Unclaimed Matter Must Be Identified as Alternative to Claim Limitation for Dedication to the Public

S. Richard Carden raises an interesting point in the Patently-O Blog on November 28, 2005 with regard to Pfizer, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al (Fed. Cir.; November 22, 2005):

The focus of Ranbaxy’s [later Teva] Doctrine of Equivalents argument was that Warner-Lambert [later Pfizer] had explicitly dedicated microcrystalline cellulose to the public by disclosing it but not claiming it in the ‘450 patent. Both the lower
court and the Circuit stated, however, that the “disclosure-dedication rule” did
not apply in this case because the disclosures of cellulose in the ‘450 patent
were not explicitly set forth as alternatives to any claim element. The Circuit
clarified the disclosure-dedication rule by stating that “the public notice
function of patents suggests that before unclaimed subject matter is deemed to have been dedicated to the public, that unclaimed subject matter must have been identified by the patentee as an alternative to a claim limitation.”

The Circuit further summarily rejected Ranbaxy's argument that
inclusion of microcrystalline cellulose under the DOE would violate the all
limitations rule.