MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 2010 U.S. App. LEXIS 7424 (Fed. Cir. 2010) (GAJARSA, Clevenger & Dyk)MBOLaboratories04122010
MAJOR ISSUES: reissue patent recapture rule; original claims not invalid; arguments and amendments in related applications
COMMENT. United States patent law has long allowed a patent owner to obtain reissue of patent to correct errors. The patent owner may broaden the claims but only if a reissue application is filed within two years of the original patent’s issuance. Constraining the right to obtain a broadening reissue is the judicially-developed “recapture rule,” which bars a claim that recaptures subject matter deliberately surrendered during the original prosecution. Recapture is based on concerns similar to those underlying prosecution history estoppel. In this case, the Federal Circuit holds that the surrender can occur during prosecution of a related application, clarifying a point discussed in Chisum on Patents § 15.03[e][vi]. It also reaffirms that the recapture rule does not impact the validity of the original claims that are reproduced in the reissue patent.
1. An original and reissued patent concerned a safety syringe comprising, inter alia, a guard body and a needle. U.S. Pat. No. RE 36,885, reissuing U.S. Pat. No. 5,755,699. USPatNoRE36885 See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007).
2. The claims in the original patent required, inter alia, a guard “slidably receiving” a needle. The patent owner applied for and obtained the reissue patent with additional, broader claims that required only relative movement between the guard body and the needle, thus covering syringes in which the guard body moves in relation to a fixed needle as well as ones in which the needle moves in relation to the guard.
3. The Federal Circuit held that a district court correctly held the reissue invalid for recapture. It erred in holding the original claims invalid. On remand, the district court must address an accused infringer’s motion for summary judgment of non-infringement of the original claims.
a. PROSECUTION; PRIOR ART DISTINGUISHED AS DISCLOSING A FIXED NEEDLE AND MOVING BODY. During prosecution of the application for the corrected patent and in the prosecution related applications, the patent owner distinguished prior art references cited by a PTO examiner on the ground the references disclosed a fixed needle and movable guard whereas its claims required a needle “slidably received” in the guard.
b. THREE STEP TEST. The Federal Circuit applies a “three-step test” for recapture: (1) construe the reissue claims to determine whether and in what aspect it is broader than the original patent’s claims, (2) determine whether the patent owner surrendered subject matter and whether the broader aspects relate to the surrendered subject matter, and (3) determine whether the reissue claim was “materially narrowed in other respects to avoid the recapture rule.”
c. Here, the patent owner conceded that the first and third steps were met.
d. On the second step, the patent owner’s arguments during prosecution were a deliberate surrender of a moving guard body, a surrender that directly related to the broadened reissue claims.
c. A patent owner’s arguments distinguishing some prior art based on the retractable needle feature in its claims created a reissue recapture bar even though other prior art showed the retractable needle feature, and even though the patent owner also distinguished the prior art based on another feature (safety flange).
CROSS REFERENCE. On reissue recapture, see Chisum Patent Law Digest 3320; Chisum on Patents § 15.03[e].