MBO Laboratories v. Becton, Dickinson & Co., 81 USPQ2d 1161 (Fed. Cir., 2007).
The patent in the MBO case relates to safety syringes that prevent accidental prickings and contamination by healthcare workers and professionals. MBO asserts that the defendant, Dickson’s syringe design infringes their patent No 36,885 syringe design. The patentee, on appeal, argued that the District Court’s claim construction on the following terms: “immediately”, “relative movement”, and “slidably receiving” was incorrect.
The case is relevant to the rule against recapture, which essentially states that once a claim limitation has been imposed to overcome novelty or obviousness rejections, prosecutorial estoppel is established that prevents the later removal of that claim limitation. The Court found that MBO did indeed violate the rule against recapture in some of its claims, however it withheld judgement on other claims that it chose not to invalidate.
According to the District Court, “immediately” was interpreted as the guard or blocking flange snapping over the used needle tip to protect against injuries. The Federal Appellate Court was in agreement with the construction term “immediately” given by the District Court because the invention section of the patent described the simultaneous removal and protection aspect of the design.
The patentee also differentiated the patent design over the previous art by pointing out that the needle was safeguarded immediately when withdrawn from the patient. The Federal Court agreed that the simultaneous removal was an essential component of the patent design. Thus the term “immediately” should be interpreted as simultaneous removal. But the Federal Court was in disagreement with the simultaneous removal condition on Claims 32 and 33 because they did not have any claim limitations that could impose the simultaneous removal condition.
The other two elements of the design patent, “relative movement” and “slidably receiving” were granted issuance of the claims. However, after 2 years, the patentee filed another patent application where he changed “slidably receiving” to “relative movement” to extend the claim protection. It was meant to include the movement of the guard covering the needle instead of just the retraction of the needle inside the guard.
The claim was granted by the PTO. But the District Court still read the term “relative movement” the same as “slidably receiving” because the relative movement had a wider meaning. If the broader term of relative movement would be taken instead of slidably receiving, then the patent claim could be invalidated because of the meaning of the term.
In footnote 3, the Federal Circuit opined “this is not to say that the recapture rule may never properly factor into claim construction. In a case where the available techniques of construction yield two possible interpretations of a reissue claim, only one of which includes previously surrendered matter, it would be correct to resolve the ambiguity by selecting the interpretation not barred by the recapture rule.”
The Federal Court stated that claim construction is done to maintain the validity of claims in cases where there is obscurity. In the aforementioned case, the term “relative movement” clearly refers to all movement, not just the retraction of the needle. Therefore, claim construction is a separate matter when compared to validity.
