Retractable Techs., Inc. v. Becton, Dickinson, and Co.  

The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s denial of a motion to modify a damages award following the partially successful appeal of the infringement judgment on which the award was based. Retractable Techs., Inc. v. Becton, Dickinson, and Co., Case No. 13-1567 (Fed. Cir., July 7, 2014) (Linn, J.).

Retractable Technologies sued Becton Dickinson for infringing its patents directed to medical syringes. A jury found that Becton’s 1mL and 3mL syringes infringed Retractable’s valid patent and awarded $5 million in damages as a reasonable royalty. Becton appealed the infringement and validity findings, but did not appeal the damages award.  In the initial appeal, the Federal Circuit concluded that the district court misconstrued a claim term, which resulted in the district court erroneously holding as a matter of law that Becton’s 3 mL syringe could not infringe (but affirming the judgment that the 1 mL syringe infringed and finding the claim not invalid).  (See IP Update, Vol. 14, No. 11 and IP Update, Vol. 14, No. 7).  No remand was ordered because there was no basis for a new trial on infringement or invalidity. Becton subsequently moved the district court to modify the damages award under FRCP 60(b) as Becton’s 3 mL syringe sales (not infringing) far exceeded its 1 mL syringe sales (infringing). The district court denied Becton’s motion and concluded that the mandate rule precluded it from revisiting the damages award because it was not in the scope of the original judgment and was not raised in the prior appeal nor remanded to the district court for reconsideration. Becton appealed to the Federal Circuit again.

Addressing each of Becton’s arguments in turn, the Federal Circuit first found that the damages award is not inconsistent with the original mandate. The district court is not required or permitted to revisit damages in the absence of a reversal or remand of a damages’ determination within a judgment of invalidity or infringement appealed to the Federal Circuit.

Next, the Federal Circuit found that Becton could have and should have raised the damages issue in its first appeal, but did not. The Court explained that Becton’s failure to raise the issue of remand in the prior appeal was critical given the general nature of the jury verdict on damages and Retractable’s lump-sum reasonable royalty theory that was presented to the jury. Specifically, the broad nature of the jury interrogatory seeking a damages figure did not require the jury to separate out damages for the 1mL and 3mL syringes.

Finally, the Federal Circuit found that there was not a substantial change in the evidence which required the district court to revisit damages as a decision of the Federal Circuit is not a change in evidence sufficient to create an exception to the mandate of that same decision.

Practice Note:  When appealing a multi-issue decision to the Federal Circuit (multi-patent infringement, multiple accused products, invalidity, etc.), it may be appropriate to at least mention that as a form of relief, the appellant seeks to vacate or remand the damages award and/or injunction in the event of a partial win.