**United States Court of Appeals for the Federal Circuit**

03-1424

THE TORO COMPANY,

> Plaintiff-Appellant,

v\.

WHITE CONSOLIDATED INDUSTRIES, INC.

and WCI OUTDOOR PRODUCTS, INC.,

> Defendants-Appellees.

[Earl D. Reiland]{.underline}, Merchant & Gould P.C., of Minneapolis,
Minnesota, argued for plaintiff-appellant. With him on the brief were
[Anthony R. Zeuli]{.underline} and [Thomas J. Leach, III]{.underline}.

[William G. McGuinness]{.underline}, Fried, Frank, Harris, Shriver &
Jacobson, of New York, New York, argued for defendants-appellees. With
him on the brief were [Debra M. Torres]{.underline}, [Pauline L.
Wen]{.underline} and [David A. Zilberberg]{.underline}. Of counsel was
[Laurie Berberich]{.underline}.

Appealed from: United States District Court for the District of
Minnesota

Judge Donovan W. Frank

#### United States Court of Appeals for the Federal Circuit

03-1424

THE TORO COMPANY,

Plaintiff-Appellant,

v\.

WHITE CONSOLIDATED INDUSTRIES, INC.\
and WCI OUTDOOR PRODUCTS, INC.,

Defendants-Appellees.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: September 13, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before RADER, LINN, and DYK, [Circuit Judges]{.underline}.

LINN, [Circuit Judge]{.underline}.

The Toro Company ("Toro") appeals the decision of the United States
District Court for the District of Minnesota granting summary judgment
of non-infringement of United States Patent No. 4,694,528 ("the '528
patent") in favor of White Consolidated Industries, Inc., and WCI
Outdoor Products, Inc. (collectively "White"). [Toro Co. v. White
Consol. Indus., Inc.]{.underline}, No. 4-95-656 (DWF/AJB) (D. Minn. May
14, 2003) ("[Opinion]{.underline}"). Because this court's previous claim
construction is law of the case, and because the district court
correctly held that the disclosure of unclaimed subject matter in the
'528 patent triggers the disclosure-dedication rule, we affirm the
district court's judgment in favor of White.

I. BACKGROUND

Toro owns the '528 patent, which discloses and claims a "convertible
vacuum-blower." Vacuum-blowers are handheld machines used primarily to
vacuum or blow leaves and small lawn debris. [Opinion]{.underline}, slip
op. at 2. As this court's first opinion described in detail, the '528
patent discloses a vacuum-blower design with a removable cover to which
is attached a restriction ring. [Toro Co. v. White Consol. Indus.,
Inc.]{.underline}, 199 F.3d 1295, 1297-98 (Fed. Cir. 1999) ("[Toro
I]{.underline}"). When placed over the air inlet, the restriction ring
reduces the diameter of the air intake opening and increases the power
of the blower. Because the ring can be easily removed from the opening,
the machine's design does not impede its vacuuming ability. Claim 16,
the only independent claim of the '528 patent at issue, recites with the
disputed terms highlighted:

> A convertible vacuum-blower comprising:
>
> \[1\] a housing having an air inlet and an air outlet;
>
> \[2\] a motor supported in said housing;
>
> \[3\] an impeller having a plurality of impeller blades supported for
> rotary motion in said housing, in fluid communication with said air
> inlet and said air outlet, and rotatably driven by said motor;
>
> \[4\] a removable air inlet cover for covering said air inlet, said
> air inlet cover having apertures for passage of air through the cover;
>
> \[5\] attachment means for removably securing said air inlet cover to
> said housing; and
>
> \[6\] said [cover including means for increasing the
> pressure]{.underline} developed by said vacuum-blower during operation
> as a blower when air is being supplied to said impeller through said
> apertured cover.

'528 patent, col. 9, l. 15 -- col. 10, l. 11 (emphasis and clause
numerals added).

In October 1995, Toro filed suit against White, alleging infringement of
claim 16 and dependent claim 17 of the '528 patent. White's accused
vacuum-blower has a restriction ring that is separate from, and
replaceable within, the cover. The district court construed the disputed
terms of claims 16 and 17, and granted Toro's motion for summary
judgment of literal infringement. White appealed. This court reversed
the district court's claim construction of clause 6 of claim 16,
interpreting it to mean that the restriction ring, or "means for
increasing the pressure," is "permanently affixed to and included as
part of the cover." [Toro I]{.underline}, 199 F.3d at 1302. We regarded
this as not being a § 112, ¶ 6 question. [See]{.underline}
[id.]{.underline} at 1300-01. White's accused vacuum-blower has a
restriction ring that is separate or replaceable from the cover. This
court thus remanded the case to the district court for a determination
of infringement under the doctrine of equivalents, stating: "The court
did not reach the question of whether the use of separate components for
cover and ring would nonetheless infringe under the doctrine of
equivalents. On this factual question of equivalency, material facts
were in dispute." [Id.]{.underline}

On remand, the district court interpreted our opinion in [Toro
I]{.underline} as holding that "a critical function of the air inlet
cover claimed in the '528 patent is to automatically insert and remove
the restriction ring." [Toro Co. v. White Consol. Indus.,
Inc.]{.underline}, No. 4-95-656, slip op. at 8 (D. Minn. Aug. 9, 2000).
The air inlet cover of White's accused vacuum-blower is not attached to
the restriction ring and does not automatically insert or remove the
ring. The district court granted summary judgment of non-infringement
under the doctrine of equivalents for White's accused vacuum-blowers.
The district court determined that this court's statement that material
facts regarding equivalency were in dispute was merely dicta and that
this court's remand instruction was "merely . . . a shorthand signal
that the issue of equivalency was not yet ripe for adjudication."
[Id.]{.underline}, slip op. at 12. Toro again appealed.

In the second appeal, this court determined that while the description
and figures of the restriction ring in the specification were used "to
help enlighten the meaning of 'said cover including \[a restriction
ring\],'" [Toro Co. v. White Consol. Indus., Inc.]{.underline}, 266 F.3d
1367, 1371 (Fed. Cir. 2001) ("[Toro II]{.underline}") (alteration in
original), this claim construction "did not and could not import into
the claim a function from the specification, particularly when the claim
recites only purely structural limitations." [Id.]{.underline} (citing
[E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.]{.underline},
849 F.2d 1430, 1433 (Fed. Cir. 1988)). Rather, we determined that the
claim recited a structural limitation including a unitary cover and
ring, and that while a number of functions were recited for this
structure, the primary function as recited in the claims was to cover
the air inlet of the vacuum-blower and to permit the passage of air.
[Id.]{.underline} We concluded that the district court's grant of
summary judgment was improper because a genuine issue of material fact
existed as to whether the separate ring and cover of the White product
performed substantially the same overall claimed function as the cover
disclosed in the '528 patent. The case was again remanded.

In this last remand, White moved for summary judgment of
non-infringement under the doctrine of equivalents, asserting that under
[Johnson & Johnston Associates, Inc. v. R.E. Service Co.]{.underline},
285 F.3d 1046 (Fed. Cir. 2002) (en banc), the two-piece cover/ring
embodiment was dedicated to the public because it was disclosed, but not
claimed. It relied on the following language from the specification:
"Accordingly, building the flow restriction ring 76 as part of the air
inlet cover 50, on which it is needed, but leaving a similarly shaped
ring off of the vacuum nozzle 98 is also advantageous in that it
automatically restricts the size of air inlet 26 depending upon which
operation is being conducted [without having the operator manually
insert or remove a replaceable ring]{.underline}." '528 patent, col. 7,
ll. 6-12 (emphasis added). White argued, and the district court agreed,
that the dedicated subject matter could not be recaptured through
application of the doctrine of equivalents. Over Toro's objections, the
district court granted summary judgment that White did not infringe the
'528 patent under the doctrine of equivalents.[^1]
[Opinion]{.underline}, slip. op. at 8.

Toro again appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II\. DISCUSSION

A. Standard of Review

"We review the grant of summary judgment de novo, drawing all reasonable
inferences in favor of the non-moving party." [Teleflex, Inc. v. Ficosa
N. Am. Corp.]{.underline}, 299 F.3d 1313, 1323 (Fed. Cir. 2002) (citing
[Anderson v. Liberty Lobby, Inc.]{.underline}, 477 U.S. 242, 255
(1986)). A district court's interpretation of our precedent is a
question of law reviewed de novo. [Amgen Inc. v. Hoescht Marion Roussel,
Inc.]{.underline}, 314 F.3d 1313, 1337 (Fed. Cir. 2003).

Neither [Johnson & Johnston]{.underline} nor any of our other
disclosure-dedication rule cases have explicitly articulated a standard
for reviewing the application of the disclosure-dedication rule. [See,
e.g.]{.underline}, [PSC Computer Prods., Inc. v. Foxconn Int'l,
Inc.]{.underline}, 355 F.3d 1353, 1356-57 (Fed. Cir. 2004) (discussing
applicable standards of review, but not for application of the
disclosure-dedication rule); [Johnson & Johnston]{.underline}, 285 F.3d
1046 (Fed. Cir. 2002) (en banc); [Maxwell v. J. Baker,
Inc.]{.underline}, 86 F.3d 1098, 1106-08 (Fed. Cir. 1996) (discussing
the disclosure-dedication rule). The disclosure-dedication rule limits
application of the doctrine of equivalents, much in the same way as
prosecution history estoppel. Under both doctrines, resort to the
doctrine of equivalents is precluded based on actions of the patentee
during prosecution evincing a surrender or dedication of subject matter.
Accordingly, we conclude that both the dedication-disclosure rule and
prosecution history estoppel should be analyzed under the same standard
of review. Because "\[p\]rosecution history estoppel as a limit on the
doctrine of equivalents presents a question of law," [Glaxo Wellcome,
Inc. v. Impax Labs., Inc.]{.underline}, 356 F.3d 1348, 1351 (Fed. Cir.
2004) (citing [Wang Labs., Inc. v. Mitsubishi Elecs. Am.,
Inc.]{.underline}, 103 F.3d 1572, 1578 (Fed. Cir. 1997)), we hold that
the disclosure-dedication rule likewise presents a question of law,
subject to de novo review.

B. Analysis

On appeal from the district court's findings, Toro makes three distinct
arguments: (1) the district court erred in applying [Johnson &
Johnston]{.underline} because Toro did not intentionally decline to
claim or deliberately leave unclaimed any disclosure of the structure of
White's device; (2) the district court's application of [Johnson &
Johnston]{.underline} was flawed because the disclosure, if any, of the
structure of White's device is insufficient under 35 U.S.C. § 112; and
(3) the district court's conclusion that Toro disclosed, but did not
claim, the structure of White's device in the '528 patent is contrary to
this court's holding in [Toro I]{.underline}, in which this court stated
that the '528 patent neither illustrated nor described any structure
other than a cover with an attached ring. White responds that the
district court properly applied our [Johnson & Johnston]{.underline}
precedent and that Toro's arguments to the contrary are unavailing.

1\. Application of [Johnson & Johnston]{.underline}

In [Johnson & Johnston]{.underline}, this court held that

> when a patent drafter discloses but declines to claim subject matter .
> . . this action dedicates that unclaimed subject matter to the public.
> Application of the doctrine of equivalents to recapture subject matter
> deliberately left unclaimed would "conflict with the primacy of the
> claims in defining the scope of the patentee's exclusive right."

285 F.3d at 1054 (quoting [Sage Prods. Inc. v. Devon Indus.,
Inc.]{.underline}, 126 F.3d 1420, 1424 (Fed. Cir. 1997)). In the patent
at issue in [Johnson & Johnston]{.underline}, the specification
described aluminum as the preferred material for a substrate, and
further remarked that "other metals, such as stainless steel or nickel
alloys, may be used." [Id.]{.underline} at 1055 (internal quotation
marks omitted). However, the claims recited only aluminum.
[Id.]{.underline} This court held that even though steel substrates
performed the exact same function as aluminum substrates, and even
though the specification did not expressly disclaim or disavow steel
substrates, the patentee could not invoke the doctrine of equivalents to
recapture the use of steel substrates, which were disclosed but not
claimed. [Id.]{.underline}

The district court in the present case determined that "\[t\]he facts of
this case are on all fours with the facts in [Johnson &
Johnston]{.underline}." [Opinion]{.underline}, slip op. at 5. The court
held that while the '528 patent specification discloses both a
replaceable ring and a unitary cover/ring structure, claim 16, as
construed by this court in [Toro I]{.underline}, covered only a
"restriction ring . . . permanently affixed to and included as part of
the cover." [Id.]{.underline} at 6 (citing [Toro I]{.underline}, 199
F.3d at 1302). For this reason, the district court concluded that Toro
was barred from asserting that White's replaceable ring infringed the
'528 patent under the doctrine of equivalents. The court thus entered
judgment in favor of White.

2\. Intent to Claim

Toro argues that any disclosure of and subsequent failure to claim the
structure of White's device, i.e., a cover with a replaceable ring, was
wholly unintentional and that the disclosure-dedication rule should not
apply as a matter of law. [See]{.underline} [Johnson &
Johnston]{.underline}, 285 F.3d at 1054 (noting that when a patent
drafter discloses but "declines" to claim subject matter, that action
precludes application of the doctrine of equivalents to capture "subject
matter [deliberately]{.underline} left unclaimed" (emphasis added)).
Because Toro did not intend to leave a cover with a replaceable ring
unclaimed, it argues that it should be permitted to assert infringement
under the doctrine of equivalents. As evidence of its lack of intent to
leave that structure unclaimed, Toro points to its use in claim 16 of
the term "including" in the clause "said cover including means for
increasing the pressure," and argues that "including" does not typically
require physical attachment. Toro argues that the word "including," if
given its broadest meaning, would have encompassed the replaceable ring.
[See]{.underline} [Toro I]{.underline}, 199 F.3d at 1303 (Rader, J.,
dissenting). Toro also argues claim differentiation, noting that
dependent claim 17 narrows independent claim 16 by requiring that the
ring be "carried by said cover." If "including" requires attachment,
Toro argues, then the scope of claim 17 would be no different than claim
16.

Toro also argues that this case parallels [Graver Tank & Manufacturing
Co. v. Linde Air Products Co.]{.underline}, 339 U.S. 605 (1950), in that
objective evidence shows that Toro, just as the patentee in [Graver
Tank]{.underline}, did not deliberately leave disclosed subject matter
unclaimed. [See, e.g.]{.underline}, [Johnson & Johnston]{.underline},
285 F.3d at 1053 (distinguishing [Graver Tank]{.underline} from [Johnson
& Johnston]{.underline} by stating that previous opinions and the
history of the case in [Graver Tank]{.underline} "show that the patentee
had not dedicated unclaimed subject matter to the public. In fact, the
patentee had claimed the 'equivalent' subject matter, even if the Court
eventually held the relevant claims too broad. . . ."). Supporting this
line of reasoning, Toro argues that the Supreme Court's criticism of
bright-line rules in [Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co.]{.underline}, 535 U.S. 722 (2002), supports a flexible approach in
applying the [Johnson & Johnston]{.underline} disclosure-dedication
rule, leaving room for factually distinguishable cases such as [Graver
Tank]{.underline}.

White counters Toro's assertion that there must be intent to dedicate or
leave subject matter unclaimed with the plain language of the [Johnson &
Johnston]{.underline} opinion: "Nor does this court agree that intent
plays any role in the \[disclosure-dedication\] rule. To the contrary,
one of the advantages . . . is that it is a purely objective test. The
patentee's subjective intent is irrelevant . . . ." 285 F.3d at 1053
n.1. White also argues that the [Johnson & Johnston]{.underline} rule is
fully consistent with [Festo]{.underline}, pointing to the Supreme
Court's distinction between "language's inability to capture the essence
of innovation" and "a prior application describing the precise element
at issue." [Festo]{.underline}, 535 U.S. at 734. Finally, White
distinguishes [Graver Tank]{.underline}, in that the patentee in that
case had claimed the alleged equivalent, but the claim was later
invalidated.

We hold, as a matter of law, that intent is not part of the [Johnson &
Johnston]{.underline} disclosure-dedication analysis. The language of
[Johnson & Johnston]{.underline} is clear: "The patentee's subjective
intent is irrelevant to determining whether unclaimed subject matter has
been disclosed and therefore dedicated to the public." 285 F.3d at 1053
n.1. Moreover, the absence of intent as a factor in applying the
disclosure-dedication rule of [Johnson & Johnston]{.underline} is
consistent with both [Festo]{.underline} and [Graver Tank]{.underline}.
[Festo]{.underline} addresses circumstances, [inter]{.underline}
[alia]{.underline}, in which the shortfalls of language or the
unforeseeability of undeveloped technology preclude or hamper claim
drafting. To the contrary, the disclosure-dedication rule applies to
cases in which technology is both in existence and recognizably
described in the written description of the patent, yet left unclaimed.
As noted by White, [Graver Tank]{.underline} is distinguishable on its
facts. In [Graver Tank]{.underline}, there was no question that the
applicant actually claimed the subject matter at issue even though the
claims were later invalidated. In this case, Toro can only argue that it
attempted to claim the disclosed subject matter based on its preferred
claim construction. This court, however, in [Toro I]{.underline},
concluded that Toro had not claimed a replaceable ring---a holding that
is the law of the case. [See]{.underline} Section II.B.4,
[infra]{.underline}.

Because intent is not a factor in applying the disclosure-dedication
rule, Toro cannot prevail as a matter of law based on its argument that
it did not decline to claim or deliberately leave unclaimed the
structure of White's device.

3\. Sufficiency of Disclosure

Toro next argues that, even if the unintentional failure to claim an
embodiment does not avoid the disclosure-dedication rule, the level of
disclosure of a replaceable ring in the '528 patent is insufficient, as
a matter of law, to trigger the disclosure-dedication rule.
Specifically, Toro reasons that because [Johnson & Johnston]{.underline}
indicates that a patentee would have the opportunity to capture
disclosed, but unclaimed, subject matter through reissue or continuation
applications, 285 F.3d at 1055, the level of disclosure required to
trigger a dedication must satisfy the standards of patentability under
35 U.S.C. § 112, ¶ 1, [see]{.underline} [Turbocare Div. of Demag Delaval
Turbomachinery Corp. v. Gen. Elec. Co.]{.underline}, 264 F.3d 1111, 1118
(Fed. Cir. 2001) (noting that when an "applicant adds a claim or
otherwise amends his specification after the original filing date, . . .
the new claims or other added material must find support in the original
specification" to satisfy the written description requirement of 35
U.S.C. § 112, ¶ 1). According to Toro, the statement in [Johnson &
Johnston]{.underline} that patentees may seek reissue or continuation
applications grafts the requirement of § 112 sufficiency onto the
disclosure-dedication rule, and a disclosure insufficient to satisfy
§ 112 will not trigger the disclosure-dedication rule. In this case,
Toro contends that the only portion of the '528 patent which discloses
White's two-piece ring and cover structure is the phrase "without having
the operator manually insert or remove a replaceable ring," '528 patent,
col. 7, ll. 11-12, and that this phrase alone is insufficient to enable
one of ordinary skill to make and use such a replaceable ring or to show
with reasonable clarity that a replaceable ring was possessed by the
inventor.

White argues that the disclosure-dedication rule does not impose a § 112
requirement on the disclosed subject matter, noting that, by its terms,
§ 112 applies only to claimed subject matter. According to White,
[Johnson & Johnston]{.underline}'s comment regarding reissue or
continuation applications is merely an observation of one recourse that
may be available to a patentee who fails to claim disclosed subject
matter in a patent.

We agree with White that the disclosure-dedication rule does not impose
a § 112 requirement on the disclosed but unclaimed subject matter. The
standards articulated in § 112 are directed to the [claimed]{.underline}
invention, not to disclosures in the written description that may
implicate the disclosure-dedication rule. [See, e.g.]{.underline}, [Zygo
Corp. v. Wyko Corp.]{.underline}, 79 F.3d 1563, 1567 (Fed. Cir. 1996)
("The focus of a section 112 inquiry is not what a particular user
decides to make and sell or even in what field the invention is most
likely to find success. Rather, in keeping with the statutory mandate,
our precedent is clear that the parameters of a section 112 inquiry are
set by the [claims]{.underline}."). Further, this court has previously
considered the level of disclosure required to trigger the
disclosure-dedication rule and has articulated the following standard:

> We thus hold that if one of ordinary skill in the art can understand
> the unclaimed disclosed teaching upon reading the written description,
> the alternative matter disclosed has been dedicated to the
> public. . . . 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.

[PSC Computer]{.underline}, 355 F.3d at 1360. Thus, the level of
disclosure needed to implicate the disclosure-dedication rule is
different from the level of disclosure required under § 112 to support
claims defining the scope of coverage of an invention. Indeed,
disclosures implicating the disclosure-dedication rule need not directly
relate to the description of the claimed invention or be contained in
the "Detailed Description of the Invention" section of the patent, but
may appear merely in the portion of the patent describing the
"Background of the Invention." [See]{.underline} [id.]{.underline} at
1360 ("We agree with the district court, however, that the
[specific]{.underline} disclosure that '\[o\]ther prior art devices use
molded plastic and/or metal parts that must be cast or forged which
again are more expensive metal forming operations,' dedicated the
alternative use of plastic parts to the public." (quoting U.S. Patent
No. 6,061,239, col. 2, ll. 39-41 (Background of the Invention
section))).

In the present case, the district court found no genuine issue of
material fact in concluding that the disclosure of a replaceable ring
would have been apparent to one of ordinary skill in the art.
[Opinion]{.underline}, slip op. at 7 ("\[T\]here is no doubt that the
specification of the '528 patent discloses the separate cover/ring
structure employed by \[White\] in the allegedly infringing device. It
does so by noting the inferiority of a device in which 'the operator
manually insert\[s\] or remove\[s\] a replaceable ring.'" (quoting '528
patent, col. 7, ll. 11-12)). This court's conclusion in [Toro
I]{.underline} that the language quoted above from column 7, lines 11-12
of the '528 patent does not support a broader claim construction of the
term "including," is neither inconsistent with nor contradicted by the
district court's recognition that the patent mentions a replaceable
ring---albeit requiring manual insertion and removal---in a way that
would be understood by one of ordinary skill in the art. Nothing more is
required to implicate the disclosure-dedication rule.

4\. Applicability of Law of the Case

Toro makes two alternative arguments concerning law of the case. It
first argues that the district court erred in concluding that the '528
patent discloses a cover with an unattached ring, a conclusion it
contends is contrary to this court's [Toro I]{.underline} opinion. In
particular, Toro notes that in construing the word "including," the
[Toro I]{.underline} panel repeatedly mentioned the lack of any
disclosure other than a ring attached to the cover. Toro argues that
based on these statements, the district court's subsequent holding that
the '528 patent indeed discloses the structure of White's device
violates the law of the case. Alternatively, Toro argues that if this
court now upholds the district court's holding that the unattached ring
is disclosed in the '528 patent, then this court should revisit its
previous claim construction ruling and reconstrue the term "including"
to be broader than requiring a physical attachment.

White responds to Toro's first argument by stating that Toro is
confusing two fundamentally different matters---disclosure of unclaimed
subject matter and description of claimed subject matter. Moreover,
White argues that resort to the disclosure-dedication rule in this case
is not precluded by the law of the case because the issue of the
[Johnson & Johnston]{.underline} disclosure-dedication rule was not
briefed or argued and was not necessary to the decision of [Toro
I]{.underline} or [Toro II]{.underline}. Rather, White argues that this
court's ruling in [Toro I]{.underline} was simply that the specification
did not support Toro's proposed claim construction. To the second
argument, White responds that there is no reason to overturn this
court's claim construction in [Toro I]{.underline}.

a\. Law of the Case

The doctrine of law of the case was "created to ensure judicial
efficiency and to prevent the possibility of endless litigation." [Cent.
Soya Co. v. Geo. A. Hormel & Co.]{.underline}, 723 F.2d 1573, 1580 (Fed.
Cir. 1983); [see also]{.underline} [Messenger v. Anderson]{.underline},
225 U.S. 436, 444 (1912) (law of the case doctrine "expresses the
practice of the courts generally to refuse to reopen what has been
decided"); [Roberts v. Cooper]{.underline}, 61 U.S. 467, 481 (1857)
("\[T\]here would be no end to a suit if every obstinate litigant could,
by repeated appeals, compel a court to listen to criticisms on their
opinions, or speculate of chances from changes of its members.");
[United States v. Turtle Mountain Band of Chippewa Indians]{.underline},
612 F.2d 517, 520 (Ct. Cl. 1979) ("No litigant deserves an opportunity
to go over the same ground twice, hoping that the passage of time or
changes in the composition of the court will provide a more favorable
result the second time."). Further,

> \[i\]f the law-of-the-case doctrine is to have any substance, it must
> sometimes require a judge to uphold a ruling on a question that the
> judge would decide the other way if it were presented for the first
> time. In order to serve the interests of judicial economy, finality,
> and avoidance of "panel-shopping," the doctrine strongly discourages
> reconsideration of issues that a previous panel has addressed, fully
> considered, and decided.

[Hughes Aircraft Co. v. United States]{.underline}, 86 F.3d 1566, 1578
(Fed. Cir. 1996) (Bryson, J., concurring) (citing [Roberts]{.underline},
61 U.S. at 481; [Central Soya]{.underline}, 723 F.2d at 1580). The law
of the case doctrine is limited to issues that were actually decided,
either explicitly or by necessary implication, in the earlier
litigation. [See, e.g.]{.underline}, [Alpha/Omega Ins. Servs., Inc. v.
Prudential Ins. Co. of Am.]{.underline}, 272 F.3d 276, 279 (5th Cir.
2001).

b\. The Court's Statements Regarding Patent Disclosure

Toro's first argument looks to the law of the case for support. Toro
contends that this court's statements in [Toro I]{.underline} that the
'528 patent neither discloses nor describes any structure other than
structure including an attached ring are law of the case to which we
must adhere. This argument is not persuasive. This court did not analyze
the written description of the '528 patent for disclosed but unclaimed
subject matter in [Toro I]{.underline}. Rather, in that decision, this
court construed a claim term and in that context concluded that the
specification did not support Toro's proposed claim construction. As
noted above, the written description necessary to support a claim
construction is not necessarily the same as the disclosure of subject
matter needed to invoke the disclosure-dedication rule. Material that is
explicitly disclaimed in the specification---like the disclaimer of a
removable ring in this case---is disclosed for purposes of the
disclosure-dedication rule, but it cannot be encompassed within the
scope of the claims. [See, e.g.]{.underline}, [SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc.]{.underline}, 242 F.3d 1337, 1344
(Fed. Cir. 2001). Because the extent of the disclosure needed to invoke
the disclosure-dedication rule was not at the crux of this court's
earlier opinion, and because the disclosure-dedication rule was not even
implicated in that decision, the statements Toro relies upon do not
amount to law of the case. [See, e.g.]{.underline}, [Alpha/Omega Ins.
Servs.]{.underline}, 272 F.3d at 279 (limiting the law of the case
doctrine to issues that were actually decided).

c\. The Court's Claim Construction

Toro's alternative argument attempts to avoid the law of the case
doctrine. It is clear that this court's prior claim construction of the
term "including" as requiring a "restriction ring . . . permanently
affixed to and included as part of the cover," [Toro I]{.underline}, 199
F.3d at 1302, is law of the case. [Ethicon Endo-Surgery, Inc. v. U.S.
Surgical Corp.]{.underline}, 149 F.3d 1309, 1315 (Fed. Cir. 1998)
(stating that claim constructions previously determined on appeal to
this court are law of the case). Toro seeks to have this court depart
from the law of the case, arguing that if this court were to agree with
the district court's finding that White's structure was disclosed for
purposes of the disclosure-dedication rule, the claim construction of
"including" in [Toro I]{.underline} should be broadened.

Although a court may depart from the law of the case doctrine in
"exceptional cases," such departures are rare. [See, e.g.]{.underline},
[Hughes Aircraft Co.]{.underline}, 86 F.3d at 1578 (Bryson, J.,
concurring); [Mendenhall v. Barber-Greene Co.]{.underline}, 26 F.3d
1573, 1582 (Fed. Cir. 1994); [Perkin-Elmer Corp. v. Computervision
Corp.]{.underline}, 732 F.2d 888, 900 (Fed. Cir. 1984). A departure from
law of the case generally requires the discovery of new and material
evidence not presented in the prior action or "an intervening change of
controlling legal authority, or \[a showing that\] the prior decision is
clearly incorrect and its preservation would work a manifest injustice."
[Intergraph Corp. v. Intel Corp.]{.underline}, 253 F.3d 695, 698 (Fed.
Cir. 2001) (citing [Smith Int'l Inc. v. Hughes Tool Co.]{.underline},
759 F.2d 1572, 1576 (Fed. Cir. 1985)).

Toro does not argue new and material evidence. While Toro argues that
[Johnson & Johnston]{.underline} represents a change of law, its
argument is misplaced. [Johnson & Johnston]{.underline} did not alter
our precedent as to claim construction, the issue at the crux of this
case. Toro references the "clear error leading to manifest injustice"
standard, but simply argues for reconsideration of the claim
construction decided in [Toro I]{.underline} without making a showing of
either clear error or manifest injustice. Clear error requires more than
a mere allegation that a prior panel rendered an unfavorable decision.
Clear error leading to manifest injustice is judged under a "stringent
standard": "A mere suspicion of error, no matter how well supported,
does not warrant reopening an already decided point." [Gindes v. United
States]{.underline}, 740 F.2d 947, 950 (Fed. Cir. 1984) (quoting [N.
Helex Co. v. United States]{.underline}, 634 F.2d 557, 562 (Ct. Cl.
1980)). "Only if we were convinced to a certainty that our prior
decision was incorrect would we be warranted in now reexamining \[it\]."
[Id.]{.underline} (quoting [N. Helex]{.underline}, 634 F.2d at 562).
Under that exacting standard, this panel is not "convinced to a
certainty" that clear error pervaded the claim construction in [Toro
I]{.underline}. [See]{.underline} [id.]{.underline}

In the few patent cases in which this court has revisited an issue and
disregarded the law of the case, the circumstances were more
"exceptional" than in this case. For example, in
[Mendenhall]{.underline}, the court determined that a previous panel's
finding of liability for patent infringement should be overturned based
on an intervening decision in another case holding the patent invalid.
26 F.3d at 1583 ("\[T\]he question presented is whether the invalidity
judgment in \[the other case\], as affirmed by this court, presents an
'exceptional circumstance' warranting departure from the prior rulings
that these defendants are liable . . . . In our view, clearly it is.").
The circumstances of this case are not so "exceptional."

The doctrine of the law of the case is intended to prevent just the kind
of speculation and second-guessing invited by the appellant here, in the
broader interests of certainty, finality, and legal efficiency. The law
is well-settled; decisions once made are not to be disregarded except
for exceptional circumstances. Such circumstances are not evident here.

The [Toro I]{.underline} panel was afforded full briefing and argument,
was presented a full and accurate record, and relied on applicable
precedent. The finding of disclosed subject matter sufficient to trigger
the application of the disclosure-dedication rule is not inconsistent
with the analysis in [Toro I]{.underline} of the extent of claimed
subject matter, leading to this court's construction of the claim term
"including." In whatever light this or any other panel may view the
claim construction of the [Toro I]{.underline} panel, it cannot be said
that it was so clearly erroneous as to result in manifest injustice,
warranting disregard of the law of the case by the current panel.

III\. CONCLUSION

For the foregoing reasons, the district court's grant of summary
judgment of non-infringement in favor of White is

[AFFIRMED]{.underline}.

[^1]: The district court also granted Toro's motion for summary judgment
    of non-invalidity of the asserted claims. [Opinion]{.underline},
    slip op. at 9. This facet of the district court's judgment is not
    appealed.