July 2010 Issue

The Federal Circuit Says

Patentees may violate the rule against recapture by claiming subject matter in a reissue patent that was surrendered during the prosecution of a related patent application.  In MBO Laboratories, Inc. v. Becton, Dickinson & Co., No. 2008-1288 (Fed. Cir. Apr. 12, 2010), the Federal Circuit found that certain claims of U.S. Reissue Patent No. 36,885 (the ’885 reissue patent), owned by MBO Laboratories, Inc. (MBO), were invalid for recapturing previously surrendered subject matter. 

The technology of the ’885 reissue patent related to a design for a hypodermic safety syringe.  The design protected against needle-stick injuries by slidably retracting a contaminated needle into a fixed protective guard after the needle is removed from a patient. 

The ’885 reissue patent is a reissue of U.S. Patent No. 5,755,699 (the ’699 patent), which is part of a larger U.S. patent family.  During prosecution of related family members, MBO made numerous assertions to overcome prior art rejections.  In particular, the Court found that MBO overcame art rejections in one related patent by asserting that “[a] chief feature of [the] invention, inter alia, is . . . the safe retraction of the needle or cannula . . . into the tubular member . . . .”  Slip op. at 4-5.  The Court then found that MBO overcame prior art rejections during prosecution of another related patent by explaining that the applied reference disclosed a “needle . . . fixed to and extending from a conventional syringe barrel . . . .  The needle is not slidably received in the barrel.”  Id. at 5.  The Court also found that MBO, in a parent application, once again distinguished the applied references by explaining that its needle is slidable into the disclosed guard body.  Despite these assertions, MBO sought to reissue the ’699 patent, alleging that it was entitled to claim a system having “‘any relative movement between the needle and the body,’ not just a ‘system wherein the needle must be bodily moved toward the safety device.’”  Id. at 7.

On appeal, the Federal Circuit affirmed the lower court’s finding that certain claims of the ’885 reissue patent violated the rule against recapture.  The Court found that MBO was not entitled to claim all relative movement between the needle and guard body, as this subject matter was specifically surrendered during prosecution.  Indeed, the Court noted that substantial evidence supported the lower court’s finding of MBO clearly surrendering the rights to claim a guard body that moved relative to a fixed needle.

To support its holding, the Federal Circuit reasoned that the rule against recapture only entitles a patentee to a reissue patent for broader claims when the patentee claimed less than he/she had a right to claim in the patent through error without any deceptive intent, not through deliberate amendments or arguments designed to procure allowance of claims.  In the present case, the Court found that MBO had previously attempted to claim relative movement between a needle and an associated guard body in a related application.  The Court also found that MBO had deliberately surrendered this subject matter in an effort to overcome prior art rejections.  Thus, the Court concluded that deliberate surrender of subject matter is not an error of the kind that will justify the granting of a reissue patent drawn to the surrendered subject matter.  Id. at 11.

Furthermore, the Federal Circuit clarified that “a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related application.”  Id. at 16.  Citing to similar policy goals governing the doctrine of prosecution history estoppel, the Court reasoned that equity requires a review of a patent family’s entire prosecution history in order to prevent patentees from encroaching back into territory previously dedicated to the public.  Id. at 20.

To avoid inadvertently drafting claims that may be invalidated for violating the rule against recapture, applicants for reissue patents should review the prosecution histories of the entire patent family to ensure that the proposed reissue claims do not claim previously surrendered subject matter.  Applicants should pay particular attention to the amendments and arguments submitted to overcome prior art rejections.