skill That Equivalent Is An Alternative To A Claim Limitation

In SanDisk Corp. v. Kingston Technology Co., No. 11-1346 (Fed. Cir. Oct. 9, 2012), the Federal Circuit reversed two of the district court's claim constructions as improperly narrow. The Court vacated the judgment of noninfringement as to claims containing those terms, but affirmed the judgment of no literal infringement of another claim. The Court also vacated the district court's finding of noninfringement under the DOE and remanded to the district court for further proceedings.

SanDisk Corporation ("SanDisk") owns U.S. Patent Nos. 6,763,424 ("the '424 patent"); 6,757,842 ("the '842 patent"); and 6,149,316 ("the '316 patent"), which are directed to flash memory and, more specifically, to minimizing the wear that results from multiple read/writes of flash memory by identifying pages of data using a combination of logical and physical addressing of the data. A typical flash memory device includes a controller and one or more flash memory chips. Each flash memory chip contains memory cells for storing data. These cells are arranged into pages, and the pages in turn are arranged into blocks. To keep track of data stored in these cells, physical and logical addresses are monitored. SanDisk sued Kingston Technology Co., Inc. and Kingston Technology Corp. (collectively "Kingston") for infringement of five of SanDisk's flash memory patents.

After claim construction, SanDisk voluntarily withdrew its infringement claims based on two patents and withdrew certain claims of the '842 patent. Both parties moved for SJ. The district court granted SanDisk's motion as to SanDisk's claim that Kingston was contributorily infringing claims 20, 24, 28, and 30 of the '424 patent by selling products containing a certain controller. With respect to all remaining asserted claims, the district court found that Kingston was not infringing as a matter of law and ultimately entered judgment in favor of Kingston on those claims. After the district court's SJ order, the parties entered into a Stipulation and Order Dismissing Remaining Claims for Relief ("Stipulation"), whereby SanDisk dismissed without prejudice its remaining infringement claims involving the '424 patent, and Kingston dismissed without prejudice its related invalidity and enforceability counterclaims. SanDisk appealed.

"Whether a person of ordinary skill ultimately could employ the disclosures of the patent to implement a purported equivalent does not amount to actually disclosing to one of ordinary...