In its nonprecedential ruling in Akeva v. Nike, the Federal Circuit affirmed a district court’s holding that the asserted patents were invalid under 35 U.S.C. § 102 because the patents could not benefit from an earlier priority date. The Federal Circuit reasoned that a chain of priority was broken by a specification disclaimer, preventing an earlier priority date from applying and thus allowing new prior art to invalidate the patents.

The plaintiff, Akeva, asserted four patents that claimed priority to U.S. Patent No. 5,560,126 through a chain of continuations that included U.S. Patent No. 6,604,300. The accused products were shoes with “conventional” rear soles. In a previous appeal in 2006, the Federal Circuit held that the ’300 patent specification was directed to unconventional rear soles, which were detachable or rotatable rear soles. It held that the ’300 patent specification had language that disclaimed conventional rear soles, and so did not encompass shoes with such soles.

In the recent case, Akeva argued that in contrast to the ’300 patent, the asserted patents did encompass shoes with conventional rear soles, and therefore covered the accused products.

During prosecution of a child case, which became U.S. Patent No. 7,114,269, Akeva filed an Information Disclosure Statement. The IDS disclosed the decision of the 2006 appeal and explained that Akeva intended to rescind the disclaimer language relied on by the Federal Circuit in the 2006 appeal decision. Because the ’269 patent was one of the asserted patents, and the rest of the asserted patents were continuations of the ’269 patent, the rescission applied to all asserted patents.

In response to Akeva’s arguments, the Federal Circuit stated that the disclaimer language in the ’300 patent excluded conventional soles, breaking continuity for that embodiment with subsequent child applications. Without continuity with the ’300 patent, the asserted patents could not “reach through the ’300 patent to claim an earlier priority date” to the ’126 patent. Rescission of the disclaimer in the ’269 patent introduced an “entirely new embodiment” into the asserted patents and was “classical new matter” unable to claim the benefit of either patent. The Federal Circuit further explained that case law presented by Akeva in support of its arguments involved rescission of a prosecution disclaimer, not rescission of a specification disclaimer. Akeva presented no case law supporting the proposition that “a disclaimer in the specification can be later rescinded… without this new, expanded scope of the disclosure constituting new matter.” The court then held that without the benefit of an earlier priority date to the ’126 patent, the asserted patents were invalid under 35 U.S.C. § 102 in view of prior art.

Again, Akeva is a reminder that a disclaimer introduced in the specification of a patent and a disclaimer introduced during prosecution are not the same. A prosecution disclaimer can be later rescinded to reclaim disclaimed scope. To do so, the applicant must clearly inform the examiner of the rescission. On the other hand, a specification disclaimer “specifically excludes subject matter from the invention possessed by the patentee,” as the Federal Circuit explained in this case. An applicant cannot “reclaim” scope disclaimed in the specification, because the applicant did not possess that scope at the time of filing. An attempt to do so results in introduction of new matter, potentially breaking continuity with parent applications. Here, Akeva traded an earlier priority date for an embodiment that included conventional rear soles, but in so doing, invalidated the patents.

It is noteworthy that the two cases Akeva offered for the proposition that a specification disclaimer can be “successfully rescinded,” which the Federal Circuit subsequently distinguished as discussing prosecution disclaimers instead, may have been unhelpful to Akeva even if its disclaimer in the ’300 patent had been a prosecution disclaimer. The first case, Hakim v. Cannon Avent Group, ruled that an attempted rescission of a prosecution disclaimer was ineffective, and that the continuation was bound by the prosecution disclaimer of the parent. The second case, Luv N’ Care v. Jackel International, required filing a continuation-in-part that introduced new matter into the claims in order to rescind the prosecution disclaimer of the parent. Introduction of new matter into the claims precluded the benefit of an earlier priority date by the continuation-in-part. Therefore, had Akeva’s disclaimer been a prosecution disclaimer, the result may have been the same.