Akeva L.L.C. v. Nike, Inc. ( 2020 )

Case: 19-2249 Document: 57 Page: 1 Filed: 07/16/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
AKEVA L.L.C.,
Counterclaimant-Appellant
v.
NIKE, INC., ADIDAS AMERICA, INC.
Counter-Defendants-Appellees
______________________
2019-2249
______________________
Appeal from the United States District Court for the
Middle District of North Carolina in No. 1:09-cv-00135-
LCB-JEP, Judge Loretta C. Biggs.
______________________
Decided: July 16, 2020
______________________
MATIAS FERRARIO, Kilpatrick Townsend & Stockton
LLP, Winston-Salem, NC, for counter-defendant-appellee
Adidas America, Inc. Also represented by MITCHELL G.
STOCKWELL, Atlanta, GA.
CHRISTOPHER J. RENK, Banner & Witcoff, Ltd., Chi-
cago, IL, for counter-defendant-appellee Nike, Inc. Also
represented by MICHAEL JOSEPH HARRIS, JANICE V.
MITRIUS, VICTORIA R. M. WEBB, KEVIN DAM.
Case: 19-2249 Document: 57 Page: 2 Filed: 07/16/2020
2 AKEVA L.L.C. v. NIKE, INC.
DANIEL A. KENT, Kent & Risley, LLC, Alpharetta, GA,
for counterclaimant-appellant. Also represented by
STEPHEN ROBERT RISLEY, CORTNEY ALEXANDER, OLIVIA
MARBUTT, SAMUEL NAJIM.
______________________
Before NEWMAN, O’MALLEY, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Akeva L.L.C. (Akeva) owns a portfolio of footwear pa-
tents including U.S. Patent Nos. 5,560,126 (’126 patent);
6,966,130 (’130 patent); 7,114,269 (’269 patent); 5380,350
(’350 patent); and 7,540,099 (’099 patent); (collectively, the
Asserted Patents). The ’130, ’269, ’350, and ’099 patents
all claim priority to the ’126 patent and are referred to as
the Continuation Patents. Asics filed for declaratory judg-
ment that it does not infringe the Asserted Patents and, in
response, Akeva countersued for patent infringement. Ak-
eva also added Nike, Inc., adidas America, Inc., New Bal-
ance Athletic Shoe, Inc., and Puma North America, Inc. to
the suit alleging infringement of certain claims of the As-
serted Patents. The district court granted the Defendants
summary judgment of no infringement as to the ’126 pa-
tent, and invalidity as to the asserted claims of the Contin-
uation Patents. Akeva now appeals. Because the district
court correctly construed the claim term “rear sole secured”
to exclude conventional fixed rear soles and also properly
concluded that the Continuation Patents are not entitled
to claim priority to the ’126 patent, we affirm the district
court’s grant of summary judgment.
BACKGROUND
The Asserted Patents describe improvements to ath-
letic shoe rear soles and midsoles. The specification of the
’126 patent describes the problem of rear sole wear in
which “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
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AKEVA L.L.C. v. NIKE, INC. 3
satisfactory condition.” ’126 patent col. 1 ll. 30–33. “An-
other problem associated with outsole wear is midsole com-
pression.” Id. at col. 1 ll. 34–35. The ’126 patent
specification explains that “after repeated use, the midsole
is compressed, . . . thereby causing it to lose its cushioning
effect.” Id. at col. 1 ll. 37–39. “[I]n accordance with the
purpose of the invention,” the Summary of the Invention
describes a shoe having “a rear sole detachably secured or
rotatably mounted to the heel support.” Id. at col. 3 ll. 25–
42. The specification describes that midsole compression
can be alleviated by placing a graphite insert into the mid-
sole. Id. at col. 3 ll. 34–42. The Abstract likewise describes
the invention as “[a] shoe includ[ing] a heel support for re-
ceiving a rotatable and replaceable rear sole to provide
longer wear. The shoe may also include a graphite insert
supported by the heel support between the heel and the
rear sole to reduce midsole compression and provide addi-
tional spring.” ’126 patent Abstract. The ’126 patent thus
discloses a solution to the problem with a conventional
fixed rear sole by replacing it with either a detachable rear
sole that can be replaced or a rear sole that is rotatable.
The Continuation Patents claim priority to the ’126 pa-
tent through a chain of intervening continuations, includ-
ing the previously litigated U.S. Patent No. 6,604,300 (’300
patent). The ’300 patent is a continuation-in-part of the
’126 patent. In a previous appeal, we found that the ’300
patent specification disclaimed conventional fixed rear
soles, thus preventing the claims of the ’300 patent from
encompassing shoes with a conventional fixed rear sole.
Akeva L.L.C. v. Adidas-Salomon AG, 208 F. App’x 861,
864–65 (Fed. Cir. 2006) (Akeva I). In keeping with the dis-
closure of the ’300 patent, we construed the claim term
“rear sole secured”—the same disputed claim term we con-
front here for the ’126 patent—to mean “selectively or per-
manently fastened, but not permanently-fixed into
position.” Id. at 864. More specifically, this means that the
“rear soles that can be rotated or replaced,” but they are
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4 AKEVA L.L.C. v. NIKE, INC.
not permanently fixed in position. Id. at 865. As filed, the
’296 continuation patent had the same specification as the
’300 patent, including the disclaimer, but Akeva amended
the specification during prosecution to circumvent the dis-
claimer language relied on in Akeva I and filed an Infor-
mation Disclosure Statement (IDS) disclosing our decision
in Akeva I and a statement explaining that it intended to
rescind that disclaimer from the ’296 patent. Asics Am.
Corp. v. Akeva L.L.C., 1:09–cv–00135, at 29–30 (M.D.N.C.
Mar. 29, 2019) (Asics). The remaining Continuation Pa-
tents are continuations of the ’296 patent and either in-
cluded these amendments at filing or similarly amended
the specification during prosecution. Id.In the present case, all of the accused shoes have a con-
ventional fixed rear sole, and, in a motion for summary
judgment, Defendants argued that the term “rear sole se-
cured” in claim 25 of the ’126 patent, just as with the claims
of the ’300 patent asserted in Akeva I, could not include a
shoe with a conventional fixed rear sole. Claim 25 states:
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 sur-
faces and supported between at least a por-
tion 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 per-
pendicular to a major axis of the shoe so
that the interior portion of the plate is de-
flectable relative to the peripheral edges in
a direction substantially perpendicular to
the major axis of the shoe.
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AKEVA L.L.C. v. NIKE, INC. 5
’126 patent claim 25 (emphasis added).
As an initial matter, the district court in the present
case declined to apply collateral estoppel against Akeva’s
proposed construction, in light of the final decision in Ak-
eva I as to the meaning of “rear sole secured,” because the
’300 patent is a continuation-in-part of the ’126 patent and
the patents, although very similar in content, do not share
an identical written description. Asics at 4. Nevertheless,
after thoroughly reviewing the ’126 patent specification,
the district court found that the ’126 patent disclaimed con-
ventional fixed rear soles from its invention, concluding
that “rear sole secured,” in the context of the ’126 patent,
means “rear sole selectively or permanently fastened, but
not permanently fixed into position.” See id. at 18–19. In
other words, the rear sole could be (1) detachable or (2) at-
tached and rotatable, but a conventional fixed rear sole is
not within the scope of the claim term. The district court
thus entered summary judgment that Defendants did not
infringe the ’126 patent.
As for the Continuation Patents, the district court rec-
ognized that Akeva had amended the specifications to cir-
cumvent the disclaimer language this court relied on for
the ’300 patent in deciding Akeva I, in an effort to claim
shoes having conventional fixed rear soles. Id. at 28–33. It
was undisputed, however, that if the Continuation Patents
were not entitled to claim priority to the ’126 patent, then
the asserted claims would be invalid under 35 U.S.C. § 102due to Nike’s sales of its accused shoes with conventional
fixed rear soles in the United States more than one year
prior to the Continuation Patents’ filing dates. Id. at 35–
36. In light of this court’s Akeva I ruling that the ’300 pa-
tent specification disclaimed and disavowed conventional
fixed rear sole shoes as well as the district court’s own rul-
ing that the ’126 patent specification also disclaimed and
disavowed conventional fixed rear sole shoes, the district
court concluded that Akeva’s amendments to the specifica-
tions of the Continuation Patents added new matter by
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6 AKEVA L.L.C. v. NIKE, INC.
broadening the scope of the disclosure and therefore they
could not claim priority to the ’126 patent. Id. at 29–33. As
a result, because Nike’s accused product was on sale before
the filing date of the Continuation Patents, the Continua-
tion Patents were “invalid under 35 U.S.C. § 102 to the ex-
tent that they purport to include shoes with” conventional
fixed rear soles. Id. at 36.
Akeva timely appealed. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
DISCUSSION
I.
Claim construction is as a question of law that may in-
volve underlying fact inquiries. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 326 (2015); Wi-LAN USA, Inc.
v. Apple Inc., 830 F.3d 1374, 1381 (Fed. Cir. 2016). This
court reviews the district court’s claim construction based
solely on intrinsic evidence de novo, and reviews subsidiary
fact findings for clear error. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 789 F.3d 1335, 1337 (Fed. Cir. 2015).
Claim terms are given their ordinary and customary
meaning, as would be understood by a person of ordinary
skill in the art at the time of invention in light of the claim
language, the specification, and prosecution history. Phil-
lips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005).
“A claim term should be given its ordinary meaning in the
pertinent context, unless the patentee has made clear its
adoption of a different definition or otherwise disclaimed
that meaning.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d
732, 734 (Fed. Cir. 2014). The patent may provide such a
clear intent either expressly or by implication. Luminara
Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353
(Fed. Cir. 2016).
The crux of the claim construction dispute in this ap-
peal is similar to an issue we confronted in Akeva I as to
the ’300 patent: whether the claim term “rear sole secured,”
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AKEVA L.L.C. v. NIKE, INC. 7
this time in the context of the ’126 patent, encompasses
conventional fixed rear soles. We agree with the district
court that the ’126 patent specification, like the related
’300 patent, clearly disclaims conventional rear fixed soles
and therefore affirm its claim construction. As we stated
in SciMed Life Systems Inc. v. Advanced Cardiovascular
Systems Inc., “[w]here the specification makes clear that
the invention does not include a particular feature, that
feature is deemed to be outside the reach of the claims of
the patent.” 242 F.3d 1337, 1341 (Fed. Cir. 2001); Ancora,
744 F.3d at 734.
As discussed above, numerous statements in the speci-
fication make it clear a conventional fixed rear sole is not
within the scope of the invention. ’126 patent col. 1 l. 9–
col. 3 l. 43. Under Field of Invention, the patent describes
“[t]he present invention” as “relat[ing] generally to an im-
proved rear sole for footwear and, more particularly, to a
rear sole for an athletic shoe with an extended and more
versatile life and better performance in terms of cushioning
and spring.” Id. at col. 1 ll. 9–12. The Background of the
Invention section observes that, with conventional athletic
shoes, “the sole is attached to the upper as a one-piece
structure, with the rear sole being integral with the for-
ward sole.” Id. at col. 1 ll. 14–22. The Background then
disparages this conventional design for two reasons: (1)
outsole wear, particularly in the heel, “requiring replace-
ment of the entire shoe even though the bulk of the shoe is
still in satisfactory condition,” and (2) midsole compression
where the midsole, after repeated use, loses its cushioning
effect. Id. at col. 1 ll. 23–42. The Background asserts that
“[t]o date, there is nothing in the art to address the com-
bined problems of midsole compression and outsole wear in
athletic shoes, and these problems remain especially se-
vere in the heel area of such shoes.” Id. at col. 1 ll. 52–55.
The Summary of the Invention states that the inven-
tion is a shoe that “includes an upper, a forward sole at-
tached to the upper, a heel support attached to the upper,
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8 AKEVA L.L.C. v. NIKE, INC.
and a rear sole detachably secured or rotatably mounted to
the heel support.” Id. at col. 3 ll. 25–30 (emphasis added).
The forward sole and heel support are thus conventionally
attached to the upper, but the rear sole is not. In “another
aspect” of the invention, the Summary describes a shoe
with a heel support defining a “recess” and the rear sole,
rather than being conventionally fixed to the shoe, is in-
stead “receivable in the recess of the heel support . . . .” Id.
at col. 1 ll. 34–42. The Abstract likewise focuses on the rear
sole being replaceable or rotatable, by describing the inven-
tion as a shoe that “includes a heel support for receiving a
rotatable and replaceable rear sole to provide longer wear.”
Id. at Abstract.
The Description of the Preferred Embodiments section
discloses a multitude of embodiments illustrated across 36
figures, with each embodiment requiring either a detacha-
ble or rotatable rear sole that is received within a recess of
the heel support, as the district court correctly found. Asics
at 14. For example, for the first disclosed embodiment,
“[t]he rear sole 28 is detachable from the heel support 26.”
’126 patent col. 5 l. 42. Alternatively, “[t]he rear sole 28
can also be rotatably mounted on the heel support 26.” Id.
at col. 5 ll. 47–48. “The general features of the first embod-
iment,” according to the patent, “will apply to all embodi-
ments unless otherwise noted.” Id. at col. 8 ll. 9–12
(emphasis added). The patent then stresses again that the
purpose of the detachable or rotatable rear sole is to com-
pensate for rear sole wear as well providing the user differ-
ent performance characteristics:
The ability to remove the rear sole serves several
purposes. The user can rotate and/or invert the
rear sole to relocate the worn section to a less crit-
ical area of the sole, and eventually replace the rear
sole altogether when the sole is excessively worn.
Additional longevity in wear may also be achieved
by interchanging removable rear soles as between
the right and left shoes, which typically exhibit
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AKEVA L.L.C. v. NIKE, INC. 9
opposite wear patterns. However, some users will
prefer to change the rear soles not because of ad-
verse wear patterns, but because of a desire for dif-
ferent performance characteristics.
Id. at col. 7 ll. 50–59. Moreover, the specification also con-
templates a rear sole that is rotatable without also being
removable. Id. at col. 8 ll. 32–34 (“[T]he same benefits of
this invention can be achieved if only a portion of the rear
sole is rotatable or removable.”); col. 8 ll. 37–40 (“For ex-
ample, this invention includes the embodiment whereby a
portion of the rear sole, e.g., the center area, remains sta-
tionary while the periphery of the ground-engaging surface
rotates and/or is detachable.”).
The overwhelming focus of the remainder of the writ-
ten description is devoted to different ways of securing the
rear sole within the recess of the heel support, whether by
press-fitting, protrusions and slots, tongue and groove,
locking ring, and/or spiral grooves to screw the rear sole
into the recess, all described in the context of a rear sole
that is removable and/or rotatable. See, e.g., id. at col. 6 ll.
30–46, col. 6 l. 66–col. 7 l. 14, col. 7 ll. 35–49, col. 8 ll. 13–
29, col. 8 ll. 41–67, col. 9 l. 45–col. 10 l. 4. In sum, given the
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 se-
cured” to mean “rear sole selectively or permanently fas-
tened, but not permanently fixed into position.” 1 Asics at
18–19 (explaining further that this construction reflects
the core invention of overcoming the problem “of the rear
1 As the district court noted, this construction is con-
sistent with our construction of “secured” for the related
’300 patent in Akeva I. Asics at 22–24.
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10 AKEVA L.L.C. v. NIKE, INC.
sole wearing out faster than the rest of the shoe” by provid-
ing “rear soles that can be rotated or replaced”).
Akeva argues that the ’126 patent specification did not
disclaim conventional fixed rear soles because, in its view,
the specification discloses two distinct inventions that do
not depend on each other: (1) rotatable and/or detachable
rear soles and (2) a flexible plate in the midsole. We disa-
gree, because the specification consistently describes the
invention as a shoe with a detachable or rotatable rear sole
that may additionally have a flexible plate (e.g., graphite
insert). As the Abstract makes clear, the invention is “[a]
shoe [that] includes a heel support for receiving a rotatable
and replaceable rear sole to provide longer wear. The shoe
may also include a graphite insert.” ’126 patent Abstract
(emphasis added). Moreover, when the Summary of the In-
vention refers to a “graphite insert,” it is combined with a
“rear sole receivable in the recess of the heel support,” not
a conventional fixed rear sole. Id. at col. 3, ll. 34–42. Akeva
argues that Figure 28’s depiction of one possible configura-
tion of the graphite insert supports its view. But Figure 28
is stated to be “an isometric view of a graphite insert for
use in the shoe of the present invention,” Id. at col. 4 ll. 48–
49, and, as already explained, the disclosed invention ex-
cludes conventional fixed rear soles, as the “purpose of the
invention” is to overcome rear sole wear with a shoe having
a detachable or rotatable rear sole that may additionally
include a graphite insert. See SciMed Life Sys., Inc. v. Ad-
vanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44
(Fed. Cir. 2001) (finding that “the SciMed patents distin-
guish the prior art on the basis of the use of dual lumens
and point out the advantages of the coaxial lumens used in
the catheters that are the subjects of the SciMed patents”
and that the specification included these dual lumens as
part of “the present invention”); Alloc, Inc. v. Int’l Trade
Comm’n, 342 F.3d 1361, 1371 (Fed. Cir. 2003) (“[T]he ’907
specification indicates that the invention is indeed exclu-
sively directed toward flooring products including play.
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AKEVA L.L.C. v. NIKE, INC. 11
Moreover, unlike the patent-at-issue in Sunrace, the ’907
specification also distinguished the prior art on the basis of
play.”).
Akeva also relies on the specification’s statement that
“[t]he graphite insert also need not be used only in conjunc-
tion with a detachable rear sole, but can be used with per-
manently attached rear soles as well” as proof that the
specification contemplates a flexible plate inserted into the
midsole of a shoe with a conventional fixed rear sole. Ap-
pellant’s Br. at 30–31; ’126 patent col. 13 ll. 59–61. In Ak-
eva I, we considered essentially the same statement in the
’300 continuation-in-part patent specification, which
stated “[t]he flexible region also need not be used only in
conjunction with a detachable rear sole, but can be used
with permanently attached rear soles as well.” Akeva I,
208 F. App’x at 864–65 (quoting ’300 patent col. 10 ll. 12–
16). There, “when read in the context of the specification,”
we held that “[t]he ‘permanently attached’ language in the
specification contemplates shoes with heels that are per-
manently fixed (cannot be interchanged) but are rotatable.”
Id. at 865. We find that the same is true for the “perma-
nently attached” language in the ’126 patent, when read in
the context of its specification. Although the specifications
of the two patents are not identical, the ’126 patent, as we
observed above, describes an embodiment having a rear
sole that is rotatable but not removable, using language
virtually identical to a passage in the ’300 patent we cited
and relied on in Akeva I. Compare ’126 patent, col. 8 ll. 30–
40, with ’300 patent, col. 7 ll. 35–42; see also ’126 patent,
col. 3, ll. 29–30 (describing “a rear sole detachably secured
or rotatably mounted to the heel support”). Accordingly,
when read in the context of the ’126 patent specification,
we agree with the district court that the “permanently at-
tached rear soles” discussed are rotatable (but not remova-
ble) rear soles. At no point in the ’126 patent specification
is a shoe with a conventional fixed rear sole contemplated
as part of the invention.
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12 AKEVA L.L.C. v. NIKE, INC.
Akeva also argues that the doctrine of claim differenti-
ation supports its position. We disagree. Independent
claim 25 requires the rear sole to be “secured.” ’126 patent
at claim 25. Claims 33 and 40 both depend from claim 25
and include a rear sole “detachably secured” and a “means
for detachably securing the rear sole,” respectively. Id. at
claims 33, 40. Akeva argues that claim 25 must be broader
than these dependent claims and therefore must include a
conventional fixed rear sole. But claim 25 encompasses
both non-detachable, rotatable rear soles as well as detach-
able rear soles under the district court’s construction, with
which we agree. Akeva’s claim differentiation argument
therefore is inapposite.
In view of the foregoing, we agree with the district
court that the ’126 specification clearly disclaims shoes
with conventional fixed rear soles. Accordingly, we agree
with the district court’s ruling that the Defendants’ ac-
cused products do not infringe the ’126 patent.
II.
We now turn to whether the Continuation Patents may
properly claim priority to the ’126 patent. Akeva does not
dispute that the asserted claims of the Continuation Pa-
tents are invalid if they are not entitled to the ’126 patent’s
priority date. To claim priority to a patent earlier in the
priority chain, our case law emphasizes that there must be
a continuity of disclosure. Hollmer v. Harari, 681 F.3d
1351, 1355 (Fed. Cir. 2012); Zenon Envtl., Inc. v. U.S. Filter
Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).
Thus, in this case, to be entitled to claim priority to the ’126
patent, there must be adequate written description support
for the Continuation Patent claims through the chain of ap-
plications leading back to the ’126 patent, which here in-
cludes 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,
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AKEVA L.L.C. v. NIKE, INC. 13
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.
As the district court correctly concluded, the funda-
mental problem with Akeva’s priority argument is that the
’300 patent disclaims and therefore does not disclose shoes
with conventional fixed rear soles. Akeva I, 208 F. App’x at
865. Due to this break in the priority chain, the asserted
claims of the Continuation Patents cannot claim priority to
the ’126 patent for a shoe having a conventional fixed rear
sole. Hollmer, 681 F.3d at 1355; Zenon, 506 F.3d at 1378;
Lockwood, 107 F.3d at 1571–72. And as explained above,
because we agree with the district court that the ’126 pa-
tent likewise disclaims and therefore does not disclose
shoes with a conventional fixed rear sole, Akeva’s priority
claim argument fails for this reason as well.
Akeva’s argument that the Continuation Patents re-
scinded the prior disclaimers and that the Continuation
Patents should thus be able to claim priority to the ’126
patent is not persuasive. Akeva has provided no case law
support for its position that a disclaimer in the specifica-
tion can be later rescinded and undone by amendments to
a subsequent continuation specification without this new,
expanded scope of the disclosure constituting new matter
in that subsequent continuation.
Akeva would have us look to Hakim v. Cannon Avent
Group, PLC, 479 F.3d 1313, 1317–18 (Fed. Cir. 2007), and
Luv N’ Care, Ltd. v. Jackel International Limited, 115 F.
Supp. 3d 808, 819–21 (E.D. Tex. 2015), as examples of dis-
claimers of claim scope that were successfully rescinded in
a later-filed continuation patent. But those cases involve
disclaimers regarding the claim scope made during prose-
cution, unlike the specification disclaimer in the present
case. In those cases, the written description support for the
asserted claims always existed in the prior patents, and the
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14 AKEVA L.L.C. v. NIKE, INC.
patent owner then in the subsequent application filed a
statement explicitly rescinding that prior-made prosecu-
tion disclaimer. Hakim, 479 F.3d at 1317–18.
A disclaimer in the specification, on the other hand,
specifically excludes subject matter from the invention pos-
sessed by the patentee. Moreover, we have previously ex-
plained that removing limitations often broadens the
description. Anascape, Ltd. v. Nintendo of Am. Inc., 601
F.3d 1333, 1338 (Fed. Cir. 2010). In this case, for example,
rescinding the specification disclaimer would bring an en-
tirely new embodiment into the Continuation Patents that
had originally been excluded from the ’300 patent’s disclo-
sure. Such an embodiment would be “classical new matter”
and is not within the scope of the invention as disclosed in
the prior patent. Id. We therefore disagree with Akeva
that it could rescind the specification disclaimer in the ’300
patent by amending the specifications of the subsequent
continuation patents, thereby adding new matter to the
Continuation Patents, and then reach through that patent
to the ’126 patent for priority. Moreover, given our holding
as to the specification disclaimer in the ’126 patent, the as-
serted claims of the Continuation Patents cannot claim pri-
ority to the ’126 patent for the separate, additional reason
that the ’126 patent disclaimed and thus does not disclose
a shoe having a conventional fixed rear sole. The asserted
claims of the Continuation Patents thus are not entitled to
the ’126 patent’s priority date for that reason as well. 2
2 Because we affirm the district court’s invalidity
ruling as to the Continuation Patents, we need not address
the Defendants’ alternative argument that the Continua-
tion Patents are invalid because Akeva impermissibly
added new matter to their specifications, and thus lacked
adequate support for the asserted claims at the time those
continuation applications were filed. See 35 U.S.C. 132(a)
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AKEVA L.L.C. v. NIKE, INC. 15
We agree with the district court that the ’300 patent
broke the chain of priority for the asserted claims of the
Continuation Patents and that the Continuation Patents
cannot claim priority to the ’126 patent. As a result, be-
cause the parties have admitted that the accused Nike shoe
is prior art if the Continuation Patents cannot claim prior-
ity to the ’126 patent, Asics at 35–36, the asserted claims
of the Continuation Patents are invalid under the on-sale
bar. Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363,
1366–67 (Fed. Cir. 2000).
CONCLUSION
We hold that the ’126 patent disclaimed a shoe with a
conventional fixed rear sole. As a result, such a shoe is not
within the scope of claim 25 of the ’126 patent. Further,
the Continuation Patents cannot claim priority to the ’126
patent for claims covering a conventional fixed rear sole be-
cause the chain of priority was broken by the ’300 patent.
Thus, the asserted claims of the Continuation Patents are
anticipated. We have considered Akeva’s remaining argu-
ments and find them unpersuasive. The district court’s
grant of summary judgment is
AFFIRMED
(“No amendment shall introduce new matter into the dis-
closure of the invention.”).