Disclosure-Dedication Rule: An Effective Tool Against Infringement Claims Under the Doctrine of Equivalents

The doctrine of equivalents allows a patentee to raise a claim of infringement even when each and every element of the patented invention is not identically present in the allegedly infringing product/process. The doctrine is aimed at preventing an infringer from gaining the benefit of a patented invention by making insubstantial changes. Disclosure-dedication doctrine is a bar to the doctrine of equivalents. Under the disclosure-dedication doctrine, when a patentee discloses subject matter but does not claim it, the patentee dedicates the unclaimed subject matter to the public and cannot recapture it through the doctrine of equivalents. The public can then practice the unclaimed subject matter without fear of infringement.Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 2019-1924 (Fed. Cir. May 8, 2020) (“Eagle Pharm”) is the most recent Federal Circuit case involving this doctrine. In Eagle Pharm, the Federal Circuit considered whether a patentee can avoid dedication on the ground that the disclosure occurred in an embodiment distinct from the claimed invention. The court answered the question in the negative.

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