Many have noted the recent trend in U.S. Supreme Court review, and disagreement with, Federal Circuit decisions. Indeed, only two Federal Circuit decisions have been affirmed by the Supreme Court since 1995. Some have questioned whether this level of negative review might tend to diminish the Federal Circuit's role in harmonizing U.S. patent law – the express purpose of Congress when the Federal Circuit was instituted in 1982.
On the other hand, the Supreme Court's recent increase in oversight on the Federal Circuit coincides with the criticism that the CAFC, far from harmonizing patent law, has no consistent philosophy amongst the judges, and that the result a litigant obtains depends more on the panel it draws than on the merits, legal and equitable, of its claims. The recent decision in Hakim v. Canon Advent Group illustrates the problem. This case involved a patent for a cup with a closure that prevented accidental spills but permitted liquid to be drawn from an opening in the cup when suction was applied by sipping. One of the patents in suit recited broadly that the functional portion of the cup comprised an "opening" that was occluded when suction was not applied. In an earlier parent case, the claim had read that the opening was a "slit," and the patentee distinguished the claims in that application from the cited prior art based on the presence of a slit.
That patent was not in suit, however. The patent in suit was a continuation, and the patentee had explicitly put the Examiner on notice that the claims had been "broadened" when filing the claims reciting an "opening" rather than a "slit," although the patentee did not direct the Examiner's attention to this change as the basis for "broadening." The patent was granted with no further objection by the Examiner.
The district court construed the term "opening" to require the opening be a slit. The court held that "because Hakim did not retract any of his arguments distinguishing the prior art, he is held to the restrictive claim construction he argued during prosecution of the patent." The inconsistency in this reasoning, of course, is that the patentee did not make these arguments during prosecution of the patent-in-suit; rather, these arguments were made in the parent application. Before the Federal Circuit, Hakim argued that the district court erred, because by refiling his broader claims he had avoided any restriction on claim scope created by his arguments in the parent application. Moreover, Hakim pointed out that he had affirmatively notified the Examiner that the claims in his continuation application were broader. It is, Hakim argued, settled law that an Examiner is presumed to have performed his duties properly, and that by allowing the claims without further objection, he was entitled to a broader construction of the term "opening" than he had obtained in the narrower claims in his earlier patent.
Somewhat incredibly, the Federal Circuit affirmed. In a unanimous decision authored by Judge Pauline Newman, the Court acknowledged that Hakim had the right to file a continuation with broader claims. However, the Court then said that an applicant could not "recapture" claim scope that had been surrendered or disclaimed. The Court affirmed the district court's finding that the Examiner had allowed the claims of the patent-in-suit "without further prosecution" based on the prosecution argument in the parent application. The Court further acknowledged that an applicant had the right to rescind such surrender or disclaimer, but the panel held that an applicant must do more than Hakim had to evince the intention to rescind.
The flaw in the Federal Circuit's reasoning is that the case law cited in support of the proposition that an applicant could not recapture claim scope surrendered or disclaimed without a more explicit declaration of her intentions, all concerns prosecution of a single application. In this context the rule makes sense, since an unscrupulous applicant could recapture claim scope late in prosecution that had been surrendered to overcome art asserted against her claims early in prosecution, and without the rule an examiner would be tasked with reviewing the entire prosecution history for every amendment made throughout prosecution. The law reasonably places an affirmative duty on an applicant who wishes to recapture surrendered claim scope under these circumstances to inform the examiner with sufficient particularity that she understands the extent of the recaptured claim scope.
These considerations are, of course, non-existent when considering a continuation application. It is well-established practice that claims of broader scope may be pursued in a continuation while claims of narrower scope grant as a patent. The risks and consequences of this strategy have been highlighted in the Johnson & Johnston opinion, where the Court opined that claim scope disclosed but disclaimed (by accepting narrower claims) is "dedicated to the public," at least until a continuation having broader claims is obtained. The Federal Circuit in Hakim appears to be expanding the scope of this doctrine even more broadly, where an applicant's right to pursue broader claim scope can depend on how or whether the applicant notifies the examiner of the continuation application of any narrowing amendments or arguments made in the parent case.
Hakim has serious implications for patent prosecution, particularly in the biotechnology arts. Due to the complexity of the subject matter and the manner in which the Patent Office examines biotechnology patent applications, applicants frequently accept claims of narrower scope than filed and pursue the broader claims in continuation applications. Hakim imposes a serious burden on applicants to assess all amendments and arguments made in a narrowly-issued parent application and identify all those that must be explicitly rescinded with notice provided to the Examiner. The Hakim decision, however, does not explicate the extent of the notice that would be sufficient to support rescission. Unless Hakim requests, and the Court grants, reconsideration en banc, this decision has the capacity to make much mischief. However, the Court has in the past shown the capacity to recognize, and correct, panel decisions that misstate the law (see Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316 (Fed. Cir. 2002)). We can only hope that the Court recognizes the errors in this decision and acts swiftly to correct them.
Additional information regarding this case can be found at Patently-O.
I'm sure this is all common knowledge to many now, but it's important to realize that Hakim did not involve a "continuation" application, but rather a "continuing" application, or RCE. Have a look at the Hakim file wrapper and see.
The opinion itself apparently didn't recognize the important difference between a "continuing" and a "continuation" application, and confused the two. An inexcusable error from the CAFC IMHO ... but there it is.
Viewed in that context, the Hakim decision is a bit less outrageous than it initially appears.
Posted by: Vic Cooper | November 09, 2012 at 10:32 AM