In a decision that centered on the application of the recapture rule in the context of claim construction, the U.S. Court of Appeals for the Federal Circuit vacated a district court’s grant of summary judgment of non-infringement of a patent relating to a hypodermic safety syringe. MBO Laboratories, Inc. v. Becton, Dickinson & Co., Case No. 06-1062 (Fed. Cir., Jan. 24, 2007) (Gajarsa J.).
MBO filed suit against Becton asserting infringement of claims 13, 19, 20, 27, 28, 32 and 33 of the U.S. Patent No. RE 36,885 (the RE ’885 patent). Claims 13, 19 and 20 were original to the patent; claims 27, 28, 32 and 33 were added during the reissue process. MBO’s primary reason for seeking reissue was that its claims could be interpreted to cover only backwards movement—“retraction”—of the claimed needle into a stationary guard and not the essentially equivalent act of pushing the guard forward while holding the needle still. MBO requested the U.S. Patent and Trademark Office (USPTO) to permit a broadening of the claims, replacing the term “retraction” with “relative movement” in order to more clearly capture embodiments in which the guard sleeve was moved forward. The USPTO allowed the reissue without objection. Based partly on the recapture rule, the district court construed the claims as being limited to “retraction,” negating the expansion of claim scope permitted by the USPTO.
The recapture rule is a limitation on the ability of patentees to broaden their patents after issuance. If the reissue application is filed within two years of the patent’s initial issuance and the patentee “through error without any deceptive intention … claim[ed] … less than he had a right to,” the reissue patent’s claims may be broader than the original patent’s claims. The recapture rule excludes earlier deliberate withdrawals and amendments from the allowable scope of a reissue patent.
The Federal Circuit concluded that the district court had erred in the first instance by applying the recapture rule to rewrite the claims in order to preserve validity, essentially undoing the change that the USPTO had permitted. According to the panel, validity construction should be used only as a last resort, not as a first principle. The panel pointed out that MBO explicitly stated in reissue its intent to broaden the scope of its patent coverage by rewriting its claims to cover all relative movement, not just retraction. In light of these clear statements in the prosecution history of the reissue patent, the Court noted it was compelled to give effect to MBO’s stated intent to broaden the coverage of its claims. The Court noted that, whether those broadened claims are invalidated by the recapture rule is an issue separate from construction, noting that “in the narrowly limited appellate posture of this case, only the question of infringement, not validity, is before us."