Intent and Enablement Not Required for Disclosure-Dedication under D.O.E.

In affirming that district courts summary judgement on non-infringement for disclosure dedication, the CAFC held in Toro v. White Consolidated Indus. that "that intent is not part of the Johnson & Johnston disclosure-dedication analysis." Furthermore, "the disclosure-dedication rule does not impose a §112 requirement on the disclosed but unclaimed subject matter.

In Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en banc), the Federal Cricuit held that

"when a patent drafter discloses but declines to claim subject matter . . . this action dedicates that unclaimed subject matter to the public. Application of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would "conflict with the primacy of the claims in defining the scope of the patentee’s exclusive right."

For the patent at issue in that case, the specification described aluminum as the preferred material for a substrate, and further remarked that "other metals, such as stainless steel or nickel alloys, may be used." However, the claims recited only aluminum. The CAFC held that even though steel substrates performed the exact same function as aluminum substrates, and even though the specification did not expressly disclaim or disavow steel substrates, the patentee could not invoke the doctrine of equivalents to recapture the use of steel substrates, which were disclosed but not claimed.

In Toro v. White Consolidated, the CAFC began by expalining that the disclosure-dedication rule limits application of the doctrine of equivalents, much in the same way as prosecution history estoppel. Under both doctrines, resort to the doctrine of equivalents is precluded based on actions of the patentee during prosecution evincing a surrender or dedication of subject matter. The Fedreral Circuit therefore concluded that both the dedication-disclosure rule and prosecution history estoppel should be analyzed under the same de novo standard of review for questions of law.



With regard to the facts, the CAFC noted the district court's determination that, while the patent specification discloses both a replaceable ring and a unitary cover/ring structure 76, the claim covered only "means for increasing the pressure" that is "permanently affixed to and included as part of the cover." For this reason, the district court correctly concluded that Toro was barred from asserting that White’s replaceable ring infringed the claim under the doctrine of equivalents.

Toro unsuccessfully argued that it did not intend to leave a cover with a replaceable ring unclaimed, and therefore should be permitted to assert infringement under the doctrine of equivalents. Toro also argued that, even if the unintentional failure to claim an embodiment does not avoid the disclosure-dedication rule, the level of disclosure of a replaceable ring in the ’528 patent was insufficient, as a matter of law, to trigger the disclosure-dedication rule. Toro's challenges based upon lack of intent and enablement for the disclosed, but not claimed, material were therefore rejected by the CAFC.