Cases & Deals

SanDisk revives flash memory patent infringement claims against Kingston in Federal Circuit

Client(s) SanDisk Corporation

Jones Day represented SanDisk Corporation ("SanDisk") in a successful appeal to the United States Court of Appeals for the Federal Circuit involving patent infringement. SanDisk, a pioneer in flash memory technology, has developed and patented solutions for removable memory cards for cameras, smartphones, cloud storage data centers, and many other applications.

In this case, SanDisk sued Kingston Technology Co., Inc. and Kingston Technology Group (collectively, "Kingston") for infringing several SanDisk patents by making, using, importing, and selling certain flash memory devices such as USB thumb drives. Following the district court's claim-construction order, the court entered judgment in favor of Kingston.

SanDisk, represented by Jones Day in the Federal Circuit, appealed. On October 9, 2012, the Federal Circuit reversed the judgment in principal part, holding that the district court had erred in granting summary judgment because its decision was based on erroneous constructions of key terms in SanDisk's patents, and because the district court misapplied the "dedication-disclosure rule" under the doctrine of equivalents. In particular, SanDisk successfully argued that the district court too narrowly construed the patent's phrase "relative time" by requiring the recording of an "absolute time," thereby excluding the "Block Recording Method" that SanDisk disclosed in its patent. Likewise, the Federal Circuit agreed with SanDisk that the district court erred by limiting claims drawn to "a user data portion and an overhead portion" to "only one" of each portion, again based on the broader disclosures of SanDisk's patents. The Federal Circuit also agreed with SanDisk that the district court incorrectly applied the dedication-disclosure rule under the doctrine of equivalents. The Federal Circuit clarified that where subject matter is not specified as an alternative to the claimed invention, it is not dedicated to public use under the doctrine of equivalents. And, on an issue of first impression, the Federal Circuit concurred with SanDisk's argument that a document incorporated by reference into a host patent did not dedicate the incorporated document's subject matter under the doctrine of equivalents where the host patent does not sufficiently identify the incorporated subject matter as an alternative to the claimed invention.

The Federal Circuit's judgment returns the case to the district court in Wisconsin, so that SanDisk’s infringement claims can be asserted under the correct understanding of their claims.

Gregory A. Castanias (Washington) argued the appeal, and the appeal team included Gregory Lanier (Silicon Valley), Ryan B. McCrum (Cleveland), Victoria Dorfman (New York) and John C. Evans (Cleveland).

SanDisk Corporation v. Kingston Technology Co., Inc. et al., 695 F.3d 1348 (Fed. Cir. 2012)