## United States Court of Appeals for the Federal Circuit

2008-1288

MBO LABORATORIES, INC., Plaintiff-Appellant,

v. BECTON, DICKINSON & COMPANY, Defendant-Appellee.

John M. Skenyon , Fish & Richardson P.C., of Boston, Massachusetts, argued for plaintiff-appellant. With him on the brief was Jolynn M. Lussier

. William F. Lee , Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, argued for defendant-appell ee. With him on the brief were William G. McElwain , Amy K. Wigmore and Todd C. Zubler , of Washington, DC; Alexandra McTague , of New York, New York. Appealed from: United States District C ourt for the District of Massachusetts Judge Joseph L. Tauro

## United States Court of Appeals for the Federal Circuit

2008-1288

MBO LABORATORIES, INC., Plaintiff-Appellant,

v.
BECTON, DICKINSON & COMPANY, Defendant-Appellee.

Appeal from the United States District C ourt for the District of Massachusetts in case no. 03-CV-10038, Judge Joseph L. Tauro.

___________________________ DECIDED: April 12, 2010

___________________________ Before GAJARSA, CLEVENGER, and DYK, Circuit Judges

. GAJARSA, Circuit Judge

. MBO Laboratories, Inc. (“MBO”) appeals fr om the U.S. District Court for the District of Massachusetts’ judgment in favo r of Becton, Dickinson & Co. (“Becton”), invalidating MBO’s U.S. Reissue Patent No . 36,885 (the “RE ’885 pat ent”) in its entirety based on the rule against recapture. Bec ause we hold that MBO violated the rule against recapture, we affirm the district court’ s holding that RE ’885 patent claims 27, 28, 32, and 33 are invali d, but we reverse the district c ourt’s invalidation of all otherclaims. We remand to the district c ourt to address Becton’s motion for summary judgment of non-infringem ent on original claims 13, 19, and 20. BACKGROUND MBO is the assignee of the RE ’885 patent, wh ich is a reissue of U.S. Patent No. 5,755,699 (the “’699 patent”). In our previous opinion, we summarized the RE ’885 patent’s technology and prosec ution history at length. See MBO Labs., Inc. v. Becton, Dickinson & Co. , 474 F.3d 1323, 1326–28 (F ed. Cir. 2007). We only recount the facts relevant to this appeal below. I. The Technology The RE ’885 patent discloses a design for a hypodermic safety syringe. “The patented invention, the accuse d device, and relevant prior art syringes all include features intended to protect health care workers and bystanders from inadvertent needle sticks following an injecti on or drawing of fluid.” Id. at 1326. In general, these syringes protect against needle-stick injuries by covering a contaminated cannula or needle “after removal fr om the patient.” Id. The RE ’885 patent teaches a syringe that protects against needle-stick injuries by s heathing a contaminated needle in a flangecovered guard. Specifical ly, the patent discloses a needl e mounted inside a “guard body” wherein the needle can slide relative to the guard. See RE ’885 patent figs.4, 6B, col.2 ll.65–67, col.3 ll.1–3. “The needle’s sharp end protrudes through a hole in the front of the guard, permitting it to be inse rted into the patient. When the needle is removed from the patient, the health care wo rker slides the needle backwards relative to the guard.” MBO , 474 F.3d at 1326. As soon as the health care worker slides the needle passed a “blocking flange,” which is mounted to the guard body, the flange

2008-1288 2snaps over the needle tip and sheaths it inside the guard body. RE ’885 patent at [57]. The figures below from the RE ’885 paten t display how the needle, guard body, and flange appear before and after a health care worker uses a syringe on a patient.

Figures 4 and 6B from the RE ’885 patent II. Prosecution History The RE ’885 patent issued from the fifth app lication in a patent fa mily that relates back to November 8, 1990. Those patents and applications in clude (1) U.S. Patent No. 5,176,655 (the “’655 patent”); (2) a continuation-in-part of the ’655 patent, issued as U.S. Patent No. 5,395,347 (the “’347 patent”); (3) an abandoned continuation of the ’347 patent, Application No. 08/398,772 (the “’772 applicat ion”); (4) a continuation of the ’772 application, issued as the ’699 patent; and (5) a reissue of the ’699 patent, issued as the RE ’885 patent. The ’347 patent, the ’772 app lication, the ’699 patent, and the RE ’885 patent share the same specificat ion in substantial part. But the prosecution histories for only the ’655 and ’347 patents and the ’772 application are relevant to the issue on

2008-1288 3appeal. Those prosecution histories contain the following exchanges with the U.S. Patent and Trademark Office (the “Patent Office”). On November 8, 1990, MBO filed its first patent application covering a hypodermic safety syringe, 1 resulting in the ’655 patent. MBO , 474 F.3d at 1326. Prosecution claim 18 of this first applicat ion covered a “disposable medical assembly” comprising, among other things, a “gui de means and manipulating means being relatively movable .” The examiner rejected all pros ecution claims, including claim 18, as anticipated by or obvious over U. S. Patent No. 4,923,281 (“Kothe”). Id. In response, MBO amended prosecution claim 18 by adding limitations, including a means-plusfunction limitation that described the needl e retracting into the guide means. In its amendment, MBO described the limitation as a “means preventing distal emergence of the needle from said guide means after retrac tion thereof into said guide means.” Referring to this amendment, MBO explained to the examiner that “[ a] chief feature of applicants’ invention, inte r alia, is not only the safe retraction of the needle or cannula . . . into the tubular member. . . , but also precluding the inadvertent reemergence thereof to present a physical and contamination hazard.” After a series of amendments not relevant here, the exami ner allowed the claims and t he application issued as the ’655 patent with prosecution clai m 18 issuing as claim 14. Id. at 1327; ’655 patent col.11 ll. 59–60. On November 6, 1992, MBO filed its cont inuation-in-part of the ’655 patent application with claims for a hypodermic safety needle for blood collection, resulting in

1 Individuals, not corpor ations, create inventions, see Beech Aircraft Corp. v. EDO Corp. , 990 F.2d 1237, 1248 (Fed. Cir. 1993), but for simplicity we will use “MBO” as shorthand for “the inventors who assigned their patents to MBO” throughout the opinion.

2008-1288 4the ’347 patent. But the examin er rejected all claims in this application as obvious over U.S. Patent No. 5,026,356 (“Smith”). MBO , 474 F.3d at 1327. “The Smith patent discloses a safety syringe with a side-mount ed guard that snaps down and over the tip of the needle.” Id. MBO distinguished Smith by explai ning that Smith “discloses a usual needle . . . fixed to and extending from a conventiona l syringe barrel . . . . The needle is
not slidably received in the barrel.” According to MBO, “It is intended in Smith that as the needle is withdrawn from t he flesh that the slidable member . . . is bodily moved forward . . . , whereupon after the needle is withdrawn, the point onlyof the needle lies behind [the] leg [of the side-mounted guard] . . . .” In MBO’s view, th is structure raised safety concerns because the needle could not retract and an operator could only manually cover the needle tip. MBO ex plained that “the needle [in Smith] . . . maybe fully withdrawn from the patient’s flesh by an i nattentive or rushed operator . . . with the needle point and needle end portion fully exposed and hazardous for needlestick and contamination!” “MBO [thus] amended its claims to distinguish from Smith on the basis that its needle guard fully surrounded the needle as opposed to only covering the ‘tip of the point’ . . . .” Id. The examiner, however, again rejected some terms as unpatentable over prior art. Bu t the examiner event ually allowed the claims to issue as the ’347 patent after MBO distinguished t he prior art “on the gr ounds that [MBO’s] blocking flange moved into ‘adjac ent relation’ to the front of the guard, unlike any of the cited art.” Id. On March 6, 1995, MBO filed the ’772 app lication as continuat ion of the ’347 patent. As before, the examiner re jected the application’s claims as anticipated by U.S. Patent No. 4,850,977 (“Bayless”), “or as obvi ous in view of Bayless and Smith.” Id.

2008-1288 5“Bayless discloses a safety needle with a spring-loaded sheath that, when manually triggered, extends out and then closes over the exposed needle tip.” Id. In response to the rejection, MBO expl ained that Bayless disclosed a “needle [that] is fixed to [the] body ‘support chamber.’” “The needle thus never moves and is immovable in the syringe.” Instead of a needle moving into a guard, MBO argued that “Bayless provides a separate hollow needle sheath . . . which is axially movable on [the] chamber . . . , which is propelled forwardl y by a compression spring.” MBO proceeded to distinguish Bayless from it s invention on five grounds, tw o of which are relevant to this appeal. First, MBO explained t hat its “needle . . . is recited as slidable in the [guard] body . . . between the Fig. 3 and Fig. 6B posi tions.” Second, MBO explained that “the [guard] body . . . has a front surface . . . through which the needle . . . is initially extended (Fig. 3) and subsequently slidably re tracted (Fig. 6B) with the needle . . . no longer extending forwardly through the [guar d] body’s front surface.” Despite MBO’s response, the examiner again rejected the claims as obvious over Bayless in combination with U. S. Patent No. 5,125,908 (“Cohen”). Cohen discloses a safety syringe with a needle that retracts into a syringe holder. The examiner, however, accepted MBO’s argument that Bayless only disclosed a fixed needle. According to the examiner, “Bayless does not discl ose a retractable needle.” But the examiner found t hat Cohen provided the missi ng component, rendering MBO’s syringe obvious: “Cohen discloses a retract able needle . . . in the same field of endeavor for the purpose of safely disposing of a needle.” After this second rejection, MBO distinguished its invent ion from Bayless and C ohen on three grounds. MBO argued that unlike the prior art, its invention required (1) “a [ guard] body . . . for slidably

2008-1288 6receiving a needle,” (2) a safety flange t hat engages “when the needle is slidably retracted” into the guard body, and (3) a mount for the safety flange’s spring that prevents the flange from slidin g up or down the guard body. See id. at 1328. Noting that Cohen had no flange and no spring moun t, MBO argued that no combination of Bayless and Cohen could provide the thr ee points listed above. Based on these arguments, the examiner a llowed the claims. But MB O abandoned the ’772 application to pursue another application with additional claims, resulting in the ’699 patent. Id. Finally, MBO sought a reissue patent on July 1, 1999, arguing that it had a right to broader claims than those contained in the ’699 patent. “Specifically, [MBO] noted that it was entitled to claim a system having ‘any relati ve movement between the needle and the body,’ not just a ‘syst em wherein the needle must be bodily moved toward the safety device.’” Id. In MBO’s reissue application, cl aims 1–20 represented the original patent claims from the cancelled ’699 pat ent and claims 21–36 represented the reissue claims. The Patent Office granted MBO’s reissue application wi thout objection, resulting in the RE ’885 patent. III. Court Proceedings On January 7, 2003, MBO f iled a patent infringement suit against Becton in district court, asserting that Becton’s SafetyGlide TM hypodermic safety syringes infringed RE ’885 claims 13, 19, 20, 27, 28, 32, and 33. See MBO Labs., Inc. v. Becton, Dickinson & Co. , 385 F. Supp. 2d 88, 91 (D. Mass. 2005). After holding a Markman hearing, the district court construed several claim terms, id. at 106–11, including the term “‘slidably receiving’ (a s well as terms ‘relative mo vement’ and ‘relatively moved’

2008-1288 7found in other claims) . . . to refer to a stationary body into which the movable needle retracts,” id. at 108. This court reversed all of the district c ourt’s claim constructions except for one not relevant to this appeal. MBO , 474 F.3d at 1330–34. We held that the district court improperly construed the terms in light of the rule against re capture instead of relying on the terms’ ordinary meanings, contrary to Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc). MBO , 474 F.3d at 1332. In reversi ng, we interpreted the terms “slidably receiving,” “relatively moved,” and their cognates to refer “to the physical relationship between the guard body and t he needle, such that the guard body is capable of sliding relative to the needle.” Id. at 1333 (internal quotat ion marks omitted). We held that “the terms ‘relatively moved,’ ‘s lidably receiving,’ and their cognates permit the needle and guard to sli de in any manner.” Id. We then remanded the case to the district court to conduct further proceedi ngs consistent with the proper claim construction. Id. at 1334. On remand, the parties entered into a stipulation agreement, narrowing the issues before the district c ourt. MBO limited it s infringement contentions to RE ’885 claims 13, 19–20, 27–28, and 3 2–33, and Becton admitted infr ingement of claims 32 and 33 if they were valid. Becton then filed a motion for su mmary judgment of invalidity and a motion for summary judgment of non-infr ingement. In support of its invalidity claim, Becton argued that RE ’885 patent claims 27, 28, 32, and 33 were invalid because MBO had recaptured subject matter it surrendered during pat ent prosecution. Becton did not, however, argue that original cl aims 13, 19, and 20 were invalid because

2008-1288 8of recapture. In support of its non-infringement claim, Becton argued that claims 13, 19, and 20 did not cover its syringes. Even though Becton limited it s recapture argument to the reissue claims, the district court held that the ent ire RE ’885 patent was invalid because claims 27, 28, 32, and 33 recaptured surr endered subject matter. The dist rict court consequently denied Becton’s motion for summary judgment of non- infringement as moot and entered final judgment in Becton’s favor. Shortly thereafte r, MBO timely filed a notice of appeal. Seeking to clarify it s position, Becton also filed a mo tion to reconsider and amend the judgment with the di strict court, explaining that its “motion based on the recapture rule . . . was only directed to the claims added by re issue—claims 27, 28, 32 and 33.” While Becton’s motion was pending, this court su spended the appeal until t he district court ruled on the motion. The district c ourt, however, denied Becton’s motion for reconsideration without explanation, prompting this court to reactivate the appeal. This court has jurisdiction over MBO’s timelyfiled appeal under 28 U.S.C. § 1295(a)(1). 2
DISCUSSION On appeal, MBO argues that the district court erred in holding that RE ’885 patent claims 27, 28, 32, and 33 violate the rule against rec apture. MBO asserts that it never surrendered a guard body that could move relative to the syringe’s fixed needle in its correspondence with the Patent Office. MB O further argues that the district court erred by invalidating the RE ’8 85 patent in its entir ety, including original patent claims 13, 19, and 20.

2 On October 8, 2009, we dismiss ed Becton’s cross-appeal for lack of standing, ordering Becton to f ile a corrected opposition brief and MBO to file a corrected reply brief. MBO Labs., Inc. v. Becton, Dickinson & Co. , No. 2008-1288, 2009 WL 5948845, at *1 (Fed. Cir. Oct. 8, 2009).

2008-1288 9We review a district court’ s legal determination that a reissue patent violates the rule against recaptur e without deference. Pannu v. Storz Instruments, Inc. , 258 F.3d 1366, 1370 (Fed. Cir. 2001). Howe ver, we review the distri ct court’s underlying factual findings in support of its recapture holding for substantial evidence. Id. As explained below, we affirm the district c ourt in holding that MBO violat ed the rule against recapture and in invalidating reissue claims 27, 28, 32, and 33. Accordingly, we need not address Becton’s arguments that claims 32 and 33 are invalid on al ternative grounds. However, we reverse the district court’s erroneous inva lidation of all other claims and remand to the district court to address Becton’s moti on for summary judgment of non-infringement on original claims 13, 19, and 20. I. The Rule Against Recapture Under the reissue statute, a patentee may surrender a patent and seek reissue “enlarging the scope of the [o riginal patent’s] claims” if “through error without any deceptive intent” he claimed “less than he had a right to claim in the [original] patent” and he applies for reissue “within two years fr om the grant of the original patent.” 35 U.S.C. § 251 (2006). We have explained that this statute “is remedial in nature, based on fundamental principl es of equity and fairness, and should be construed liberally.” In re Weiler , 790 F.2d 1576, 1579 (Fed. Cir. 1986). Notwithstanding its remedial nature, the reissue statut e has limits. “The reissue statute was not enacted as a panacea for al l patent prosecution problems, nor as a grant to the patentee of a se cond opportunity to prosecute de novo his original application.” Id. at 1582. Under the rule against recapture, a patentee’s reissue claims are invalid when the patentee broadens the scope of a claim in reissue to cover subject

2008-1288 10matter that he surrendered during prosec ution of the original claims. See Hester Indus., Inc. v. Stein, Inc. , 142 F.3d 1472, 1480 (Fed. Cir. 1998) (“The recapture rule ‘prevents a patentee from regaining through reissue . . . subject matter that he surrendered in an effort to obtain allowance of the original cl aims.’” (quoting In re Clement , 131 F.3d 1464, 1468 (Fed. Cir. 1997))). This court bars recapture because a patent ee is only entitled to a reissue patent for broader claims when the patentee claimed “l ess than he had a right to claim in the patent” through “error without any deceptiv e intent[],” not through deliberate amendments or arguments desi gned to convince an examiner to allow the claims. 35 U.S.C. § 251; see also Medtronic, Inc. v. Guidant Corp. , 465 F.3d 1360, 1372–73 (Fed. Cir. 2006) (“[T]he deliberat e surrender of a claim to certain subject matter during the original prosecution of the application for a patent ‘made in an effort to overcome a prior art rejection’ is not such ‘error’ as will allow the patentee to recapture that subject matter in a reissue.” (quoting Clement , 131 F.3d at 1468–69)); Haliczer v. United States , 356 F.2d 541, 545 (Ct. Cl. 1966) (“[D]eliberate wit hdrawal or amendment of claims . . . to obtain a patent cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an error of t he kind which will justif y the granting of a reissue patent which includes the matter withdr awn.”). Moreover, the court prohibits recapture based on principles of equity. An applicant’s surrender of subject matter places “competitors and the publi c . . . on notice . . . and may ha ve [caused them] to rely on the consequent limitations on claim scope.” MBO , 474 F.3d at 1331; see also Vectra Fitness, Inc. v. TNWK Corp. , 162 F.3d 1379, 1384 (Fed. Cir. 1998) (“[T]he ‘recapture rule’ . . . ensur[es] the ability of the public to rely on a patent ’s public record.”); Mentor

2008-1288 11Corp. v. Coloplast, Inc. , 998 F.2d 992, 993 (Fed. Cir. 1993) (“[T]he reissue statute cannot be construed in such a way that com petitors, properly relying on prosecution history, become patent infringers when they do so.”). Without a rule against recapture, an unscrupulous attorney could feign error and redraft claims in a reissue patent to cover a competing product, thereafte r filing an infringement suit. See Hester , 142 F.3d at 1484 (“[H]ere, the second attorney draft[ed] the [reissue] claims nearly a decade later and with the distinct advantage of having be fore him the exact product offered by the now accused infringer.”). In applying the rule against recaptur e, we follow a three-step test. N. Am. Container, Inc. v. Plastipak Packaging, Inc. , 415 F.3d 1335, 1349 (Fed. Cir. 2005) (explaining the three-step recapture test); Pannu , 258 F.3d at 1371 (same). First, the court construes the reissued claims to “det ermine whether and in what ‘aspect’ the reissue claims are broader than t he [original] patent claims.” Clement , 131 F.3d at 1468. Second, if the reissu e claims are broader, the c ourt determines whether the patentee surrendered subject matter and “whether the broader aspects of the reissued claim relate to [the] surrendered subject matter.” Id. at 1468–69; see also id. at 1469– 70. To determine whether a patentee surrendered subject matt er, we ask “whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument was to overcome prior art and secure the patent.” Kim v. ConAgra Foods, Inc. , 465 F.3d 1312, 1323 (Fed. Cir. 2006). If the patentee surrendered by argument, he must clearly and unmistakably argue that his invention does not cover cert ain subject matter to overco me an examiner’s rejection based on prior art. Medtronic , 465 F.3d at 1376 (holding that a patent attorney’s

2008-1288 12argument did not “clearly and unmist akably surrender” the subject matter); Hester , 142 F.3d at 1482 (explaini ng that “unmistakable assertions made to the Patent Office in support of patentability” “can give rise to a surrender for purposes of the recapture rule”). Third, a court must “determine wh ether the reissued claims were materially narrowed in other respects to avoid the recapture rule.” Pannu , 258 F.3d at 1371. In this case, the parties do not dispute the first and third steps of the recapture analysis. In the last appeal, this court address ed the first step. We held that “the terms ‘relatively moved,’ ‘slidably re ceiving,’ and their cognates permit the needle and guard to slide in any manner.” MBO , 474 F.3d at 1333. In this appeal , MBO concedes that “[t]he first [step] is not in dispute here, as t he broadening nature of the reissue claims was clearly explained to the Patent Office in the reissue application.” MBO likewise concedes that the third step is not at issue because it did not narrow its reissue claims in any way. Accordingly, this cour t need only address the second step to determine whether MBO surrendered subject matter and “w hether the broader aspects of [MBO’s] reissued claim relate to [the] surrendered subject matter.” Clement , 131 F.3d at 1468– 69. We agree with the distri ct court that MBO violated th e rule against recapture by claiming relative movement between the guar d body and needle in th e RE ’885 patent. Substantial evidence supports the district court’s finding that MBO clearly and unmistakably surrendered claiming a guard body t hat moved relative to a fixed needle. MBO twice overcame the examiner’s reject ions by emphasizing that the prior art disclosed a type of guard that moved relative to a fixed needle. In contrast, MBO

2008-1288 13stressed that its needle moved relative to the guard by “slidably retracting.” The following exchanges demonstrate MBO’s surrender. First, MBO distinguished its needle from Smith while prosecuting the ’347 patent by arguing that Smith disclosed a fixed needle with a slidable member that moved forward to cover the needle. In its response to the examiner’s rejection, MBO argued that Smith “discloses a usual needle . . . fixed to and extending from a conventional syringe barrel.” MBO further explained that when a health care worker withdrew the needle in Smith, “the slidable member . . . is bodily moved forward . . . , whereupon after the needle is withdrawn, the point onlyof the needle lies behind [the] leg [of the sidemounted guard].” In other word s, a health care worker in Sm ith would move the slidable member forward to cover the needle’s tip. MBO asserted that in contrast to its invention, “[t]he needle [in Smith] is not slidably received in the barrel.” The examiner “agree[d] with applicant s’ arguments regarding Smith, ” recognizing that MBO was limiting its invention to a needl e that slidably retracted into the guard. MBO’s exchange with the examiner about Smith thus demonstrates that MB O disclaimed a guard that moved forward to cover the fixed needle to persuade the examiner to allow its claims. Second, MBO distinguished its needle from Bayless while prosecuting the ’772 application by arguing that Bayless disclosed a fixed needle with a sh eath that sprang forward to cover the needle. A fter the examiner rejected MB O’s claims as obvious over Bayless, MBO argued that Bayle ss disclosed a “needle [that] is fixed to [the] body ‘support chamber.’” According to MBO, “B ayless provides a separate hollow needle sheath . . . which is axially movable on [the] chamber . . . , which is propelled forwardly by a compression spring.” In other words, the chamber in Bayless would spring forward

2008-1288 14to cover a fixed needle. In contrast to Bayless, MBO asserted that its application disclosed a needle that was “slidable in t he [guard] body” and a guard body “through which the needle . . . is initia lly extended (Fig. 3) and subs equently slidably retracted (Fig. 6B).” The examiner agr eed, stating that “Bayless does not disclose a retractable needle.” As in the exchange about Smith, MBO’s correspondence with the examiner about Bayless demonstrates that MBO disclai med a guard that moved forward to cover the fixed needle to persuade the ex aminer to allow its claims. MBO’s deliberate surrender of a guard body moving forward to cover a fixed needle proves fatal to its reissue claims. The surrender is directly related to the broader claims it sought in reissue. MBO’s prosecut ing attorney stated in his reissue declaration that the original claims “claim less tha[n] we had a right to claim in that they fail to claim clearly that any relative movement . . . will . . . prevent[] needlesti ck hazard, whether or not the needle moves toward the body and c onnected safety device, or whether the body and connected safety device advance over the needle.” “MBO [thus] clearly sought in reissue to broaden the scope of its pat ent coverage by rewriting its claims to cover all relative movemen t, not just retraction.” MBO , 474 F.3d at 1332. MBO’s failure to claim relative movement was not “erro r without any deceptive in tent.” 35 U.S.C. § 251. MBO knew exactly how to claim rela tive movement. When prosecuting the ’655 patent, MBO claimed a “disposable medical assembly” comprising, among other things, a “guide means and manipulating means being relatively movable .” Because MBO surrendered a guard body that moved forward to cover a fixed needle and sought to reclaim relative movement in its reissue claims, MBO violated the rule against recapture.

2008-1288 15MBO argues on appeal that its references to a retractable needle were not an attempt to overcome prior ar t. According to MBO, it was not trying to persuade the examiner to allow its claims based on retracti on, but merely conceding that the prior art disclosed a retractable needle. MBO further ar gues that instead of distinguishing its invention from the prior art bas ed on a retractable needle, it distinguished its invention based on its unique safety flan ge. But the record refutes MBO’s argument that it referred to retraction in mere recognition of the prior art. MBO clearly relied on a retractable needle to distinguis h its invention from syringes with guards that moved to cover a needle. Moreover, MBO misunderstands the rationale behind the rule against recapture. The fact that some of the prior art may hav e disclosed a retractable needle cannot save MBO’s reliance on its retractable needle to di stinguish other prior art. “The public’s reliance interest provides a justificat ion for the recapture rule that is independent of the likelihood that the surrendered territory was already covered by prior art or otherwise unpatentable.” MBO , 474 F.3d at 1332 (emphasis added) . MBO also misunderstands how arguments as to one subject ma tter affect another. MBO’s arguments distinguishing the prior art bas ed on its safety flange do not affect its surrender of another subject matter: a patentee’s arguments that em phasize one feature cannot cure arguments that clearlysurrender another. II. Surrendering Subject Matter in a Parent Application In holding that MBO violated the rule against recapture, we seek to clarify that a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the pat entee surrendered while prosecuting a re lated patent application. We are aware of courts that hav e held that patentees may onl y violate the rule against

2008-1288 16recapture by surrendering subject matter while prosecuting “the patent that is corrected by the reissue patent.” U.S. Filter Corp. v. Ionics, Inc. , 68 F. Supp. 2d 48, 72 (D. Mass. 1999); see also 4A Donald S. Chisum, Chisum on Patents § 15.03[2][e][vi], at 15-107 to -108 (2004) (citing to no Federal Circuit opinions addressing re capture of subject matter surrendered in a related patent). Under th is erroneous theory, the rule against recapture does not contemplate surrenders made while prosecuting the original application or any precedent divisional, continuation, or co ntinuation-in-part applications. U.S. Filter Corp. , 68 F. Supp. 2d at 72. This error stems from a misunderstanding of the term “origina l patent” in 35 U.S.C. § 251. See id. at 69–72. The term “original patent” refers to the patent corrected by reissue; it does not limit the universe of patents and their prosecution histor ies that can be the basis for surrendered subject matter. We have never limited our re view of recapture only to the prosecution history for the patent corrected by reissue. In North American Container , we held that a patentee’ s reissue claims were invalid for recapturing subject matter that the patentee surrendered in arguments and amendments while prosecuti ng a parent application. 415 F.3d at 1349–50. Even though the reissue patent corrected a patent that issued from a continuation application—not from the origin al application—we found that the patentee’s surrender of subject matter during the or iginal application carried th rough to the continuation application. Id. at 1339–40, 1349–50; cf. Kim , 465 F.3d at 1321–24 (rejecting an alleged infringer’s argument t hat the patentee surrendered subject matter from an abandoned parent applic ation to overcome the ex aminer’s rejection based on obviousness); Clement , 131 F.3d at 1471–72 (rejecting a patent applicant’s argument

2008-1288 17that the rule against recaptur e should not apply because the reissue claim was narrower than the original claim from an abandoned patent application in some respects). To be sure, most of our precedents involving recapt ure address simpler prosecution histories, such as alleged surrenders during the prosecution of the pa tent corrected by reissue. 3
But neither the reissue statute nor the rule against recapture’s rationale limits surrender to the prosecution history for the pat ent corrected by reissue. Congress has never limited the reissue st atute’s error requirement to errors made while prosecuting the patent corrected by reissue. Starting in 1832, Congress granted the Secretary of Stat e the authority to reissue a patent for an invention when the patentee surrendered the claims of his or iginal patent that were “invalid or inoperative” because the patentee failed to provide an adequate written description of the invention and how to make and use it through “inadvert ence, accident, or mistake, and without any fraudulent or decept ive intent.” Act of July 3, 1832, ch. 162, § 3, 4 Stat. 559, 559. Congress has since made severa l substantive changes to the reissue statute, but has never limited the “error without any deceptive intention” requirement to errors made during the prosecut ion of only the patent correct ed by reissue. 35 U.S.C.

3 See, e.g. , Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. , 563 F.3d 1358, 1364–65, 1367–68 (Fed. Cir. 2009); Medtronic , 465 F.3d at 1366–69, 1372–79; In re Doyle , 293 F.3d 1355, 1356–57 (Fed. Cir. 2002); Pannu , 258 F.3d at 1368–70; Hester , 142 F.3d at 1474–77; Clement , 131 F.3d at 1471–72; Mentor , 998 F.2d at 995– 96; Whittaker Corp. v. UNR Indus., Inc. , 911 F.2d 709, 710–11 (Fed. Cir. 1990); Weiler , 790 F.2d at 1579; Seattle Box Co. v. Indus. Crating & Packing, Inc. , 731 F.2d 818, 821–22, 826 (Fed. Cir. 1984); Ball Corp. v. United States , 729 F.2d 1429, 1432–33 (Fed. Cir. 1984); In re Mead , 581 F.2d 251, 252–54, 257 (CCPA 1978); In re Orita , 550 F.2d 1277, 1278–79 (CCPA 1977); In re Wadlinger , 496 F.2d 1200, 1201–03, 1207 (CCPA 1974); In re Richman , 409 F.2d 269, 270, 273–75 (CCPA 1969); In re Wesseler , 367 F.2d 838, 842–44 (CCPA 1966); In re Willingham , 282 F.2d 353, 353–54, 357 (CCPA 1960); In re De Jarlais , 233 F.2d 323, 325–26 (CCPA 1956); In re Byers , 230 F.2d 451, 454–56 (CCPA 1956); Haliczer , 356 F.2d at 543–45.

2008-1288 18§ 251; see also 35 U.S.C. § 64 (1946); Revised Statut es § 4916 (1878); Act of July 4, 1836, ch. 357, § 13, 5 Stat. 117, 122; Act of July 3, 1832, ch. 162, § 3, 4 Stat. 559, 559. Neither this court nor the U.S. Supreme Court has ever applied the rule against recapture in a way that only considers the prosecution history fo r the patent corrected by reissue. Rather, both courts have long applied the rule against recapture to safeguard the reissue statute’s error requirement and to pr otect the public’s reliance interest on the patentee’s prosecution history. As early as 1879, the Court opined that reissue claims would be inva lid if a patentee obtained “c laims [that he] once formally abandoned . . . , in order to gethis letters-patent through.” Legget v. Avery , 101 U.S. 256, 259 (1879). According to the Court, a pat entee could not obtain a reissue patent through “[t]he pretence that an ‘error had arisen by inadvertence, accident, or mistake,’” when the reissue covered claims that t he patentee had “express[ly] disclaime[d].” Id. (quoting Act of July 3, 1832, ch. 162, § 3, 4 Stat. 559, 559) . Such pretence was “the occasion of immense frauds against the public.” Id. The Court would later explain that Legget established a defense to patent infri ngement that rendered “the reissued patent . . . void.” Mahn v. Harwood , 112 U.S. 354, 359 (1884). According to the Court, the patent was void because the patentee obtained t he reissue patent without satisfying the reissue statute’s error requirement. C onsequently, the Court held that when “the reissued patent embraced a claim which had been presented on the application for the original patent and rejected,” “the omission of that claim in the original was not, and could not have been, the result of i nadvertence, accident, or mistake.” Id. This court has followed the same rationale in applying the rule against recapture. As noted above, we apply the rule to ensure that patents are only reissued to correct a

2008-1288 19legitimate error and to protect the public against patentees who would reclaim subject matter surrendered during prosecution. See, e.g. , MBO , 474 F.3d at 1331; Medtronic , 465 F.3d at 1372–73; Mentor , 998 F.2d at 995–96. If we limit ed our recapture review to the prosecution history for the patent correct ed by reissue, we would severely undercut the rule against recapture’s public-reliance rationale: a patent ee could deliberately surrender subject matter during prosecution of an earlier patent, obtain a continuation patent without mentioning the surrendered subject matter, and then seek a reissue patent based on the continuation so as to rec apture the subject matter. Such a myopic review would facilitate “immense frauds against the public.” Legget , 101 U.S. at 259. In contrast to such limited review, this court reviews a patent family’s entire prosecution history when app lying both the rule against recapture and prosecution history estoppel. “The recapture rule . . . se rves the same policy as does the doctrine of prosecution history estoppel: both operate . . . to prevent a patentee from encroaching back into territory that had previo usly been committed to the public.” MBO , 474 F.3d at 1332. Unsurprisingly, this court’s prosecut ion-history-estoppel cases recognize that “prosecution disclaimer may arise from di savowals made during the prosecution of ancestor patent applications.” Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1333 (Fed. Cir. 2003); see also Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc. , 265 F.3d 1294, 1305 (Fed. Cir. 2001) (“ The prosecution history of a related patent can be relevant if, for example, it addresses a limit ation in common with the patent in suit.”); Elkay Mfg. Co. v. Ebco Mfg. Co. , 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the same in itial application, the pros ecution history regarding a claim limitation in any patent that has issu ed applies with equal fo rce to subsequently

2008-1288 20issued patents that contain the same claim limitation.”). Because the rule against recapture and prosecution history estoppel both protect the public ’s interest in relying on a patent’s prosecution hi story, we think equity requires a review of a patent family’s prosecution history to protect agai nst recapture in a reissue patent. III. Invalidating Reissue Claims Finally, the district court erroneously invali dated the entire RE ’885 patent based solely on its holding that reissue claims 27, 28, 32, and 33 were invalid under the rule against recapture. Neither party disputes that the district court e rred in this regard. When a reissue patent contains the unmodified original pat ent claims and the reissue claims, a court can only invalidate the rei ssue claims under the rule against recapture. See, e.g. , N. Am. Container , 415 F.3d at 1349–50 (affirmi ng summary judgment of noninfringement of original claims 1–28 and su mmary judgment of in validity of reissue claims 29–42 under the rule against recapture); Clement , 131 F.3d at 1472 (explaining that a defective reissue declaration that erroneously claims that the applicants mistakenly claimed less than t hey had the right to claim could not invalidate the original patent claims). Original patent claims wi ll always survive a recapture challenge under the first step of our rule-against-recapture anal ysis. Under the first step, we construe the reissued claims to “determine whether and in what ‘aspect’ the reissue claims are broader than the [origina l] patent claims.” Clement , 131 F.3d at 1468. The original claims cannot be broader than themselves. Because the district court erroneously held the entire RE ’885 patent invalid, it did not address Becton’s motion for summaryjudgment of non-infr ingement on claims 13, 19, and 20. We decli ne Becton’s invitation to address its non-infringement

2008-1288 212008-1288 22 arguments for the first time on appeal when the district court has yet to address them below. See TypeRight Keyboard Corp. v. Microsoft Corp. , 374 F.3d 1151, 1160 (Fed. Cir. 2004) (declining to address infringement when the district court did not address the issue below). On remand, t he district court must consi der Becton’s motion for summary judgment of non-infringement. CONCLUSION For the foregoing reasons, we affirm the di strict court’s holding that the RE ’885 patent claims 27, 28, 32, and 33 are invali d, but we reverse the district court’s invalidation of all other clai ms. We remand to the distri ct court to address Becton’s motion for summary judgment of non-infringem ent on original claims 13, 19, and 20. AFFIRMED IN PART , REVERSED IN PARTand REMANDED COSTS Each party shall bear its own costs.