The disclosure-dedication rule does not require that the specification explicitly label which embodiments are “alternatives” to bar otherwise apparent alternatives from infringement under the doctrine of equivalents. Here, for example, even though the specification did not label one-piece and two-piece containers as “alternatives,” one-piece containers were found to be excluded from equivalent protection because the specification nevertheless made clear that certain claim elements were exclusive to the two-piece design. “The requirement that the patent must identify the dedicated embodiment as an alternative to a claimed embodiment is … not, as [the patentee] suggests, one of form requiring us to identify some language specifically stating that an embodiment is an ‘alternative.’” It may therefore be best to go out of your way to avoid characterizing different aspects as being alternatives to one another.
Background / Facts: The patents on appeal here from inter partes review proceedings at the PTO are directed to watertight containers for packaging consumer goods. The specification describes two different types of containers, including a two-piece container with a separable “upper housing portion” and a one-piece container without a separable “upper housing portion.” All asserted claims are directed to the embodiment with the separable “upper housing portion.”
Issue(s): Whether the disclosure-dedication doctrine bars one-piece containers from also infringing under the doctrine of equivalents, even though the specification does not explicitly state that the one-piece embodiment is an “alternative” to the two-piece embodiment.
Holding(s): Yes. “The requirement that the patent must identify the dedicated embodiment as an alternative to a claimed embodiment is … not, as [the patentee] suggests, one of form requiring us to identify some language specifically stating that an embodiment is an ‘alternative.’ If that were the case, an artful drafter could avoid describing embodiments as alternatives and make the patent immune to the disclosure-dedication doctrine. Instead, the requirement is one of substance where we determine from the specification’s disclosure whether one of ordinary skill would have come to the conclusion that the inventor has identified the unclaimed embodiment as an alternative to the claimed embodiment. [] Here, one of skill in the art would understand from the specification that the inventor contemplated that the one-piece and two-piece designs were alternative ways to construct a container.”