History of the Dedication Rule

The rule traces its origin to a more-than-a-century-old Supreme Court decision in Miller v. Bridgeport Brass Co., 104 U.S. 350 (1881).  The Miller case involved a patent for a safety lamp without chimney, with two vertically stacked domes above a perforated cap, through which the vapor and wick tubes were extended.  Many years later, the patent owner filed for a reissue, claiming another embodiment of the safety lamp (which was disclosed, but not claimed in the original patent), the latter embodiment having a single dome and a chimney above it.  Noting that the claim to the embodiment with a single dome and a chimney was not omitted from the original patent by mistake, the Supreme Court held that "the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed." Id. at 352. 

Seventy years later, the Supreme Court again addressed the issue of dedication in the context of application of the doctrine of equivalents in Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605 (1950), which involved claims covering a welding flux, requiring, inter alia, a combination of alkaline earth metal silicates.  The accused product utilized silicate of manganese, which is not an earth metal. The manganese, however, was disclosed in the specification, but not recited in the asserted claims. The Court held the patent infringed under the doctrine of equivalents, and rejected dissent's argument under Miller that the patentee dedicated the use of silicate of manganese to the public by disclosing manganese as a possible substitute in the specification and failing to claim it.     

Recent Federal Circuit Decisions

The Federal Circuit first addressed the Dedication Rule in Maxwell v. Baker, 86 F.3d 1098 (Fed. Cir. 1996), which applied this doctrine to a patent covering a system for fastening together pairs of shoes that don't have eyelets.  The patent disclosed, but did not claim, an alternative embodiment wherein the fastening tab was stitched into the lining seam of the shoe. The patentee sued for infringement under the doctrine of equivalents, and the infringer invoked the Dedication Rule under Miller as a defense. The Federal Circuit, in an opinion authored by Judge Lourie, reversed the finding of infringement, and held that the alternative (unclaimed) embodiment was dedicated to the public.  Judge Lourie distinguished the Supreme Court's holding in Graver Tank based on the fact that certain claims in that patent were broad enough to cover the use of manganese silicate, even though they were not at issue in Graver Tank.  Their coverage by the unasserted patent claims, however, was described by the Federal Circuit as an indication not to dedicate the use of manganese silicate to the public.  Id. at 1107-08. 
  
The rationale for adherence to the Rule of Dedication in Maxwell, and in later decisions that followed Maxwell, is to ensure the following: (1) that patent claims provide clear and explicit notice of the actual scope of the patented invention; and (2) that the public is protected against "back-door patenting," whereby a patentee quickly secures a narrowly drafted claim and avoids examination by the Patent Office of a broadly disclosed, but unclaimed, subject matter, and then recaptures this unclaimed subject matter as an equivalent during litigation.  The conflict between Maxwell and the earlier Supreme Court decisions led to a dispute within the Federal Circuit. Less than two years after Maxwell, the Federal Circuit refused to apply the Dedication Rule in YBM Magnex, Inc. v. Intern'l Trade Com'n, 145 F.3d 1317 (Fed. Cir. 1998) (Judge Newman), and limited holding in Maxwell to its facts.  Id. at 1319.  A few year later, in Johnson & Johnston Associates, Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002), the Federal Circuit resolved the dispute between Judges Lourie and Newman in favor of application of the Dedication Rule to the unclaimed, but disclosed, subject matter. The claims in Johnson & Johnston were directed to manufacturing of printed circuit boards, and included an aluminum substrate to which a copper foil could be attached in order to permit manual handling during manufacture.  The specification stated that other metals could be used instead of aluminum, and listed  stainless steel as a possible alternative.  The accused product utilized stainless steel instead of aluminum.  The Federal Circuit held en banc that the disclosure of stainless steel (without claiming it) dedicated it to the public.  The court also noted that the applicant should bear the responsibility for presenting broad claims that cover alternative embodiments, and should also bear the risk of forfeiture for failure to do so in the patent.  Id. at 1052.  This decision effectively overturned YBM Magnex, and reinstated the precedent set forth in Maxwell.                         

The applicability of the Dedication Rule as a limitation on the scope of the doctrine of equivalents was also  recognized and extended even further by the Federal Circuit in PSC Computer Prod., Inc. v. Foxconn Intern'l, Inc., 355 F.3d 1353 (Fed. Cir.  2004).  In this recent decision, the patent for a heat sink assembly recited an "elongated, resilient metal strap" as a claim element, which was argued to cover a plastic strap of the accused product under the doctrine of equivalents.  Id. at 1355-56.  Unlike Maxwell and Johnson & Johnston, the specification in PSC did not recite multiple embodiments, but described in the background of the invention that "other prior art devices use molded plastic and/or metal parts that must be cast or forged which again are more expensive metal forming operations."  Id. at 1355.  It was held that this disclosure meant that use of non-metalic straps was dedicated to the public, and that the patentee could not rely on the doctrine of equivalents to extend the scope of its patent claims to include plastic.

Impact on Business Decisions and Prosecution Practice