In Akeva L.L.C., v. Nike, Inc.,1 the Federal Circuit held that a disclaimer in a specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment, thereby breaking the priority chain. In addition, the court held that a disclaimer in a specification could not be rescinded without introducing prohibitory new matter.
Akeva L.L.C. (Akeva) owned a collection of footwear patents including U.S. Patent Nos. 5,560,126 (’126 patent); 6,966,130 (’130 patent); 7,114,269 (’269 patent); 5,380,350 (’350 patent); and 7,540,099 (’099 patent) (together, the Asserted Patents). The ’130, ’269, ’350 and ’099 patents each claimed priority to the ’126 patent (together, the Continuation Patents). The district court granted Nike’s summary judgment of invalidity of the Continuation Patents because they were not entitled to claim priority to the ’126 patent.2
On appeal, the Federal Circuit held that the district court correctly determined that the Continuation Patents were not eligible to claim priority to the ’126 patent.3 The Asserted Patents involved enhancements to athletic shoe rear soles and midsoles, and the difficulty of midsole or rear sole wear necessitating a new shoe although most of the shoe was still usable. The specification described that midsole compression could be reduced by employing a graphite insert into the midsole.4
The Continuation Patents claimed priority to the ’126 patent via a series of continuation applications, including U.S. Patent No. 6,604,300 (’300 patent). The ’300 patent was a continuation-in-part of the ’126 patent. The Federal Circuit had previously found that the ’300 patent specification disclaimed conventional fixed rear soles, thus precluding the ’300 patent claims from covering shoes with a conventional fixed rear sole. The ’296 continuation patent had the same description as the ’300 patent, with the disclaimer, but Akeva revised the description during prosecution to remove the disclaimer language and filed a statement attempting to retract that disclaimer from the ’296 patent.5
All of Nike’s accused shoes included a conventional fixed rear sole, and Nike contended that the term “rear sole secured” in claim 25 of the ’126 patent, like the claims of the ’300 patent, could not encompass a shoe with a conventional fixed rear sole. Specifically, claim 25 recited the following:
25. A shoe comprising:
an upper having a heel region;
a rear sole secured below the heel region of the upper; and
a flexible plate having upper and lower surfaces and supported between at least a portion of the rear sole and at least a portion of the heel region of the upper, peripheral edges of the plate being restrained from movement relative to an interior portion of the plate in a direction substantially perpendicular to a major axis of the shoe so that the interior portion of the plate is deflectable relative to the peripheral edges in a direction substantially perpendicular to the major axis of the shoe.6
The district court held that the ’126 patent disclaimed conventional fixed rear soles, and therefore, those soles were not within the scope of the claim language. With respect to the Continuation Patents, the district court acknowledged that Akeva revised the specifications to avoid the disclaimer language to cover shoes having conventional fixed rear soles. The parties agreed that if the Continuation Patents were not eligible to claim priority to the ’126 patent, then the claims would be anticipated under 35 U.S.C. Section 102 due to Nike’s sales of its accused shoes with fixed rear soles in the United States more than one year before the Continuation Patents’ filing dates.7
The district court determined that Akeva’s revisions to the specifications of the Continuation Patents introduced new matter by broadening the disclosure, and as result the Continuation Patents could not claim priority to the ’126 patent. The district court therefore held that the Continuation Patents were invalid under 35 U.S.C. Section 102.8
Akeva appealed, and the Federal Circuit affirmed. The court agreed with the district court that the ’126 patent description, like the ’300 patent, disclaimed conventional rear fixed soles. The court noted that several statements in the specification made it evident a conventional fixed rear sole was not in the scope of the invention. For example, the Summary of the Invention stated that the invention was a shoe that “includes an upper, a forward sole attached to the upper, a heel support attached to the upper, and a rear sole detachably secured or rotatably mounted to the heel support.”9
In addition, the Description of the Preferred Embodiments described several embodiments illustrated in 36 figures, where all embodiments required either a detachable or rotatable rear sole within a recess of the heel support.10 Thus, the specification repeatedly described the invention as a shoe with a detachable or rotatable rear sole optionally including a flexible plate, such as a graphite insert. Accordingly, after reviewing the specification, the court agreed with the district court that the ’126 specification disclaimed shoes with conventional fixed rear soles.11
The Federal Circuit then considered whether the Continuation Patents could claim priority to the ’126 patent. Akeva acknowledged that the claims of the Continuation Patents would be invalid if they were not eligible for the priority date of the ’126 patent. The court observed that to be entitled to the ’126 patent priority date,
there must be adequate written description support for the Continuation Patent claims through the chain of applications leading back to the ’126 patent, which here includes the ’300 patent. The disclaimer in the ’300 patent specifically excluded an athletic shoe with the conventional fixed rear sole and midsole insert from the patent’s scope, breaking any continuity of disclosure for that embodiment. As a result, the Continuation Patents cannot reach through the ’300 patent to claim an earlier priority date for claims directed to a shoe having a conventional fixed rear sole.12
The court explained that the “fundamental problem” was that the ’300 patent disclaimed and failed to describe shoes with conventional fixed rear soles. As a result of the disclaimer and lack of disclosure, the claims of the Continuation Patents could not claim priority to the ’126 patent for a shoe having a conventional fixed rear sole.13
Akeva argued that the prior disclaimers were rescinded in the Continuation Patents, enabling the Continuation Patents to claim priority to the ’126 patent. The Federal Circuit disagreed and held that a specification disclaimer to a specific embodiment could not be rescinded without introducing new matter. The court explained:
A disclaimer in the specification . . . specifically excludes subject matter from the invention possessed by the patentee. . . . In this case, for example, rescinding the specification disclaimer would bring an entirely new embodiment into the Continuation Patents that had originally been excluded from the ’300 patent’s disclosure. Such an embodiment would be “classical new matter” and is not within the scope of the invention as disclosed in the prior patent. . . . The asserted claims of the Continuation Patents thus are not entitled to the ’126 patent’s priority date for that reason as well.14
Therefore, the court agreed with the district court that the ’300 patent severed the priority chain or the Continuation Patents’ claims. Consequently, the Federal Circuit held that the asserted claims of the Continuation Patents were anticipated.15
The above decision demonstrates that patent application specifications must be drafted correctly in the first instance. The decision highlights some of the limits patent owners face when attempting to change strategy or fixing errors during prosecution as a result of a narrowly drafted specification.
If a broader scope of protection is desired for the invention, the patent specification should include or describe any and all technical alternatives/embodiments to the invention. In general, the specification should avoid the use of words such as “must,” “only,” “critical” and the like when describing the invention, unless such terms are used in connection with exemplary embodiments and other embodiments are also disclosed. Proper attention must also be given to the appropriate scope of patent claims before the application is filed, to ensure that there is sufficient technical description to support the patent claims (from the broad claims to the narrower claims).
The prior art should be carefully analyzed if a pre-filing prior art search is conducted or when reviewing an Office Action that cites prior art. Unnecessary arguments and/or claim amendments must be avoided, lest the ultimately granted patent claims be too narrow via either narrow arguments or narrow claim language. In addition, the appropriate variety of patent claims, from broad to narrow in scope, should generally be included for maximum benefit and value.
1 Akeva L.L.C., v. Nike, Inc., No. 19-2249, Civ. App., ---- Fed.Appx. ----, 2020 WL 4006796 (Fed. Cir. July 16, 2020) (Unpublished).
2 Id., slip op. at 2.
3 Id., slip op. at 2.
4 Id., slip op. at 2–3.
5 Id., slip op. at 3–4.
6 Id., slip op. at 4–5.
7 Id., slip op. at 5.
8 Id., slip op. at 5–6.
9 Id., slip op. at 7–8 (quoting U.S. Patent No. 5,560,126, col. 3 ll. 25–30).
10 Id., slip op. at 8.
11 Id., slip op. at 12.
12 Id., slip op. at 12–13.
13 Id., slip op. at 13.
14 Id., slip op. at 14.
15 Id., slip op. at 15.