Sandisk Corp. v. Kingston Technology Co., Inc. ( 2012 )


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  •   United States Court of Appeals
          for the Federal Circuit
                  __________________________
    
                 SANDISK CORPORATION,
                    Plaintiff-Appellant,
    
                               v.
           KINGSTON TECHNOLOGY CO., INC.
          AND KINGSTON TECHNOLOGY CORP.,
                  Defendants-Appellees.
                  __________________________
    
                          2011-1346
                  __________________________
    
       Appeal from the United States District Court for the
    Western District of Wisconsin in consolidated case nos.
    07-CV-0605 and 07-CV-0607, Senior Judge Barbara B.
    Crabb.
                  __________________________
    
                    Decided: October 9, 2012
                  __________________________
    
       GREGORY A. CASTANIAS, Jones Day, of Washington,
    DC, argued for plaintiff-appellant. With him on the brief
    was DOUGLAS R. COLE, of Columbus, Ohio. Of counsel
    were VICTORIA DORFMAN, of New York, New York, and
    THARAN G. LANIER, of Palo Alto, California.
    
       DAVID M. BARKAN, Fish & Richardson P.C. of Red-
    wood City, California, argued for defendants-appellees.
    SANDISK CORP   v. KINGSTON TECH                          2
    
    
    With him on the brief was DAVID HOFFMAN, of Austin,
    Texas. Of counsel on the brief was CHRISTINE YANG, Law
    Offices of S. J. CHRISTINE YANG, of Fountain Valley,
    California. Of counsel was ALAN D. SMITH, of Boston,
    Massachusetts.
                  __________________________
    
      Before PROST, REYNA, and WALLACH, Circuit Judges.
       Opinion for the court filed by Circuit Judge PROST.
    Opinion concurring-in-part and dissenting-in-part filed by
                     Circuit Judge REYNA.
    
    PROST, Circuit Judge.
    
         SanDisk Corporation (“Sandisk”) sued Kingston
    Technology Co., Inc. and Kingston Technology Corp.
    (collectively “Kingston”) for infringement of U.S. Patent
    Nos. 5,719,808 (“’808 patent”), 6,149,316 (“’316 Patent”),
    6,426,893 (“’893 patent”), 6,757,842 (“’842 patent”), and
    6,763,424 (“’424 patent”). After the district court issued
    its claim construction opinion, SanDisk withdrew its
    infringement claims with respect to the ’808 and ’893
    patents and claims 1, 6, 7, 10, 12, 15, 18, and 20 of the
    ’842 patent. The district court granted Kingston’s motion
    for summary judgment of non-infringement with respect
    to certain asserted claims of the ’842, ’316, and ’424
    patents. SanDisk dismissed its remaining infringement
    claims and has appealed the district court’s judgment.
    For the reasons set forth below, we affirm in part, vacate
    in part, and remand for further proceedings.
    
                          I. BACKGROUND
    
        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
    3                           SANDISK CORP   v. KINGSTON TECH
    
    
    example, in USB “thumb drives,” computers, smart
    phones, and mp3 players. A benefit of flash memory is
    that it is “non-volatile”; in other words, it continues to
    store data even after the power source is removed. A
    thumb drive, for example, retains its saved data after
    being removed from a host computer and can be used to
    transport data from one computer to another.
    
        A typical flash memory device includes one or more
    flash memory integrated circuit chips and a controller.
    Each flash memory chip contains memory cells for storing
    data. The cells are arranged as “pages” with multiple
    pages comprising a “block” of cells.
    
         The flash memory device’s controller accepts com-
    mands from the “host” device (e.g., the computer to which
    the USB thumb drive is attached) and then writes data
    to, or retrieves data from, the memory chip depending on
    the host device’s command. To write and retrieve data,
    the controller must be able to identify where each piece of
    data is located in the system. This tracking of data is
    accomplished through “addressing.”        In general, the
    system uses two types of addresses: “physical” and “logi-
    cal.” The physical address refers to the physical location
    in the system where particular data is stored. The logical
    address is the identifier for a specific piece of data; it
    describes the data without regard to the data’s physical
    location. Because a particular piece of data can change its
    physical location, a logical address may be associated with
    one physical address at one time and another physical
    address at a different time. The controller maps the
    logical address to the correct physical address, allowing
    the flash memory system to provide the correct data to
    the host device.
    SANDISK CORP   v. KINGSTON TECH                            4
    
    
        Unlike typical computer memory, the old data on the
    flash memory cell must be erased every time new data is
    written to the cell. The memory cells are erased an entire
    block at a time, while data is written to the cell one page
    at a time; the erasure of data, therefore, occurs in larger
    segments than the writing of data. These erase/write
    cycles wear down the memory cell until the cell eventually
    no longer reliably stores information. The patents-in-suit
    relate 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.
    
         SanDisk filed two complaints in the U.S. District
    Court for the Western District of Wisconsin against
    Kingston for patent infringement, and the district court
    consolidated the two actions on January 28, 2008. After
    the district court issued its claim construction order,
    SanDisk withdrew its infringement allegations with
    respect to claims 1, 6, 7, 10, 12, 15, 18, and 20 of the ’842
    patent and all asserted claims of the ’893 and ’808 pat-
    ents. Both parties moved for summary judgment. The
    district court granted SanDisk’s motion as to SanDisk’s
    claim that Kingston was contributorily infringing claims
    20, 24, 28, and 30 of the ’424 patent by selling products
    containing a Phison PS3006 controller. With respect to
    all remaining asserted claims, the court found that King-
    ston was not infringing as a matter of law and ultimately
    entered judgment in favor of Kingston on those claims.
    After the district court’s summary judgment order, the
    parties entered into a Stipulation and Order Dismissing
    Remaining Claims for Relief (“Stipulation”), whereby
    SanDisk dismissed without prejudice its remaining in-
    fringement claims involving the ’424 patent, and Kingston
    dismissed without prejudice its related invalidity and
    enforceability counterclaims. J.A. 17754-55. SanDisk
    5                            SANDISK CORP   v. KINGSTON TECH
    
    
    timely appealed, and we have jurisdiction under 28 U.S.C.
    § 1295(a)(1).
    
                          II. DISCUSSION
    
        On appeal, SanDisk argues that the district court
    erred in its construction of the following claim terms:
    “recording a relative time of programming . . .” in claims 1
    and 3 of the ’424 patent; “user data portion” and “over-
    head portion” in claims 1, 10, and 61 of the ’842 patent
    and claim 67 of the ’316 patent; “block characteristic
    information” in claims 1 and 65 of the ’893 patent; and
    “designating a combination[] . . .” in claim 16 of the ’808
    patent. In addition to its claim construction arguments,
    SanDisk further contends that the district court legally
    erred in entering summary judgment of non-infringement
    in favor of Kingston as to claim 20 of the ’424 patent and
    claim 79 of the ’316 patent.
    
        Claim construction is a question of law reviewed de
    novo. Cybor Corp v. FAS Techs., Inc., 
    138 F.3d 1448
    ,
    1454-55 (Fed. Cir. 1998) (en banc). Claim terms generally
    are construed in accordance with the ordinary and cus-
    tomary meaning they would have to one of ordinary skill
    in the art in light of the specification and the prosecution
    history. Phillips v. AWH Corp., 
    415 F.3d 1303
    , 1312-14
    (Fed. Cir. 2005) (en banc).
    
         We review the district court’s grant of summary
    judgment de novo, drawing all reasonable inferences in
    favor of the nonmovant. Anderson v. Liberty Lobby, Inc.,
    
    477 U.S. 242
    , 255 (1986). Summary judgment is appro-
    priate “if the movant shows that there is no genuine
    dispute as to any material fact and the movant is entitled
    to judgment as a matter of law.” Fed. R. Civ. P. 56(a).
    SANDISK CORP   v. KINGSTON TECH                            6
    
    
                       A. Claim Construction
    
         As an initial matter, Kingston argues that we should
    not address certain claim construction issues presented
    by SanDisk because either we lack jurisdiction to review
    the district court’s construction or SanDisk waived its
    right to advance its proposed construction on appeal.
    First, Kingston contends that we lack jurisdiction to
    review the district court’s claim constructions related to
    claims 1 and 65 of the ’893 patent, claim 16 of the ’808
    patent, and claims 1 and 10 of the ’842 patent because
    SanDisk voluntarily withdrew those claims from the
    litigation without the parties stipulating to a judgment of
    non-infringement; thus, Kingston argues, there is no
    judgment for this court to review. We agree.
    
        After the district court entered its claim construction
    order, SanDisk informed Kingston that it was no longer
    pursuing these claims. The district court never entered a
    separate order dismissing these claims, but it acknowl-
    edged in its summary judgment opinion that SanDisk had
    withdrawn them. J.A. 40. We, therefore, treat SanDisk’s
    withdrawal of the claims as being akin to either a Federal
    Rule of Civil Procedure 15 amendment to the complaint,
    see Gronholz v. Sears, Roebuck & Co., 
    836 F.2d 515
    , 518
    (Fed. Cir. 1987) (“[A] plaintiff’s motion to dismiss a single
    claim of a multi-count complaint is properly treated as an
    amendment under . . . [Rule] 15.”), or a Rule 41(a) volun-
    tary dismissal of claims without prejudice, see Nilssen v.
    Motorola, Inc., 
    203 F.3d 782
    , 784 (Fed. Cir. 2000) (“In
    many instances the procedure for, and effect of, an
    amendment will be the same as a voluntary dismissal
    because of the similarities between the governing rules.”)
    (internal quotations and citations omitted). Regardless of
    how we characterize the withdrawal, these claims are no
    7                            SANDISK CORP   v. KINGSTON TECH
    
    
    longer at issue, and we accordingly have no final judg-
    ment before us with respect to these claims to review.
    
        Our jurisdiction, however, is generally limited to final
    judgments: “Under the ‘final judgment rule,’ parties may
    only appeal a ‘final decision of a district court.’” Spread
    Spectrum Screening L.L.C. v. Eastman Kodak Co., 
    657 F.3d 1349
    , 1354 (Fed. Cir. 2011) (quoting 28 U.S.C.
    § 1295(a)(1)). Here, SanDisk voluntarily withdrew the
    ’893 and ’808 patents and claims 1 and 10 of the ’842
    patent from this action, and it does not dispute that the
    district court never entered a stipulated judgment of non-
    infringement with respect to these claims. Thus, these
    claims do not present a current infringement controversy
    before this court. Without such a controversy, we lack
    Article III jurisdiction to decide these issues. See Streck,
    Inc. v. Research & Diagnostics Sys., Inc., 
    665 F.3d 1269
    ,
    1281 (Fed. Cir. 2012) (“It is well-established that, in
    patent cases, the existence of a ‘case or controversy must
    be evaluated on a claim-by-claim basis.’”); Jang v. Boston
    Sci. Corp., 
    532 F.3d 1330
    , 1336 (Fed. Cir. 2008) (resolving
    claim construction issues “that do not actually affect the
    infringement controversy between the parties” would
    result in impermissible advisory opinion because “[t]he
    Supreme Court has explicitly held that Article III does
    not permit the courts to resolve issues when it is not clear
    that the resolution of the question will resolve a concrete
    controversy between interested parties”).
    
        As a result, we reject SanDisk’s contention that the
    district court’s ultimate entry of a final judgment confers
    appellate jurisdiction over these withdrawn claims. To
    the contrary, where, as here, a party’s claim construction
    arguments do not affect the final judgment entered by the
    court, they are not reviewable. See Mass. Inst. of Tech. v.
    Abacus Software, 
    462 F.3d 1344
    , 1350 (Fed. Cir. 2006)
    SANDISK CORP   v. KINGSTON TECH                          8
    
    
    (refusing to address claim construction arguments “perti-
    nent only to dismissed claims of invalidity” because “[a]n
    appeal is not an opportunity to bring before the appellate
    court every ruling with which one or more of the parties
    disagrees without regard to whether the ruling has in any
    way impacted the final judgment”).
    
         Nor does the parties’ Stipulation, relied upon by San-
    Disk, establish our jurisdiction. After the district court
    ruled on the summary judgment motions (and after
    SanDisk withdrew these claims), the parties entered into
    the Stipulation, whereby SanDisk dismissed its “remain-
    ing” infringement claims and Kingston dismissed its
    related validity and unenforceability counterclaims.
    According to SanDisk, the Stipulation’s recognition that
    this court might “reverse[] remand[], or vacate[], in whole
    or in part, the Court’s September 22, 2010 Claim Con-
    struction Order” and that the parties agreed that the
    “Stipulation shall not in any way prejudice any parties’
    [sic] right to appeal this matter in whole or in part, in-
    cluding, but not limited, to an appeal of the Court’s Sep-
    tember 22, 2010 Claim Construction Order,” J.A. 17754-
    55, evinces SanDisk’s “intent to pursue, on appeal, argu-
    ments that those claim-construction rulings were legally
    incorrect,” including any arguments related to the with-
    drawn claims, SanDisk’s Reply Br. 2.
    
        We are not persuaded. First, the Stipulation does not
    change the fact that there is no final judgment with
    respect to the withdrawn claims for us to review. Without
    a final judgment as to the infringement or validity of
    these claims, the court’s claim constructions that impact
    only these withdrawn claims are not properly before us.
    Second, the parties’ agreement that the Stipulation would
    not affect their right to appeal the entire claim construc-
    tion order cannot create a right to appeal where one
    9                              SANDISK CORP   v. KINGSTON TECH
    
    
    otherwise does not exist. See Bender v. Williamsport Area
    School Dist., 
    475 U.S. 534
    , 541 (1986) (“[E]very federal
    appellate court has a special obligation to satisfy itself . . .
    of its own jurisdiction . . . even though the parties are
    prepared to concede it.”) (internal quotation marks and
    citations omitted). Consequently, we conclude that we
    lack jurisdiction to resolve SanDisk’s claim construction
    arguments that impact only the withdrawn claims.
    
         Second, Kingston argues that SanDisk waived its
    right to challenge the district court’s construction of “user
    data portion” and “overhead data portion” in claim 61 of
    the ’842 patent and claim 67 of the ’316 patent because (1)
    the parties never presented these terms to the court for a
    construction, and (2) SanDisk never disputed the court’s
    construction of these terms during summary judgment.
    SanDisk, however, maintains that it did not waive these
    arguments because the district court construed the re-
    lated terms “user data” and “overhead information” in
    claims 1 and 10 of the ’842 patent, and the parties ac-
    cepted that this construction also applied to claim 61 of
    the ’842 patent and claim 67 of the ’316 patent. According
    to Sandisk, Kingston confirmed this understanding when
    it made the following representation to the district court
    in its memorandum in support of its motion for summary
    judgment:
    
        Neither SanDisk nor Defendants presented the is-
        sue of whether claims 61 and 67 were limited to
        only one user data portion and one overhead data
        portion during the claim construction process.
        But as explained below, both parties understood
        those claims to have the same scope as claims 1
        and 10 of the ’842 patent. Indeed, Defendants
        were quite surprised when SanDisk indicated it
        would continue to assert claims 61 and 67, despite
    SANDISK CORP   v. KINGSTON TECH                          10
    
    
       the Court’s clear guidance as to the limited scope
       of these claims imposed by the claim language.
    
    J.A. 7341 n.4 (emphasis added). Moreover, according to
    SanDisk, because it had already presented its claim
    construction positions to the district court during the
    Markman proceedings, it was not required to continue
    challenging the court’s construction during summary
    judgment to preserve its arguments for appeal.
    
        We agree with SanDisk. Based on Kingston’s own
    representations to the district court, the parties assumed
    that the court’s constructions for claims 1 and 10 of the
    ’842 patent would also apply to the related terms in claim
    61 of the ’842 patent and claim 67 of the ’316 patent. We,
    therefore, are not persuaded by Kingston’s argument that
    SanDisk failed to present its claim construction position
    to the district court. Nor was SanDisk required to repeat
    its unsuccessful construction arguments to the district
    court during summary judgment to preserve the issue for
    appeal. See O2 Micro Int’l Ltd. v. Beyond Innovation
    Tech. Co., 
    521 F.3d 1351
    , 1358-59 (Fed. Cir. 2008) (finding
    that party did not waive right to challenge claim con-
    struction on appeal when it had advanced the argument
    during Markman proceedings but did not object to the
    district court’s jury instruction on that claim construc-
    tion).
    
        Accordingly, because we conclude that we lack juris-
    diction over the ’808 and ’893 patents and claims 1 and 10
    of the ’842 patent, we limit our review of the district
    court’s claim constructions to (1) the “recording a relative
    time of programming . . .” limitation in claims 1 and 3 of
    the ’424 patent, and (2) the “at least a user data portion
    and an overhead portion” limitation in claim 61 of the
    ’842 patent and claim 67 of the ’316 patent.
    11                            SANDISK CORP   v. KINGSTON TECH
    
    
    1. “recording a relative time of programming that at least
     one page of new data and the at least one page of super-
              ceded data” (’424 patent, claims 1 & 3)
    
        In the conventional flash EEPROM system, an entire
    block of data is copied to a new block, with the updated
    data replacing the superceded data. The entire old data
    block is then erased. This method caused re-writing of
    the non-updated data with the resulting wear and tear on
    the flash memory cells.
    
        The ’424 patent covers a method for performing “par-
    tial block” updates in flash memory devices. When the
    flash memory system makes minor updates to already
    stored data, such as by changing a few words in a docu-
    ment, it performs a “partial block” update; in other words,
    only part of the data block is updated. The controller
    writes only the pages with the updated data into the new
    block as opposed to rewriting the entire block of data.
    The new data shares a logical address with the super-
    ceded data. The controller reads the data from the blocks,
    identifying those pages that have been superceded by a
    more recently updated page sharing the logical address.
    When the controller reports the data to the host system, it
    substitutes the superceded pages with this updated data.
    
         Claim 1 of the ’424 patent is representative:
    
         1. In a non-volatile memory system having a plu-
         rality of blocks of memory storage elements that
         are individually erasable as a unit and which are
         individually organized into a plurality of pages of
         memory storage elements that are individually
         programmable together, a method of substituting
         new data for superceded data within at least one
         page of one of the plurality of blocks while data in
    SANDISK CORP   v. KINGSTON TECH                           12
    
    
        at least another page of said one block is not re-
        placed, comprising:
    
            programming the new data into at least one
                 page of said one or another of the plural-
                 ity of blocks,
    
            identifying the at least one page of superceded
                 data and the at least one page of new
                 data by a common logical address,
    
            recording a relative time of programming the
                 at least one page of new data and the at
                 least one page of superceded data; and
    
            wherein the at least one page of superceded
                data is less than all the data contained in
                said one block.
    
    ’424 patent col.12 l.60-col.13 l.10 (emphasis added).
    
         The specification teaches two methods for identifying
    the physical page containing the most recent version of
    data with the same logical address. First, the specifica-
    tion discloses writing a time stamp onto each individual
    page that “provides an indication of its time of program-
    ming, at least relative to the time that other pages with
    the same logical address are programmed.” Id. at col.8
    ll.26-40. Second, the specification teaches recording the
    programming time for an entire block, referred to by the
    parties as the “Block Recording Method.” See id. at col.9
    l.40-col.10 l.43. In this method, “the time stamp . . . does
    not need to be stored as part of each page” but “[r]ather, a
    single time stamp can be recorded for each block, either
    as part of the block or elsewhere within the non-volatile
    memory, and is updated each time a page of data is
    written into the block.” Id. at col.9 ll.42-50. Within the
    13                           SANDISK CORP   v. KINGSTON TECH
    
    
    block, the new data is physically stored after the old data
    such that the most recent page with a particular logical
    address is determined by the relative physical order of
    those pages within the block: “Data is then read from
    pages in an order of descending physical address, starting
    from the last page of the most recently updated block
    containing data pages having the same LBN [Logical
    Block Number].” Id. at col.9 ll.50-53.
    
        On appeal, SanDisk challenges the district court’s
    construction of the “recording a relative time of program-
    ming . . .” limitation in claims 1 and 3 of the ’424 patent.
    According to SanDisk, the district court improperly con-
    strued the claims to exclude the “Block Recording
    Method” and further limited the claims during summary
    judgment to require the recording of an actual time.
    Specifically, SanDisk argues, inter alia, that Figures 8
    and 11, along with the specification’s teaching of the
    Block Recording Method, indicate that claims 1 and 3
    encompass this method. In response, Kingston contends
    that the claims need not cover all embodiments in the
    specification particularly where none of the embodiments
    is described as being “preferred.” Kingston maintains
    that the district court’s construction was correct because
    claims 1 and 3 of the ’424 patent explicitly require re-
    cording the time the pages were programmed, as opposed
    to only recording a single time value for the entire block
    as in the Block Recording Method.
    
        We agree with SanDisk that the district court im-
    properly excluded the Block Recording Method from
    claims 1 and 3 of the ’424 patent. First, the claim lan-
    guage supports SanDisk’s broader construction. The
    claims only require “recording a relative time of pro-
    gramming,” not “a time of programming.” The use of
    “relative” is significant: whereas “recording the time of
    SANDISK CORP   v. KINGSTON TECH                           14
    
    
    programming” would suggest that a time of programming
    must be recorded for each page, “recording a relative time
    of programming” merely requires recording some indica-
    tion of the order of programming for those pages sharing
    a logical address. The claims place no limitation on how
    the claimed “recording” occurs.
    
         Turning to the specification, its teachings are consis-
    tent with this interpretation. The specification unambi-
    guously     discloses    two      distinct techniques     for
    “distinguish[ing] the pages containing the superceded
    data from those containing the new, updated version [of
    the data].” ’424 patent col.7 ll.59-60. In the first method,
    a time stamp indicator is associated with each page of
    data; in the second method—the Block Recording
    Method—the time stamp indicator is associated with the
    block, and the physical order of the pages in the block
    identifies the most recently updated data with a particu-
    lar logical address. As quoted above, in this “second
    specification implementation of the inventive technique,”
    “[t]he time stamp . . . does not need to be stored as part of
    each page. Rather, a single time stamp can be recorded
    for each block.” Id. at col.9 ll.40-53.
    
        Figures 8 and 11 of the ’424 patent provide further il-
    lustrations of this second implementation. In Figure 8,
    the relative time of programming the updated and origi-
    nal logical pages 3, 4, and 5 is determined by reading the
    pages in the most recent physical block (PBN1) in reverse
    order, “followed by reading the pages of the original block
    (PBN0) in the same reverse order.” Id. at col.9 ll.56-57.
    After the data in the updated pages—here, logical pages
    3, 4, and 5 on physical pages 0, 1, and 2 of block PBN1—is
    read, “the superceded data in those pages of the original
    block PBN0 that are identified by the same logical page
    15                          SANDISK CORP   v. KINGSTON TECH
    
    
    numbers can be skipped during the reading process.” Id.
    at col.9 ll.58-61.
    
    
    
    
    In describing Figure 8, the specification additionally
    instructs that “[o]nly an identity of those physical blocks
    containing data of a common logical block and the relative
    times that the physical blocks were programmed need to
    be known in order to carry out this efficient reading
    process.” Id. at col.10 ll.3-7.
    
        Similarly, Figure 11 discloses a second update to logi-
    cal page 5 within the same physical block (PBN1) where
    the physical location of the two pages within the block
    identifies the most recently updated page:
    SANDISK CORP   v. KINGSTON TECH                        16
    
    
    
    
        Specifically, in Figure 11, the new physical block
    (PBN1) contains two versions of original page 5 located at
    PBN1 physical page 2 and PBN1 physical page 3. Be-
    cause the data will be read backwards starting from the
    last page of the new block, the user data on PBN1 physi-
    cal page 3 will be read, but the data on PBN1 physical
    page 2 will not: “It will be noted that this example of
    reading pages in a reverse order efficiently sorts out the
    new data pages from the superceded data pages because
    data are written in physical page locations of an erased
    block in order from page 0 on.” Id. at col.10 ll.29-33.
    
         Reading the claims in light of the specification, we
    conclude that the district court erred in finding that
    claims 1 and 3 of the ’424 patent excluded the Block
    Recording Method. Further, to the extent that the dis-
    trict court, during summary judgment, interpreted this
    limitation as requiring the recording of an actual time of
    programming, we agree with SanDisk that such an inter-
    pretation is incorrect. Consistent with our conclusion
    that the claims encompass the Block Recording Method, it
    necessarily follows that the “relative time of program-
    17                            SANDISK CORP   v. KINGSTON TECH
    
    
    ming” can be recorded through non-temporal means such
    as the location of the physical pages within the block or
    the use of a “modulo-N counter” which also is disclosed in
    the specification. 1
    
    2. “at least a user data portion and an overhead portion”
         (’842 patent, claim 61 & ’316 patent, claim 67)
    
        The district court found that the “user data and over-
    head information” limitation in claims 1 and 10 of the
    ’842 patent was “limited to a single user data and a single
    overhead portion.” J.A. 35. During summary judgment,
    the court applied this construction to the related limita-
    tion, “a user data portion and an overhead portion” in
    claim 61 of the ’842 patent and claim 67 of the ’316 pat-
    ent, which, as we concluded above, are before us on ap-
    peal.
    
         Claim 61 of the ’842 patent is representative:
    
         61. A method of operating a memory system with
         a host system that includes a processor, wherein
         the memory system includes one or more inte-
         grated circuit chips individually including an ar-
         ray of non-volatile floating gate memory cells
         partitioned into a plurality of sectors that indi-
         vidually include a distinct group of memory cells
         that are erasable together as a unit, comprising:
    
            1    The specification discloses storing the output
    of a “modulo-N counter” to identify the most recently
    updated page of a specific logical address. As the specifi-
    cation explains, “[w]hen updating the data of a particular
    page . . . the controller first reads the count stored in the
    field 43 of the page whose data are being updated, incre-
    ments the count by some amount, such as one, and then
    writes that incremented count in the new block . . . .” ’424
    patent col.8 ll.45-51.
    SANDISK CORP   v. KINGSTON TECH                          18
    
    
           providing said one or more of the memory in-
                tegrated circuit chips and a memory con-
                troller within a card that is removably
                connectable to the host system said con-
                troller being connectable to said proces-
                sor for controlling operation of the
                memory system when the card is con-
                nected to the host system,
    
           operating memory cells within individual sec-
                tors with at least a user data portion and
                an overhead portion,
    
           causing the controller, in response to receipt
                from the processor of an address in a
                format designating at least one mass
                memory storage block, to designate an
                address of at least one non-volatile mem-
                ory sector that corresponds with said at
                least one mass memory storage block;
    
           either writing user data to, or reading from,
                the user data portion of said at least one
                non-volatile memory sector; and
    
           either writing to, or reading from, said over-
                head portion of said at least one non-
                volatile memory sector, overhead data re-
                lated either to said at least one non-
                volatile memory sector or to data stored
                in the user data portion of said at least
                one non-volatile memory sector.
    
    ’842 patent col.22 l.51-col.23 l.12 (emphases added).
    
        SanDisk argues that the district court improperly fo-
    cused on the claims’ use of the definite articles “the” and
    19                          SANDISK CORP   v. KINGSTON TECH
    
    
    “said” in connection with the user data portion and over-
    head portion without looking at the language of the claim
    as a whole. According to SanDisk, because the claims’
    earlier references to the user data and overhead portions
    use the indefinite articles “a” and “an,” under traditional
    claim construction rules, those terms cover “one or more,”
    not only one. This position, SanDisk contends, is sup-
    ported by several dependent clams that expressly include
    an “only one” user data portion and overhead portion
    limitation. Lastly, SanDisk argues that the specification
    suggests the possibility of multiple user data and over-
    head data portions. In response, Kingston argues that
    the claims’ use of indefinite articles does not assist San-
    Disk because the specification only discloses a single user
    data portion and a single overhead data portion. With
    respect to SanDisk’s claim differentiation argument,
    Kingston contends that the court’s construction does not
    violate the doctrine of claim differentiation because the
    independent claims “allow[] the system to include other
    potential portions of information beside overhead and
    user data.” Kingston’s Resp. Br. 36.
    
        We agree with SanDisk that the court improperly lim-
    ited the claims to only one user data portion and only one
    overhead data portion. In its claim construction opinion,
    the district court determined that “[t]he claim’s reference
    to ‘the user data portion’ and ‘said overhead portion’
    supports the proposed limitation.” J.A. 7. The court also
    emphasized this use of “the” and “said” in concluding that
    “the claim leaves no doubt that it covers a method involv-
    ing only one user data portion and one overhead portion.”
    J.A. 8.
    
       This conclusion is contrary to Baldwin Graphics Sys-
    tems, Inc. v. Siebert, 
    512 F.3d 1338
     (Fed. Cir. 2008). In
    Baldwin, we explained that the later use of “the” and
    SANDISK CORP   v. KINGSTON TECH                             20
    
    
    “said” to refer back to an earlier claim term does not limit
    that claim term to the singular, and we also articulated
    the general rule that the use of the indefinite articles “a”
    or “an” means “one or more”:
    
       [T]his court has repeatedly emphasized that an
       indefinite article “a” or “an” in patent parlance
       carries the meaning of “one or more” in open-
       ended claims containing the transitional phrase
       “comprising.” That “a” or “an” can mean “one or
       more” is best described as a rule, rather than
       merely as a presumption or even a convention.
       The exceptions to this rule are extremely limited: a
       patentee must “evince[] a clear intent” to limit “a”
       or “an” to “one.” The subsequent use of definite ar-
       ticles “the” or “said” in a claim to refer back to the
       same claim term does not change the general plu-
       ral rule, but simply reinvokes that non-singular
       meaning.
    
    Id. at 1342 (second alteration in original) (internal quota-
    tion marks and citations omitted) (emphasis added).
    Further, this general rule applies unless “the language of
    the claims themselves, the specification, or the prosecu-
    tion history necessitate[s] a departure from the rule.” Id.
    at 1342-43. In this case, the intrinsic evidence does not
    demonstrate an intention to exclude multiple user data
    portions or overhead portions from the claims’ scope.
    
        First, the claims recite “at least a user data and an
    overhead data portion.” ’316 patent col.21 ll.40-41; ’842
    patent col.22 ll.64-65. The phrase “at least” suggests that
    the claim covers more than one user data portion and
    overhead portion. See Biagro W. Sales, Inc. v. Grow More,
    Inc., 
    423 F.3d 1296
    , 1304 (Fed. Cir. 2005) (“The phrase ‘at
    least one’ in patent claims typically is construed to mean
    21                            SANDISK CORP   v. KINGSTON TECH
    
    
    ‘one or more.’”). This interpretation further comports
    with the general rule set forth in Baldwin against limit-
    ing claim terms using the indefinite articles “a” and “an”
    to mean “one.” 512 F.3d at 1342-43.
    
        Dependent claims 16 and 67 of the ’842 patent and
    claim 73 of the ’316 patent additionally bolster SanDisk’s
    interpretation. Those claims add the limitation that
    either the individual blocks (claim 16 of the ’842 patent)
    or sectors (claim 67 of the ’842 patent and claim 73 of the
    ’316 patent) “include only one user data portion and only
    one overhead portion.” ’842 patent col.18 ll.7-9, col.24 ll.7-
    9; ’316 patent col.22 ll.14-16. Where, as here, the sole
    difference between the independent claim and the de-
    pendent claims is the limitation that one party is trying to
    read into the independent claim, “the doctrine of claim
    differentiation is at its strongest.” Liebel-Flarsheim Co. v.
    Medrad, Inc., 
    358 F.3d 898
    , 910 (Fed. Cir. 2004); see also
    Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent
    claim that adds a particular limitation gives rise to a
    presumption that the limitation in question is not in the
    independent claim.”).
    
        Although the doctrine creates only a rebuttable pre-
    sumption, see, e.g., Liebel-Flarsheim, 358 F.3d at 910,
    here Kingston has not identified any intrinsic evidence
    that overcomes this presumption and justifies its narrow
    construction. To the contrary, we agree with SanDisk
    that the specification suggests that the precise configura-
    tion of the user data and overhead portions is not fixed:
    
         It is to be understood that the partitioning be-
         tween the user data portion 403 and the spare
         [i.e., overhead] portion 405 need not be rigid. The
         relative size of the various partitioned areas may
         be logically reassigned. Also the grouping of the
    SANDISK CORP   v. KINGSTON TECH                           22
    
    
        various areas is largely for the purpose of discus-
        sion and not necessarily physically so.
    
    ’842 patent col.8 ll.52-57 (emphasis added).
    
         Thus, for the above reasons, we conclude that the dis-
    trict court erred in its construction of the phrase “at least
    a user data portion and an overhead portion” in claim 61
    of the ’842 patent and claim 67 of the ’316 patent. Under
    the correct construction, this claim limitation covers “one
    or more” user data portion and overhead portion.
    
          B. Summary Judgment of Non-Infringement
    
        In addition to SanDisk’s claim construction argu-
    ments, SanDisk raises two challenges to the district
    court’s summary judgment decision.         First, SanDisk
    argues that the district court erred in applying the disclo-
    sure-dedication rule from Johnson & Johnston Associates,
    Inc. v. R.E. Service Co., 
    285 F.3d 1046
     (Fed. Cir. 2002) (en
    banc), in finding that Kingston’s accused products did not
    infringe claim 20 of the ’424 patent under the doctrine of
    equivalents. Second, SanDisk contends that the district
    court erred in finding that the accused products did not
    infringe claim 79 of the ’316 patent either literally or
    under the doctrine of equivalents because they lacked a
    “controller.” This second finding of non-infringement also
    implicates Johnson & Johnston’s disclosure-dedication
    rule. 2
    
            2    On appeal, Kingston has maintained the con-
    fidentiality of the specific design implementations of its
    accused products. To preserve that confidentiality, we
    limit our discussion of the products to counsels’ state-
    ments during oral argument, see Oral Argument 12:20-
    12:27, available at http://www.cafc.uscourts.gov/oral-
    argument-recordings/2011-1346/all (“No kind of block
    23                            SANDISK CORP   v. KINGSTON TECH
    
    
                      1. ’424 Patent, Claim 20
    
         Claim 20 of the ’424 patent recites:
    
         20. In a re-programmable non-volatile memory
         system having a plurality of blocks of memory
         storage elements that are erasable together as a
         unit, the plurality of blocks individually being di-
         vided into a plurality of a given number of pages
         of memory storage elements that are programma-
         ble together, a method of operating the memory
         system, comprising:
    
             programming individual ones of a first plural-
                  ity of said given number of pages in each
                  of at least a first block with original data
                  and a logical page address associated
                  with the original data,
    
             thereafter programming individual ones of a
                  second plurality of a total number of
                  pages less than said given number in a
                  second block with updated data and a
                  logical page address associated with the
                  updated data, wherein the logical page
                  addresses associated with the updated
                  data programmed into the second plural-
                  ity of pages are the same as those associ-
                  ated with the original data programmed
                  into the first plurality of pages, and
    
             thereafter reading and assembling data from
                  the first and second plurality of pages in-
    
    marker alone or in combination with a logical block
    address is in any way disclosed . . . .”), and the non-
    confidential information in the parties’ briefs.
    SANDISK CORP   v. KINGSTON TECH                            24
    
    
                   cluding, for pages having the same logi-
                   cal addresses, selecting the updated data
                   from the pages most recently pro-
                   grammed and omitting use of the origi-
                   nal data from the pages earlier
                   programmed.
    
    ’424 patent col.15 ll.40-64 (emphases added).
    
        Claim 20 claims a method for performing partial block
    updates. In a partial block update, data retains the same
    logical address throughout each update. The controller
    identifies the data sharing a logical page address and
    provides the most updated data with that address to the
    host device. To accomplish this, the logical page address
    must identify a specific logical page within a block. It is
    undisputed that a logical block number, by itself, does not
    identify a logical page address. Instead, to provide a
    logical page address, additional information must be
    added to the logical block number, such as a logical page
    offset.
    
        The parties’ dispute centers on whether the accused
    products contain an equivalent of the “programming . . . a
    logical page address associated with the original data”
    limitation in claim 20. The district court construed a
    “logical page address” as not being limited to a “logical
    block number plus logical offset.” J.A. 37.
    
         During summary judgment, SanDisk argued that an
    indication that the pages within a block are stored se-
    quentially—referred to by SanDisk’s expert as a “Sequen-
    tial Block Marker”—coupled with programming a logical
    block address was equivalent to the “programming . . . a
    logical page address” limitation in claim 20. According to
    SanDisk, when the data is programmed sequentially, the
    25                          SANDISK CORP   v. KINGSTON TECH
    
    
    logical page matches the physical page. SanDisk’s Br. 53.
    For data programmed into physical page 3 of logical block
    6, for example, “[t]he logical page address is necessarily
    logical block 6, logical page 3 because the logical page
    address within the block (i.e., 3) matches the physical
    address of the block.” Id. at 53 n.4. Therefore, in San-
    Disk’s view, knowing both the logical block number and
    that the pages are sequentially stored identifies the
    logical page address. The district court, however, deter-
    mined that SanDisk could not pursue this infringement
    theory, finding that Figure 9 of the ’424 patent disclosed
    this alleged equivalent and thus dedicated it to the public
    under the disclosure-dedication rule set forth in Johnson
    & Johnston.
    
        On appeal, SanDisk argues that the disclosure in the
    specification relied upon by the district court does not
    amount to a dedication under Johnson & Johnston be-
    cause neither Figure 9 relied on by the district court nor
    the remainder of the specification discloses using a Se-
    quential Block Marker in combination with a logical block
    address to identify the logical page address. Instead,
    according to SanDisk, all the disclosed embodiments,
    including Figure 9 reproduced below, show that a logical
    page address includes only (1) a logical block number
    (LBN) and (2) a logical page offset:
    SANDISK CORP   v. KINGSTON TECH                            26
    
    
         In response, Kingston argues that Figures 4, 8, and 9
    in the ’424 patent depict systems in which the logical
    block number is programmed and the blocks are written
    in sequential order, such that the logical page address
    and the physical page address are the same. Kingston
    contends that this information discloses to one of ordinary
    skill SanDisk’s proposed equivalent to the “programming .
    . . a logical page address” limitation.
    
        We agree with Sandisk that its proposed equivalent
    was not dedicated to the public. Under the doctrine of
    equivalents, “a product or process that does not literally
    infringe upon the express terms of a patent claim may
    nonetheless be found to infringe if there is ‘equivalence’
    between the elements of the accused product or process
    and the claimed elements of the patented invention.”
    Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 
    520 U.S. 17
    , 21 (1997). A patentee, however, can disclaim an
    equivalent by disclosing it in the specification. As we held
    in Johnson & Johnston, “[W]hen a patent drafter dis-
    closes but declines to claim subject matter, . . . this action
    dedicates that unclaimed subject matter to the public.”
    285 F.3d at 1054.
    
        Johnson & Johnston’s disclosure-dedication rule is
    not without restriction. In PSC Computer Products v.
    Foxconn International, Inc., 
    355 F.3d 1353
     (Fed. Cir.
    2004), we explained that the rule “does not mean that any
    generic reference in a written specification necessarily
    dedicates all members of that particular genus to the
    public.” Id. at 1360. Rather, “the disclosure must be of
    such specificity that one of ordinary skill in the art could
    identify the subject matter that had been disclosed and
    not claimed.” Id. Additionally, in Pfizer, Inc. v. Teva
    Pharmaceuticals USA, Inc., 
    429 F.3d 1364
     (Fed. Cir.
    2005), this court further clarified that “before unclaimed
    27                           SANDISK CORP    v. KINGSTON TECH
    
    
    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.”   Id. at 1379.     Whether the disclosure-
    dedication rule prevents a patentee from pursuing a
    doctrine of equivalents infringement theory is a question
    of law we review de novo. Id. at 1378.
    
        Here, the disclosures in Figure 9 relied upon by the
    district court and the other teachings in the specification
    cited by Kingston do not satisfy the disclosure-dedication
    rule’s requirements. Figure 9 and the accompanying
    description in the specification teach a logical page ad-
    dress composed of a logical block number and a logical
    page offset. Neither Figure 9 nor any other portion of the
    specification identified by Kingston refers to 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 ulti-
    mately 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.” See Pfizer, 429
    F.3d at 1379. We have considered Kingston’s remaining
    arguments and find they lack merit. Accordingly, we
    conclude that the district court erred in finding that
    SanDisk’s proposed equivalent to the “programming . . . a
    logical page address limitation” was dedicated to the
    public.
    
                      2. ’316 Patent, Claim 79
    
         Claim 79 of the ’316 patent provides in pertinent part:
    SANDISK CORP   v. KINGSTON TECH                            28
    
    
       79. A memory system connectable to a host proc-
       essor to enable the exchange of data therebe-
       tween, and memory system comprising:
    
           an array of non-volatile floating gate memory
                cells partitioned into a plurality of blocks
                of cells that individually store a given
                amount of user data and overhead data,
                wherein the memory cells are individu-
                ally programmable into one of more than
                two distinct threshold level ranges corre-
                sponding to more than one bit of data per
                cell,
    
           a controller connected to the array and re-
               movably connectable to the host through
               an electrical connector, said controller
               including:
    
               an address generator that is respon-
                   sive to receipt of a mass memory
                   storage block address from the
                   host to address a corresponding
                   at least one of the plurality of
                   memory blocks, and
    
               a data transfer control that responds
                   to an instruction from the host to
                   perform a designated one of read-
                   ing user data from, or writing
                   user data to, said at least one ad-
                   dress block, including a data writ-
                   ing circuit that generates at least
                   some of the overhead data associ-
                   ated with at least one of at least
                   one addressed block or user data
    29                           SANDISK CORP   v. KINGSTON TECH
    
    
                    being written therein, and a data
                    reading circuit that reads the
                    overhead data from said at least
                    one addressed block, wherein the
                    data writing circuit programs the
                    individual memory cells into said
                    one or more than two distinct
                    threshold level ranges and the
                    data reading circuit reads one of
                    more than two distinct threshold
                    level ranges form the individual
                    memory cells.
    
    ’316 patent col.22 ll.35-79 (emphases added).
    
        The memory system in claim 79 includes two main
    limitations: (1) an array of non-volatile floating gate
    memory cells and (2) a controller. The controller has both
    an “address generator” and a “data transfer control.”
    Within the data transfer control are a “data writing
    circuit” and a “data reading circuit.” It is undisputed that
    the accused devices contain data writing and data reading
    circuits, but those circuits are located on the flash mem-
    ory chip, not the controller chip. The key issue is whether
    the read and write circuitry in the accused products are
    part of the claimed “controller,” either literally or under
    the doctrine of equivalents, even though the circuitry is
    located on the flash memory chip.
    
        The district court recognized that the circuitry for the
    controller could be located on more than one chip but
    found that the accused products did not literally infringe
    because “[t]here is no evidence that the data writing and
    reading circuitry on the flash memory chips of the accused
    products are otherwise part of the ‘controller.’” J.A. 60.
    With respect to infringement under the doctrine of
    SANDISK CORP   v. KINGSTON TECH                          30
    
    
    equivalents, the district court again applied the disclo-
    sure-dedication rule of Johnson & Johnston, finding that
    the ’316 patent, through the incorporated by reference
    U.S. Patent No. 5,172,338 (“’338 patent”), 3 disclosed but
    did not claim programming and reading that is that is
    regulated on the separate flash memory chip. J.A. 61.
    
         On appeal, SanDisk argues that the district court’s
    literal infringement analysis is irreconcilable with its
    doctrine of equivalents analysis. According to SanDisk, if,
    as the district court found, the ’316 patent discloses
    controller circuitry on the flash memory chip, claim 79
    should be read to cover that embodiment; on the other
    hand, if such an embodiment is not disclosed, the disclo-
    sure-dedication rule does not apply to bar infringement
    under the doctrine of equivalents. SanDisk further
    contends that because the claims define the controller as
    having a read circuit and a write circuit, the accused
    products—which include read and write circuitry—
    necessarily infringe.
    
        In response, Kingston challenges SanDisk’s framing
    of the question, arguing that the correct inquiry is not
    whether the claimed controller must reside on one chip,
    as SanDisk contends, but rather whether the writing and
    reading circuits in the accused products are a part of the
    controller. Kingston maintains that, contrary to San-
    Disk’s position, the presence of read and write circuits
    somewhere in the accused system does not mean that
    
            3   The ’316 patent expressly incorporates U.S.
    Patent Application No. 07/337,579 (“’579 application”) by
    reference. See ’316 patent col.6 ll.3-9, col.11 ll.4-11. The
    ’338 patent is a continuation-in-part of the ’579 applica-
    tion. On appeal, the parties do not dispute that the ’338
    patent is incorporated by reference into the ’316 patent.
    31                           SANDISK CORP   v. KINGSTON TECH
    
    
    those circuits necessarily are part of the controller as
    required by the claim. Kingston also disputes SanDisk’s
    position that the court’s doctrine of equivalents analysis is
    incongruous with the literal infringement analysis.
    According to Kingston, the specification discloses two
    embodiments, and only one of those embodiments is
    claimed. In the first embodiment, the read and write
    circuits are part of the controller; in the second unclaimed
    embodiment, disclosed in Figure 5 of the incorporated
    ’338 patent, the read and write circuits are separate from
    the controller.
    
        With respect to literal infringement, we agree with
    Kingston that the district court correctly found that
    SanDisk failed to present evidence that the read and
    write circuitry in the accused devices were part of the
    controller such that claim 79 of the ’316 patent was liter-
    ally infringed. Although the district court concluded that
    the controller circuitry need not be located on the same
    chip, that construction does not resolve the infringement
    issue. The read and write circuits are not only part of the
    claimed system; the claims explicitly require that these
    circuits be part of the claimed controller. Thus, the
    presence of a read circuit and a write circuit somewhere
    in the system does not establish that those circuits are
    part of the controller for purposes of establishing in-
    fringement.
    
        The district court correctly treated this infringement
    issue as a question of fact and found that SanDisk failed
    to present any evidence on summary judgment that “the
    data writing and reading circuit on the flash memory
    chips of the accused products are otherwise part of the
    ‘controller.’” J.A. 60. On appeal, SanDisk has not identi-
    fied any evidence that the district court overlooked in
    reaching this conclusion. Consequently, we affirm the
    SANDISK CORP   v. KINGSTON TECH                          32
    
    
    district court’s judgment in favor of Kingston as to literal
    infringement of claim 79.
    
        We reach a different conclusion, however, with re-
    spect to the district court’s application of the disclosure-
    dedication rule in its doctrine of equivalents analysis.
    The district court found that Kingston’s accused products
    did not infringe under the doctrine of equivalents because
    the ’316 patent disclosed the use of read and write cir-
    cuitry located on the flash memory chip rather than the
    controller chip. The disclosure relied upon by the district
    court does not appear within the four corners of the ’316
    patent but instead is in Figure 5 of the incorporated ’338
    patent.
    
        We have yet to address the circumstances in which
    the disclosure of subject matter in a document incorpo-
    rated by reference amounts to a dedication of that subject
    matter under Johnson & Johnston. Because a document
    incorporated by reference “becomes effectively part of the
    host document as if it were explicitly contained therein,”
    Telemac Cellular Corp. v. Topp Telecom, Inc., 
    247 F.3d 1316
    , 1329 (Fed. Cir. 2001), the disclosure of subject
    matter in an incorporated document can dedicate that
    subject matter to the public for purposes of the host
    patent. Incorporation by reference, however, “does not
    convert the invention of the incorporated patent into the
    invention of the host patent.” Modine Mfg. Co. v. Int’l
    Trade Comm’n, 
    75 F.3d 1545
    , 1552 (Fed. Cir. 1996).
    Thus, in determining whether incorporated subject mat-
    ter satisfies the disclosure-dedication rule standards set
    forth in Johnson & Johnston and its progeny, we must
    look first to the teachings of the host patent. Consistent
    with Pfizer, the host patent must sufficiently inform one
    of ordinary skill that the incorporated document contains
    subject matter that is an alternative to a claim limitation.
    33                             SANDISK CORP   v. KINGSTON TECH
    
    
    429 F.3d at 1379. If it does, the inquiry then shifts to the
    incorporated document to assess whether the disclosure of
    that subject matter is “of such specificity that one of
    ordinary skill in the art could identify the subject matter
    that had been disclosed and not claimed.” PSC Computer
    Prods., 355 F.3d at 1360.
    
        Here, the ’316 patent’s discussion of the incorporated
    ’338 patent does not sufficiently identify to one of ordi-
    nary skill that the incorporated patent contains subject
    matter that is an alternative to the claimed controller. To
    the contrary, in discussing the parent ’579 application,
    the ’316 patent speaks only in general terms: “Optimized
    erase implementations have been disclosed in two copend-
    ing U.S. patent applications,” ’316 patent col.6 ll.3-4; and
    “Optimized implementations of write operation for Flash
    EEprom device have been disclosed in two previously
    cited co-pending U.S. applications . . . ,” id. at col.11 ll.4-6.
    Such cursory discussion does not sufficiently provide
    notice to one of ordinary skill that the incorporated ’338
    patent contains subject matter that is an alternative to
    the claimed controller, as required by Pfizer. Conse-
    quently, we conclude that the district court erred as a
    matter of law in finding that the ’316 patent dedicated
    SanDisk’s proposed equivalent to the public.
    
                           III. CONCLUSION
    
        We lack jurisdiction to address SanDisk’s claim con-
    struction arguments that are solely related to the ’893
    and ’808 patents and claims 1 and 10 of the ’842 patent.
    As to the claim construction issues that are properly
    before us on appeal, we conclude that the district court
    erred in its constructions of the “recording a relative time
    of programming . . .” limitation in claims 1 and 3 of the
    ’424 patent, and the “at least a user data portion and an
    SANDISK CORP   v. KINGSTON TECH                          34
    
    
    overhead portion” limitation in claim 61 of the ’842 patent
    and claim 67 of the ’316 patent. Those constructions
    accordingly are reversed and the judgment of non-
    infringement in favor of Kingston as to those claims is
    vacated. Lastly, the district court’s judgment of no literal
    infringement of claim 79 of the ’316 patent is affirmed,
    but the court’s judgment that Kingston did not infringe
    claim 20 of the ’424 patent and claim 79 of the ’316 patent
    under the doctrine of equivalents is vacated. The case is
    remanded to the district court for further proceedings
    consistent with this opinion.
    
      AFFIRMED-IN-PART, VACATED-IN-PART, AND
                    REMANDED
      United States Court of Appeals
          for the Federal Circuit
                   __________________________
    
                  SANDISK CORPORATION,
                     Plaintiff-Appellant,
    
                                v.
            KINGSTON TECHNOLOGY CO., INC.
           AND KINGSTON TECHNOLOGY CORP.,
                   Defendants-Appellees.
                   __________________________
    
                           2011-1346
                   __________________________
    
       Appeal from the United States District Court for the
    Western District of Wisconsin in consolidated case nos.
    07-CV-0605 and 07-CV-0607, Senior Judge Barbara B.
    Crabb.
                  __________________________
    
    REYNA, Circuit Judge, concurring-in-part and dissenting-
    in-part.
    
        I concur with the majority opinion except for its con-
    struction of the term “recording a relative time of pro-
    gramming” in claims 1 and 3 of the ’424 patent. The
    majority construes this term to include an embodiment in
    which no indication, temporal or otherwise, is recorded.
    From this conclusion I respectfully dissent.
    
        Claim 1 is representative of claims 1 and 3 of the ’424
    patent:
    SANDISK CORP   v. KINGSTON TECH                             2
    
    
        1. In a non-volatile memory system having a plu-
        rality of blocks of memory storage elements that
        are individually erasable as a unit and which are
        individually organized into a plurality of pages of
        memory storage elements that are individually
        programmable together, a method of substituting
        new data for superceded data within at least one
        page of one of the plurality of blocks while data in
        at least another page of said one block is not re-
        placed, comprising:
    
            programming the new data into at least one
                page of said one or another of the plural-
                ity of blocks,
    
            identifying the at least one page of superceded
                data and the at least one page of new data
                by a common logical address,
    
            recording a relative time of programming the
                at least one page of new data and the at
                least one page of superceded data; and
    
            wherein the at least one page of superceded
               data is less than all the data contained in
               said one block.
    
    ’424 patent col.12 l.60-col.13 l.10 (emphasis added).
    
          The specification describes two embodiments. The
    first is faithful to the claim language, recording a time
    stamp in each individual page. The second, called the
    “Block Recording Method,” is not. According to the speci-
    fication, in the block recording method, “the time stamp
    . . . does not need to be stored as part of each page” and “is
    used only to determine the relative age of the data stored
    in blocks.” Id. at col.9 ll.41-47. The block time stamp is
    3                            SANDISK CORP   v. KINGSTON TECH
    
    
    “recorded for each block, either as part of the block or
    elsewhere within the non-volatile memory, and is updated
    each time a page of data is written into the block.” 1 Id. at
    col.9 ll.42-50. In the block recording method, pages are
    written in order within the block, and the most current
    data for a logical page within a block will always be the
    last physical page in the block containing data for that
    logical page. However, since the physical pages do not
    contain any timestamp data, relative or otherwise, all
    that can be said is that the pages were written at the
    same time or after the time stamp in the physical block.
    In other words, although the relative order can be in-
    ferred from the physical number of the page, nothing is
    known about the relative times.
    
        The majority avoids the distinction between “order”
    and “relative time” by focusing on the “relative” limitation
    in the claim and ignoring the limitations that the time
    must be recorded and that it must be a time. Thus, the
    majority states that “‘recording a relative time of pro-
    gramming’ merely requires recording some indication of
    the order of programming for those pages sharing a
    logical address.” Majority Op. at 14. Because recording
    
            1   Updating the timestamp for a block once it is
    written appears to be impossible. A cell must be erased
    before it can be re-written. See ’424 patent col.1 ll.23-24.
    Cells can only be erased by erasing an entire block. See
    id. Therefore, to update the timestamp in a block when a
    page in that block is written, it would be necessary to
    erase the entire block, including the newly written data.
    It is possible, as the specification indicates, to store the
    relative time elsewhere in non-volatile memory. That is
    exactly what the first embodiment does, and it would
    appear that storage of the timestamps in any location
    other than the page being written would be much less
    efficient and would result in additional wear on the flash
    memory.
    SANDISK CORP   v. KINGSTON TECH                          4
    
    
    new updates in the next available page in the most recent
    block implicitly encodes the order in which the updates
    were received, the majority concludes that the claim was
    met. This construction improperly ignores express limita-
    tions of the claims and uses the specification to broaden
    the patent. See, e.g., Maxwell v. J. Baker, Inc., 
    86 F.3d 1098
    , 1105 (Fed. Cir. 1996) (rejecting a claim interpreta-
    tion that would ignore explicit limitations in the claim);
    Unique Concepts, Inc. v. Brown, 
    939 F.2d 1558
    , 1562 (Fed.
    Cir. 1991) (“All the limitations of a claim must be consid-
    ered meaningful.”); see also United States v. Adams, 
    383 U.S. 39
     (1966) (stating that claims limit the inventions
    and “specifications cannot be used to expand the patent
    monopoly”).
    
        The majority then attempts to explain how, under this
    reading, the block recording method satisfies the lan-
    guage of the claim. In particular, the majority discusses
    Figure 11, which depicts a second update to logical page 5
    within the same physical block (PBN1) where the physical
    location of the two pages within the block identifies the
    most recently updated page:
    5                           SANDISK CORP   v. KINGSTON TECH
    
    
    
    
         Specifically, in Figure 11, the new physical block
    (PBN1) contains two versions of original page 5 located at
    PBN1 physical page 2 and PBN1 physical page 3. In this
    example, page 5 on the left has been modified twice. The
    first modification is stored at page 2 on the right. The
    second is stored at page 3 on the right. Because the data
    will be read backwards starting from the last page of the
    new block, the user data on PBN1 physical page 3 will be
    read, but the data on PBN1 physical page 2 will not.
    
        If anything, the majority’s analysis of this embodi-
    ment proves that the claim does not cover the block
    recording method. In PBN1, pages 2 and 3 were written
    at two different times. When page 2 was written, a
    relative time was recorded for the new physical block.
    However, when page 3 was written, no relative time was
    recorded. The relative times of the updates of pages 2 and
    3 are unknown and unknowable, because no relative time
    SANDISK CORP   v. KINGSTON TECH                            6
    
    
    information is recorded at the page level. Instead, the
    system infers the order—as opposed to the relative
    times—in which the data was written. This is undoubt-
    edly more elegant than recording relative times, but it
    does not satisfy the terms of the claim, which require that
    a relative time be recorded.
    
         Even if it is possible to update the time for the block,
    this does not save the embodiment. If the block time is
    not updated, time information is only available for the
    first physical page in the block. If the block time is up-
    dated, time information is only available for the last page
    that has been written in the block. In either case, all that
    can be determined is the order of the pages, not their
    relative times. Indeed, in describing the block recording
    method, the specification notes that “[o]nly . . . the rela-
    tive times that the physical blocks were programmed need
    to be known.” ’424 Patent col.10 ll.3-7 (emphasis added).
    Thus, in the block recording method, relative times are
    recorded for physical blocks, not for pages. If a page
    update does not require a new block, no relative time is
    recorded, and the terms of the claim are not met.
    
        The majority focuses only on the term “relative” and
    ignores that the claims explicitly require a time to be
    recorded. In doing so, it improperly expands SanDisk’s
    patent monopoly beyond what was claimed. I respect-
    fully dissent.
    

Document Info

DocketNumber: 2011-1346

Filed Date: 10/9/2012

Precedential Status: Precedential

Modified Date: 10/30/2014

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