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Federal Circuit Clarifies That the Rule Against Reissue Recapture Applies to Subject Matter Surrendered During Prosecution of Related Patent Applications

April 12, 2010

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Last Month at the Federal Circuit - May 2010

Judges: Gajarsa (author), Clevenger, Dyk

[Appealed from: D. Mass., Judge Tauro]

In MBO Laboratories, Inc. v. Becton, Dickinson & Co., No. 08-1288 (Fed. Cir. Apr. 12, 2010), the Federal Circuit affirmed the district court’s holding of invalidity of claims 27, 28, 32, and 33 of U.S. Reissue Patent No. 36,885 (“the RE ’885 patent”) based on the rule against recapture, and reversed the district court’s holding of invalidity of all other claims.  The Court also remanded to the district court to address Becton, Dickinson & Company’s (“Becton”) motion for SJ of noninfringement on original claims 13, 19, and 20. 

MBO Laboratories, Inc. (“MBO”) owns the RE ’885 patent, which is a reissue of U.S. Patent No. 5,755,699 (“the ’699 patent”).  The RE ’885 patent discloses a design for a hypodermic safety syringe that protects against needle-stick injuries by covering contaminated needles in a protective guard after they have been removed from a patient.  The RE ’885 and ’699 patents are members of a larger patent family that claims priority back to November 8, 1990, and that includes (1) U.S. Patent No. 5,176,655 (“the ’655 patent”); (2) a continuation-in-part of the ’655 patent, issued as U.S. Patent No. 5,395,347 (“the ’347 patent”); (3) an abandoned continuation of the ’347 patent, U.S. Patent Application No. 08/398,772 (“the ’772 application”); (4) the ’699 patent, which is a continuation of the ’772 application; and (5) the RE ’885 patent.

During prosecution of the ’655 and ’347 patents and the ’772 application, MBO submitted various claim amendments and arguments to overcome the references applied by the examiner.  In particular, during prosecution of the ’772 application, MBO argued, among other things, that “a [guard] body . . . for slidably receiving a needle” distinguished the claimed subject matter over the applied reference.  Slip op. at 6-7 (alteration in original).  Based on the arguments submitted by MBO, the examiner allowed the ’772 application, which was abandoned to pursue broader claims in the application that eventually issued as the ’699 patent. 

MBO applied for a reissue patent on July 1, 1999, arguing that it had the right to obtain claims of broader scope than those of the ’699 patent.  Specifically, MBO noted that it was entitled to claim a system having any relative movement between the needle and the body, and not just a system where the needle must be bodily moved toward the safety device.  In MBO’s reissue application, claims 1-20 represented the original patent claims from the ’699 patent and claims 21-36 represented the reissue claims.  The PTO granted MBO’s reissue application without objection, resulting in the RE ’885 patent.

MBO subsequently filed a patent infringement suit against Becton, alleging infringement of the RE ’885 patent.  The district court construed several claim terms, including “slidably receiving,” “relatively moved,” and their cognates.  On appeal, the Federal Circuit reversed the district court’s constructions of these terms, finding that the district court improperly construed the terms in light of the rule against recapture rather than the ordinary meaning of these terms.  The Federal Circuit then remanded the case to the district court for proceedings consistent with the proper claim construction. 

On remand, MBO and Becton entered into a stipulation agreement in which MBO narrowed its invalidity contentions to claims 13, 19, 20, 27, 28, 32, and 33 of the RE ’885 patent, and in which Becton admitted infringement of claims 32 and 33 of the RE ’885 patent if they were valid.  Becton then moved for SJ of invalidity regarding claims 27, 28, 32, and 33 of the RE ’885 patent, alleging that MBO had recaptured subject matter it surrendered during patent prosecution, and moved for SJ of noninfringement regarding claims 13, 19, and 20.

The district court subsequently held that the entire RE ’885 patent, including both the original and reissue claims, was invalid because reissued claims 27, 28, 32, and 33 recaptured surrendered subject matter. The district court consequently denied Becton’s motion for SJ of noninfringement as moot and entered final judgment in Becton’s favor.  MBO timely appealed, and Becton filed a motion to reconsider and amend the judgment with the district court, explaining that the motion based on the recapture rule was directed only to claims added by reissue.  The Federal Circuit suspended the appeal until the district court ruled on Becton’s motion.  Upon denial of Becton’s motion without explanation, the Federal Circuit reactivated the appeal.

On appeal, the Federal Circuit applied a three-part test to determine that MBO violated the rule against recapture by seeking to reclaim surrendered subject matter in its reissue claims.  The Court found that substantial evidence supported the district court’s finding that MBO clearly and unmistakably surrendered claiming a guard body that moved relative to a fixed needle.  MBO twice overcame the examiner’s rejections by emphasizing that the prior art disclosed a type of guard that moved relative to a fixed needle.  And MBO stressed that its needle moved relative to the guard by “slidably retracting.”  Thus, the Court held that because MBO surrendered a guard body that moved forward to cover a fixed needle and sought to reclaim relative movement in its reissue claims, MBO violated the rule against recapture.

Furthermore, in affirming the district court’s holding, the Federal Circuit also 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 patent application.  The Federal Circuit noted the similarities between the underlying goals of the rule against recapture and the doctrine of prosecution history estoppel:  preventing a patentee from encroaching back into territory previously committed to the public.  Accordingly, because the rule against recapture and prosecution history estoppel both protect the public’s interest in relying on a patent’s prosecution history, the Court held that equity requires a review of a patent family’s prosecution history to protect against recapture in a reissue patent.

However, the Federal Circuit held that the district court erroneously invalidated the entire RE ’885 patent based solely on the finding that reissue claims 27, 28, 32, and 33 were invalid under the rule against recapture.  When a reissue patent contains unmodified original patent claims and the reissue claims, a court can only invalidate the reissue claims under the rule against recapture.  The Federal Circuit noted that original claims will always survive a recapture challenge because original claims cannot be broader than themselves.  As such, the district court erroneously failed to address Becton’s motion for SJ of noninfringement of claims 13, 19, and 20.  The Federal Circuit, however, declined to address Becton’s noninfringement arguments, as these arguments were not yet considered by the district court.  Accordingly, the Federal Circuit remanded Becton’s motion for SJ of noninfringement to the district court.


Summary authored by Mirit Snir, Ph.D., technical specialist at Finnegan.