Akeva L..L.C. v. Nike, Inc. (non-precedential)

            On July 16, 2020, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s grant of summary judgment against Akeva’s footwear patents where the district court (1) construed the claim term “rear sole secured” to exclude conventional fixed rear soles (the accused products) and (2) concluded that Akeva’s Continuation Patents are not entitled to claim priority to an earlier patent.

            Claim Construction

            Akeva’s U.S. Patent No. 5,560,126 (”™126 patent) describes improvements to athletic shoe rear soles and midsoles. The “Background of the Invention” portion of the specification of the ”™126 patent describes the problem of rear sole wear in which “One of the principal problems associated with athletic shoes is outsole wear … the heel typically wears out much faster than the rest of the athletic shoe, thus requiring replacement of the entire shoe even though the bulk of the shoe is still in satisfactory condition.”

            The “Summary of the Invention” portion of the ‘126 patent describes “a rear sole detachably secured or rotatably mounted to the heel support”. The “Abstract” of the ”™126 patent describes a shoe including “a heel support for receiving a rotatable and replaceable rear sole to provide longer wear”. Claim 25 of the ‘126 patent recites, in part, “A shoe comprising: an upper having a heel region; a rear sole secured below the heel region of the upper…”.

            The CAFC stated “given the [‘126] patent”™s disparagement of conventional fixed rear sole shoes which suffer from rear sole wear, its characterization of the invention as a removable and/or rotatable rear sole, and its uniform, lengthy disclosure of such rear soles, we agree with the district court”™s construction of ‘rear sole secured’ to mean ‘rear sole selectively or permanently fastened, but not permanently fixed into position'” which excludes conventional fixed rear soles including the accused products sold by Nike, Adidas, New Balance, Asics, and Puma.

            Priority Claim

Akeva’s Continuation Patents claim priority to the ”™126 patent through a chain of intervening continuations, including a continuation-in-part of the ”™126 patent, U.S. Patent No. 6,604,300 (”™300 patent) which, as discussed above, excluded an athletic shoe with a conventional fixed rear sole. However, in the Continuation Patents, Akeva amended the specifications to circumvent the disclaimer language of the ‘300 patent to include an athletic shoe with a conventional fixed rear sole. By doing so, the CAFC asserted the chain of priority was broken, and the asserted claims of the Continuation Patents cannot claim priority to the ”™126 patent for a shoe having a conventional fixed rear sole.

            Additionally, the CAFC stated that a disclaimer regarding claim scope made during prosecution may be rescindable, but that a disclaimer in the specification often broadens the description which likely adds new matter.

            Analysis

The Akeva decision, though non-precedential, reinforces the proposition that comments made in an application may limit the scope of the claims. In Akeva, elements that the CAFC referred to as “disparaging” of potentially infringing products when describing the problem solved by the invention in an original application may preclude claiming the disparaged elements. Furthermore, removing these statements in a continuation or continuation-in-part application may result in a finding of new matter, which could break a chain of priority to the original application. As a result, claimed features in the continuation-in-part application that rely on the new matter would only have priority to the filing date of the continuation-in-part application rather than to the filing date of the parent application. Therefore, Applicants may wish to take the Akeva decision into consideration when drafting a Specification, or making changes to the Specification when filing a continuation or continuation-in-part application.