By Robert Sleeper
Summary: The Hakim patent infringement case created a considerable confusion as patent practitioners struggle to understand the CAFC holding and the potential impact on their clients and practice. Hakim articulated limits on the inventor’s ability to broaden the scope of an invention through continuation applications. A thorough analysis of the confusing Hakim opinion reveals various potential approaches that confirm the CAFC’s analysis. The court focused on a prosecution disclaimer and did not address other well established laws surrounding claim construction, the written description requirement, or continuation practice support that could have invalidated the patent. As a result of Hakim, many issued patents may be invalidated in court if prosecution history reveals insufficiently clear rescissions of patent scope disclaimers in parent applications. The Hakim opinion should not surprise practitioners as it remains another, in a stream of recent cases, which weaken the United States patent system by imposing costly and onerous patent prosecution requirements on inventors and practitioners.