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A Disclaimer Made During Prosecution Must Be Explicitly Rescinded

February 23, 2007

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Last Month at the Federal Circuit - March 2007

Judges: Michel, Newman, Rader

[Appealed from: W.D. La., Judge James]

In Hakim v. Cannon Avent Group, PLC, No. 05-1398 (Fed. Cir. Feb. 23, 2007), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement of U.S. Patent No. 6,321,931 (“the ’931 patent”) and SJ of invalidity under 35 U.S.C. § 102(b) of U.S. Patent No. 6,357,620 (“the ’620 patent”).

Mr. Nouri Hakim sued Cannon Avent Group, PLC, Cannon Rubber Limited, and Avent America, Inc. (collectively “Avent”) for infringement of the ’931 and ’620 patents based on their leak-resistant drinking cups. Generally speaking, Hakim’s patented cups have a valve that fluid can pass through when a person sucks on a drinking spout. When a person is not sucking on the spout, the valve closes, thereby sealing the cup and preventing accidental leaking.

During prosecution of the parent application to the application that issued as the ’931 patent, while arguing that the claims were patentable over the prior art, Hakim explained that none of the cited references taught or suggested “a no-spill mechanism having a slit sitting against a blocking element such as is recited in all of the pending claims.” After receiving a notice of allowance for the claims using the word “slit,” Hakim filed a continuation application and an amendment changing “slit” to “opening” in claims 1 and 2. Hakim also included a letter from his attorney stating that claims 1 and 2 were being broadened. The examiner allowed the continuation claims without any comment or further prosecution.

The district court construed the asserted claims of the ’931 patent as requiring a sealing mechanism that uses a flexible valve material or diaphragm having a “slit” based on Hakim’s statements in the parent application distinguishing the prior art. As such, the district court found that Avent’s accused drinking cup, containing a hole in the diaphragm and no slit, did not infringe the ’931 patent.

On appeal, Hakim argued that this claim construction was too narrow, especially considering that claims 1 and 2 do not require a slit that opens and closes with suction, but rather use only the word “opening” when claiming the aperture in the diaphragm. Specifically, Hakim argued that the district court should not have relied on the argument distinguishing the prior art made in the abandoned parent application to limit the claim scope to a diaphragm with a “slit.”

The Federal Circuit rejected Hakim’s position and held that the district court correctly construed the claims. While recognizing Hakim’s right to refile the application and broaden the claims, the Court noted that an applicant cannot recapture claim scope that was surrendered or disclaimed. Importantly, the Court noted that “[a]lthough a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.” Slip op. at 7. Since Hakim did not effectively rescind the argument made in the parent application distinguishing his invention from the prior art, the Federal Circuit affirmed the district court’s claim construction and SJ decision of noninfringement.

Hakim also challenged the district court’s decision invalidating the ’620 patent. Hakim first attacked the district court’s decision by asserting that it erred in not construing the claims before performing its invalidity analysis. Since Hakim failed to propose alternative meanings for any disputed claim terms that might affect the validity of the claim, the Federal Circuit declined to address this point.

Next, Hakim challenged the district court’s finding that that ’620 patent was anticipated under 35 U.S.C. § 102(b) by an Italian patent, specifically whether the reference described a “closed position.” According to Hakim, the claims of the ’620 patent each require a closed position where the valve blocks the passage of liquid, while the Italian patent discloses only a valve tight enough to prohibit the passage of air but not necessarily strong enough to block the passage of liquid. The district court disagreed, noting that the Italian patent states that its purpose is to prevent liquid from flowing when suction was not applied. The Federal Circuit found that no reasonable jury could find that all of the limitations of the ’620 patent were not present in the Italian patent and affirmed. Hakim also argued that the district court had erred in not performing its § 102(b) analysis on a claim-byclaim basis. Specifically, Hakim contended that the district court ignored a limitation of claim 12 requiring that the flexible valve “invert upon the application of negative pressure.” After agreeing that each claim must be considered separately in an anticipation analysis, the Federal Circuit found that the district court did indeed address this limitation. Since Hakim did not show reversible error, the Federal Circuit affirmed the district court’s SJ decision that the ’620 patent was invalid.

Finally, Hakim argued that the district court improperly struck his expert declaration and testimony supporting his proposed claim construction and validity opinions. The district court granted the motion to strike because (1) Hakim did not submit his report in a timely manner and did not make himself available for deposition,(2) the district court did not need Hakim’s testimony, and (3) it found Hakim’s testimony self-serving and biased. The Federal Circuit affirmed this evidentiary ruling, stating that there was no showing that it led the trier of fact into error or that the trier of fact could have reasonable reached a different conclusion had the evidence been admitted.