Thursday, January 25, 2007

Intrinsic Evidence Reverses Claim Construction

MBO Laboratories, Inc. v. Becton, Dickinson & Co. (06-1062) - Jan. 24, 2007

Plaintiff MBO appealed a summary judgment of noninfringement of U.S. Patent No. RE 36,885 after a Markman construed the various disputed claim terms directed to a hypodermic safety syringe. MBO conceded that under the district court’s claim construction there was no infringement of the patent claims. The district court therefore granted summary judgment in favor of defendant Becton.

The reissue patent came about as a result of an original patent, 3 continuations, and a CIP. While the reissue patent was the only one being asserted, the CAFC determined that the prosecution history of the entire family was relevant to the claim construction analysis per Microsoft v. Multi-Tech Systems. Using this framework, the CAFC claim construction analysis included the following disputed terms:

(1) A method of immediately and positively precluding needlestick injury

The term "immediately" appeared only in the preamble of certain claims. The district court found that the preamble limited these claims. The district court also read this term into other claims where the word "immediately" did not appear. In reviewing the specification, the CAFC noted that remarks pertaining to "the present invention" were instructive in establishing a definition for the term. Furthermore, prosecution arguments distinguishing the claims from the prior art further supported the lower court's definition and the CAFC affirmed this part of the construction.

However, the CAFC reversed the lower court's insertion of this limitation into claims where the word did not appear, even though the court found it an "essential element of the invention":

Reissue claims 32 and 33 do not contain the word "immediately," but the district court nonetheless used its construction of that term to limit the claims. We sympathize with the district court’s choice, since we agree that safety at once upon removal from the patient is an essential element of the invention as described by MBO. However, we cannot endorse a construction analysis that does not identify "a textual reference in the actual language of the claim with which to associate a proffered claim construction."
(2) "Relative Movement"

The primary reason for the reissue application was that the original claims only covered "retraction" of the needle into a stationary guard. In the reissue, the term was changed to recite a "relative movement" to capture forward movement as well. The PTO allowed the reissue without objection, but the district court nonetheless limited the claims to "retraction," thus negating the expansion of claim scope permitted by the PTO under the recapture rule.

While the CAFC expressed no opinion on the invocation of the recapture rule, the court found that the district court erred by applying the recapture rule to rewrite the claims, stating that "validity construction should be used as a last resort, not a first principle." The CAFC concluded:
MBO clearly sought in reissue to broaden the scope of its patent coverage by rewriting its claims to cover all relative movement, not just retraction. That broadening was the explicitly stated purpose of the reissue application . . . In light of these clear statements in the prosecution history of the RE ’885 patent, we are compelled to give effect to MBO’s stated intent to broaden the coverage of its claims. Whether those broadened claims are invalidated by the recapture rule is an issue separate from construction. In the narrowly limited appellate posture of this case, only the question of infringement, not validity, is before us.


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