District Court's Claim Construction Revised Based on Prosecution History of Reissue Patent's Relatives

Case: MBO Labs., Inc. v. Becton, Dickinson & Co. (01/24/07 - No. 06-1062)

The One Sentence Summary: On plaintiff MBO's appeal of a finding of noninfringement on summary judgment, the Federal Circuit reversed the district court's claim construction in part, and remanded for further proceedings.

What They Were Fighting About: MBO disputed the district court's claim construction of a broadening reissue patent related to a device to prevent accidental needlesticks from hypodermic syringes, while conceding that under that construction there was no infringement. While review was limited to claim construction, the Federal Circuit examined the history of the broadening reissue patent, and the prosecution history of its relatives.

Federal Circuit Holdings:

• The Federal Circuit reviewed the claim construction for several terms.
• Although MBO claimed infringement of only a broadening reissue patent, the entire prosecution history of that patent's relatives was found relevant to that analysis.
• For example, in construing the term "immediately," which literally appeared in the preamble of some but not all claims, both the district court and Federal Circuit held the limitation applied to both claims where it was in the preamble, and to some claims where it was not literally stated in the preamble.
• The court reached this holding based on language in the specifications, and based on the absence of language setting any other time for the needle being rendered safe in the reissue application. The courts also reviewed the prosecution history of its relatives, reasoning that prosecution arguments distinguishing prior art are useful in determining whether the patentee intended to surrender territory, because they show in the inventor's own words what the invention is not.
• However, the Federal Circuit refused to extend the same limitation to two reissue claims which did not use "immediately" in either the preamble or the actual claim, finding as to them no textual reference in the claim supporting the limitation.
• The district court had also applied the 'recapture rule' to preclude MBO from claiming embodiments where the needle guard moved forward (which it had sought through its broadening reissue), and limited it to those where the needle moved backward into a guard. The Federal Circuit held this error, given that the posture of the case required that the focus be on claim construction, not validity. The district court's interpretation applied rules of validity construction, but whether the broader claims were invalid under the recapture rule is a separate issue, apart from claim construction.
• Finally, the Federal Circuit took issue with two other elements of the district court's claim construction, based on standard principles.