Prosecution Disclaimer Applies Unless it is Rescinded with Crystal Clarity; Claim Construction is Not Required if it Would Not be Material to Disposition of the Case

Hakim v. Cannon Advent Group, PLC, __ F.3d __ (Fed. Cir. Feb. 23, 2007) (Michel, NEWMAN, Rader) (W.D. La.: James)

KEY WORDS:  CLAIM CONSTRUCTION (NARROW), PROSECUTION DISCLAIMER (YES), ANTICIPATION (YES), EXPERT TESTIMONY

Fed Cir affirms summary judgment of noninfringement for one patent and invalidity for anticipation of another. The patents cover spill-resistant drinking cups. For the first patent, the applicants had broadened the claims from reciting a "slit" in the cover to reciting an "opening"; the district court properly limited the claims to a slit, because the applicant, by telling the examiner only that he was broadening the claims, did not provide sufficient clarity to note that he was wiping out a distinction (i.e., slit) that he previously made when arguing over prior art in the parent case. [This is an important case, because I doubt many other patents have any plainer rescissions of their disclaimers.] On anticipation of the second patent, the Fed Cir first noted that the district court did not need to perform a claim construction because there was no indication that any particular construction would have changed the result. On the merits, the district court did not err in finding that the prior art disclosed a limitation that Hakim said it did not. Finally, there was no err in rejecting Hakim's proffered expert declaration because Hakim had never identified himself as an expert and had not filed an expert report, and there was no need for expert testimony in any event. (The district court had placed the word "technology" in quotes when referring to the "technology" in this case -- indicating that he saw "technology" to be less than descriptive of a sippy cup.)

Note: The Fed Cir unfortunately referred to "recapture" here, which may lead some to cite this case in the context of the well-known recapture doctrine for broadening during reissue. This case is very different.