Sandisk Corp. v. Kingston Technology Co., Inc.
695 F.3d 1348
| Fed. Cir. | 2012Background
- SanDisk sued Kingston for infringement of multiple flash memory patents, with district court claim construction and partial summary judgment motions pending.
- SanDisk withdrew infringement claims on the '808, '893 patents and on claims 1,10 of the '842 patent, reducing asserted claims.
- District court granted Kingston summary judgment of non-infringement as to remaining asserted claims; SanDisk appealed.
- Issues include claim constructions for '424, '842, and '316 patents and the proper application of the doctrine of equivalents.
- On appeal, the Federal Circuit limited review to certain live claim constructions and remanded on others, with jurisdiction issues over withdrawn claims.
- The court ultimately vacated some non-infringement rulings, affirmed literal non-infringement on one claim, and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction over withdrawn claims | SanDisk argues appellate review exists for the challenged constructions. | Kingston contends no final judgment exists for withdrawn claims; no jurisdiction. | Jurisdiction limited; live claims only; withdrawn claims not reviewable. |
| Proper scope of 'recording a relative time of programming' ('424) | Block Recording Method disclosed; claims cover relative time by block-level timestamp. | Claims require per-page time; district court correctly narrowed scope. | Claims cover Block Recording Method; not limited to per-page actual times. |
| Interpretation of 'at least a user data portion and an overhead portion' ('842) and ('316) | Indefinite articles 'a'/'an' mean one or more; cannot be limited to a single portion. | Definite references imply singular; doctrine of claim differentiation supports single portion. | Wrongly limited; allows one or more user data/overhead portions. |
| Doctrine of equivalents and disclosure-dedication (claim 20 '424; claim 79 '316) | Equivalents should cover accused products; not dedicated by specification. | Disclosures adequately dedicate subject matter via Johnson & Johnston and incorporated references. | Disclosures do not dedicate the proposed equivalents; doctrine of equivalents viable for '424 claim 20 and '316 claim 79. |
Key Cases Cited
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction reviewed de novo)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction with intrinsic evidence and prosecution history)
- Baldwin Graphic Sys., Inc. v. Siebert, 512 F.3d 1338 (Fed. Cir. 2008) (indefinite articles in open-ended claims; claim differentiation rule)
- Johnson & Johnston Assocs., Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (disclosure-dedication rule)
- Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005) (disclosure-dedication standard; specificity requirement)
- PSC Computer Prods. v. Foxconn International, Inc., 355 F.3d 1353 (Fed. Cir. 2004) (incorporation by reference and dedication analysis)
- Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001) (incorporation by reference effects)