MBO Laboratories, Inc v Becton, Dickinson & Company, No. 2008-1288, 2010 U.S. App. LEXIS 7424 (Fed. Cir. April 12, 2010) [Reissue Recapture].

The Federal Circuit affirmed in part and reversed in part the decision of the District Court (Tauro, J.) granting summary judgment for defendant Becton, Dickinson & Company (“B&D”) on the grounds that certain claims of plaintiff MBO Laboratories, Inc.’s (“MBO”) U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”) were invalid for reissue recapture.

The RE ’885 patent discloses a hypodermic needle that protects against needle-stick injuries by sheathing the needle with a guard wherein the needle can slide relative to the guard. MBO sued B&D asserting that B&D’s SafetyGlide™ hypodermic safety syringe infringed certain claims of the RE ’885 patent.

Following revision of the District Court’s claim construction by the Federal Circuit, B&D moved for summary judgment of invalidity with respect to the reissue claims in the RE ’885 patent—claims 27, 28, 32 and 33—for violation of the rule against reissue recapture and non-infringement with respect to the original patent claims—claims 13, 19 and 20. The District Court found that the reissue claims were invalid for recapture, but proceeded to invalidate the entire patent, not just those specific claims. As a result, the court denied B&D’s motion for summary judgment of non-infringement as moot.

The Federal Circuit affirmed the District Court’s finding that the reissue claims were invalid because of recapture. The reissue statute, 35 U.S.C. § 251, permits a patentee to surrender a patent and seek reissue “enlarging the scope of the [original patent’s] claims’” if “through error without any deceptive intent” he claims “less than he had a right to claim in the [original] patent” and he applies for reissue “within two years form the grant of the original patent.” But under the rule against recapture, a patentee’s reissue claims are invalid when the patentee broadens the scope of a claim in reissue to cover subject matter surrendered during prosecution of the original claims. Here, the Court focused on the second step of the three-part test for application of the reissue recapture rule—whether the broader aspects of the reissued claims relate to the surrendered subject matter—because the parties did not dispute application of the first and third steps. The Federal Circuit agreed with the District Court that MBO violated the rule by claiming relative movement between the guard and the needle in the RE ’885 patent despite having “clearly and unmistakably surrendered claiming” such relative movement during prosecution of applications in the same patent family.

The Federal Circuit took this opportunity to clarify that the rule against recapture applies not just to subject matter surrendered during prosecution of the original patent corrected by reissue. In addition, “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.”

Last, the Court reversed the District Court’s decision holding the entire RE ’855 patent invalid, explaining that when a reissue patent contains the unmodified original patent claims and the reissue claims (as with the RE ’885 patent), a court can only invalidate the reissue claims under the rule against recapture. Accordingly, the Court remanded the case for consideration of B&D’s motion for summary judgment of non-infringement on the original patent claims.