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Essential Element “Immediately” Should Not Be Read into Claim Where Broadened Reissue Claim Language Lacked an Appropriate Textual Reference

January 24, 2007

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Last Month at the Federal Circuit - February 2007

Judges: Bryson, Clevenger, Gajarsa (author)

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

In MBO Laboratories, Inc. v. Becton, Dickinson & Co., No. 06-1062 (Fed. Cir. Jan. 24, 2007), the Federal Circuit vacated the district court’s SJ of noninfringement of U.S. Patent Reissue No. 36,885 (“the ’885 patent”), affirmed-in-part and reversed-in-part the district court’s claim construction, and remanded the case to the district court for further proceedings consistent with the Court’s findings.

The ’885 patent, a broadening reissue of U.S. Patent No. 5,755,699 (“the ’699 patent”), is directed to a hypodermic safety syringe that plaintiff MBO Laboratories, Inc. (“MBO”) claimed to be safer than the prior art. The invention provides greater safety because shortly after removal from the patient, the needle slides into a guard body and then is covered by a blocking flange, at which point the needle can no longer cause injury. From MBO’s perspective, the ’699 patent clearly captured embodiments of the invention where the needle retracted into a stationary guard, but not the additional embodiments where the guard sleeve moved forward relative to the needle. MBO thus filed a broadening reissue application with the explicitly stated purpose of covering both configurations. The PTO granted the application without objection, resulting in the issuance of the ’885 patent.

In the district court, the parties disputed the meaning of various claim terms in the ’885 patent, which the court construed after holding a Markman hearing. Under the district court’s claim construction, MBO conceded that there was no infringement. Accordingly, the district court granted SJ in favor of defendant Becton, Dickinson & Company. MBO timely appealed from the district court’s claim construction.

MBO appealed the district court’s construction of six claim terms, namely, “immediately,” “relative movement,” “slidably receiving,” “adjacent,” “proximity,” and “mounted on said body.” The district court construed the first claim term “immediately” so as to require the “activation of the blocking flange simultaneously with removal from the patient.” On appeal, the Federal Circuit affirmed this construction, finding it clear from the specification and the prosecution history that immediate needle safety upon removal from the patient was an essential feature of the invention. The Federal Circuit, however, disagreed with the district court’s incorporation of the “immediately” limitation into reissue claims 32 and 33. Although sympathetic with the district court’s choice, “since we agree that safety at once upon removal from the patient is an essential element of the invention,” the Federal Circuit nevertheless did not find “a textual reference in the actual language of the claim with which to associate [the] proffered claim construction.” Slip op. at 11. Thus, the Federal Circuit held the district court’s construction of reissue claims 32 and 33 to be erroneous.

The second and third disputed claim terms, “relative movement” and “slidably receiving,” relate to the movement of the guard sleeve and needle relative to each other. “Relative movement” was incorporated in the ’885 patent claims to replace the term “retraction” in order to clearly capture embodiments where the guard sleeve moved forward to enclose the needle. This was the explicitly stated purpose of the reissue application, which the PTO allowed without objection. The district court, however, limited the claims to “retraction,” in part relying on the recapture rule, which bars reclaiming patent scope that had been intentionally surrendered. On appeal, the Federal Circuit noted that the recapture rule was inappropriately applied here, given the clear statements in the prosecution history regarding MBO’s stated intent to broaden the coverage of the ’699 patent. In so deciding, the Federal Circuit explained that claim construction should not be blind to validity issues, knowing that an unduly broad claim may be held invalid. The Court, however, indicated that “validity construction should be used as a last resort, . . . [and c]onstruction of the claims here is not so difficult a problem as to require resort to the . . . maxim” that claims are to be construed to preserve validity. Id. at 14. The Federal Circuit also noted that whether the broadened claims were invalidated by the recapture rule was a separate issue not presently on appeal.

“Slidably receiving,” present in both the original and reissue claims, was construed by the district court as relating to “a stationary body into which the movable needle retracts.” The Federal Circuit disagreed with that analysis, given that figures in the ’885 patent show the needle extending forward, not retracting backwards, relative to the guard body. Accordingly, the Federal Circuit held that terms “relative movement,” “slidably receiving,” and their cognates “permit the needle and guard to slide in any manner.” Id. at 15.

Regarding the fourth claim term “adjacent,” the district court found that it meant that the blocking flange be “contiguous or connected” with the front face of the guard body. Two different preferred embodiments, however, “clearly show the blocking flange resting somewhat in front of the front surface and not in any way ‘contiguous or connected’ with it.” Id. at 16. Because a “claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct,” id., the Federal Circuit on appeal held that the proper construction of “adjacent” is “next to.”

Similarly, the Federal Circuit observed that the figures in the specification belied the district court’s narrow interpretation of the fifth disputed claim term “proximity.” The district court interpreted “proximity” to require that the needle be “flush with” the front of the guard when the flange activates. The embodiments of the invention, however, as reflected in the figures, indicated that the flange would “activate slightly but definitely before the needle submerges fully into the guard body and has its tip flush with the front; . . . .” Id. (emphasis in original). Thus, according to the Court, the proper construction of the term “proximity” is “near.”

Finally, the Federal Circuit also found error in the district court’s construction of the sixth and final disputed claim term “mounted on said body.” The district court construed the term to mean that mounting should be on the body’s exterior. The Federal Circuit observed that this construction was too narrow, since although the patent figures depicted the flange connected mainly to the outside, there was no indication in the claims that the term was to be construed as narrowly. Declaring that “[l]imiting claims from the specification is generally not permitted absent a clear disclosure that the patentee intended the claims to be limited as shown,” id. at 17, the Federal Circuit held that the proper construction for “mounted on said body” is “attached to said body.” Id. The Federal Circuit thus vacated the district court’s SJ of noninfringement and remanded the case for further proceedings.