(1) The general rule is that the use of the indefinite articles “a” or “an” in open-ended claims containing the transitional phrase “comprising” means “one or more,” unless “the language of the claims themselves, the specification, or the prosecution history necessitate[s] a departure from the rule.” The later use of “the” and “said” to refer back to an earlier claim term does not limit that claim term to the singular. (2) Be careful what you disclose (even via incorporation) but don’t claim. Even under the doctrine of equivalents, a patentee can still be found to have disclaimed an equivalent by disclosing it in the specification (the disclosure-dedication rule). “[W]hen a patent drafter discloses but declines to claim subject matter, … this action dedicates that unclaimed subject matter to the public.”
Background / Facts: The patents-in-suit all relate to various aspects of flash memory, which is the type of Electrically Erasable Programmable Read-Only Memory (“EEPROM”) used, for example, in USB “thumb drives,” computers, smart phones, and mp3 players. The asserted claims relate specifically to various methods and systems for managing the data in the flash memory system, including methods for reducing the wear and tear on the flash memory cells caused by repeated erase/write cycles. There were two particular issues that I found instructive for prosecution, relating to both claim and specification drafting.
Issue(s): (1) Whether the claimed memory cells within individual sectors with at least “a user data and an overhead data portion” are limited to a single user data and a single overhead portion. (2) Whether SanDisk’s proposed equivalent to the “programming … a logical page address limitation” was dedicated to the public by being mentioned in a document incorporated by reference into the specification.
Holding(s): (1) No. Despite the claims’ later references to “the” user data portion and overhead portion, the original use of the indefinite articles “a” and “an,” under traditional claim construction rules, cover “one or more,” not only one. In this case, the intrinsic evidence does not demonstrate an intention to exclude multiple user data portions or overhead portions from the claims’ scope. (2) No. Nothing in the specification refers to actually using an indication in the address that the block is sequentially programmed combined with programming a logical block address as an alternative to “programming … a logical page address.” 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 skill that equivalent “as an alternative to a claim limitation.”