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-appellee. 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 Court 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 Court 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 from the U.S. District Court for the 

District of Massachusetts’ judgment in favor of Becton, Dickinson & Co. (“Becton”), 

invalidating MBO’s U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”) in its entirety 

based on the rule against recapture. Because 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 invalid, but we reverse the district court’s invalidation of all other 
claims. We remand to the district court to address Becton’s motion for summary 

judgment of non-infringement on original claims 13, 19, and 20. 

BACKGROUND

MBO is the assignee of the RE ’885 patent, which 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 prosecution history at length. See MBO Labs., Inc. v. Becton, 

Dickinson & Co., 474 F.3d 1323, 1326–28 (Fed. 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 accused device, and relevant prior art syringes all include 

features intended to protect health care workers and bystanders from inadvertent 

needle sticks following an injection 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 from the patient.” Id. The RE ’885 patent teaches a syringe that 

protects against needle-stick injuries by sheathing a contaminated needle in a flangecovered guard. Specifically, the patent discloses a needle 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 inserted into the patient. When the needle is 

removed from the patient, the health care worker 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 2
snaps over the needle tip and sheaths it inside the guard body. RE ’885 patent at [57]. 

The figures below from the RE ’885 patent 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 application in a patent family that relates 

back to November 8, 1990. Those patents and applications include (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 application”); (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 application, the ’699 patent, and the RE ’885 

patent share the same specification 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 3
appeal. 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 application covered a “disposable medical assembly” 

comprising, among other things, a “guide means and manipulating means being 

relatively movable.” The examiner rejected all prosecution 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 needle 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 retraction thereof into said guide means.” 

Referring to this amendment, MBO explained to the examiner that “[a] chief feature of 

applicants’ invention, inter 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 examiner allowed the claims and the application issued as the 

’655 patent with prosecution claim 18 issuing as claim 14. Id. at 1327; ’655 patent 

col.11 ll. 59–60. 

On November 6, 1992, MBO filed its continuation-in-part of the ’655 patent 

application with claims for a hypodermic safety needle for blood collection, resulting in 

 1

 Individuals, not corporations, 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 4
the ’347 patent. But the examiner 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-mounted guard that snaps down and over the tip 

of the needle.” Id. MBO distinguished Smith by explaining that Smith “discloses a usual 

needle . . . fixed to and extending from a conventional 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 the flesh that the slidable member . . . is bodily moved 

forward . . . , whereupon after the needle is withdrawn, the point only of the needle lies 

behind [the] leg [of the side-mounted guard] . . . .” In MBO’s view, this structure raised 

safety concerns because the needle could not retract and an operator could only 

manually cover the needle tip. MBO explained that “the needle [in Smith] . . . may be 

fully withdrawn from the patient’s flesh by an inattentive 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. But the examiner eventually allowed the claims to issue as 

the ’347 patent after MBO distinguished the prior art “on the grounds that [MBO’s] 

blocking flange moved into ‘adjacent relation’ to the front of the guard, unlike any of the 

cited art.” Id. 

On March 6, 1995, MBO filed the ’772 application as continuation of the ’347 

patent. As before, the examiner rejected the application’s claims as anticipated by U.S. 

Patent No. 4,850,977 (“Bayless”), “or as obvious 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 explained 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 forwardly by a compression spring.” MBO proceeded 

to distinguish Bayless from its invention on five grounds, two of which are relevant to 

this appeal. First, MBO explained that its “needle . . . is recited as slidable in the [guard] 

body . . . between the Fig. 3 and Fig. 6B positions.” Second, MBO explained that “the 

[guard] body . . . has a front surface . . . through which the needle . . . is initially 

extended (Fig. 3) and subsequently slidably retracted (Fig. 6B) with the needle . . . no 

longer extending forwardly through the [guard] 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 disclose a retractable needle.” 

But the examiner found that Cohen provided the missing component, rendering MBO’s 

syringe obvious: “Cohen discloses a retractable needle . . . in the same field of 

endeavor for the purpose of safely disposing of a needle.” After this second rejection, 

MBO distinguished its invention from Bayless and Cohen on three grounds. MBO 

argued that unlike the prior art, its invention required (1) “a [guard] body . . . for slidably 

2008-1288 6
receiving a needle,” (2) a safety flange that 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 sliding up or down the guard body. See id. at 1328. Noting 

that Cohen had no flange and no spring mount, MBO argued that no combination of 

Bayless and Cohen could provide the three points listed above. Based on these 

arguments, the examiner allowed the claims. But MBO 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 relative movement between the needle 

and the body,’ not just a ‘system wherein the needle must be bodily moved toward the 

safety device.’” Id. In MBO’s reissue application, claims 1–20 represented the original 

patent claims from the cancelled ’699 patent and claims 21–36 represented the reissue 

claims. The Patent Office granted MBO’s reissue application without objection, 

resulting in the RE ’885 patent. 

III. Court Proceedings 

On January 7, 2003, MBO filed a patent infringement suit against Becton in 

district court, asserting that Becton’s SafetyGlideTM 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’ (as well as terms ‘relative movement’ and ‘relatively moved’ 

2008-1288 7
found 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 court’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 recapture 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 reversing, we interpreted the terms 

“slidably receiving,” “relatively moved,” and their cognates to refer “to the physical 

relationship between the guard body and the needle, such that the guard body is 

capable of sliding relative to the needle.” Id. at 1333 (internal quotation marks omitted). 

We held that “the terms ‘relatively moved,’ ‘slidably receiving,’ and their cognates permit 

the needle and guard to slide in any manner.” Id. We then remanded the case to the 

district court to conduct further proceedings consistent with the proper claim 

construction. Id. at 1334. 

On remand, the parties entered into a stipulation agreement, narrowing the 

issues before the district court. MBO limited its infringement contentions to RE ’885 

claims 13, 19–20, 27–28, and 32–33, and Becton admitted infringement of claims 32 

and 33 if they were valid. Becton then filed a motion for summary judgment of invalidity 

and a motion for summary judgment of non-infringement. 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 patent prosecution. 

Becton did not, however, argue that original claims 13, 19, and 20 were invalid because 

2008-1288 8
of 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 its recapture argument to the reissue claims, the 

district court held that the entire RE ’885 patent was invalid because claims 27, 28, 32, 

and 33 recaptured surrendered subject matter. The district court consequently denied 

Becton’s motion for summary judgment of non-infringement as moot and entered final 

judgment in Becton’s favor. Shortly thereafter, MBO timely filed a notice of appeal. 

Seeking to clarify its position, Becton also filed a motion to reconsider and amend the 

judgment with the district court, explaining that its “motion based on the recapture rule 

. . . was only directed to the claims added by reissue—claims 27, 28, 32 and 33.” While 

Becton’s motion was pending, this court suspended the appeal until the district court 

ruled on the motion. The district court, however, denied Becton’s motion for 

reconsideration without explanation, prompting this court to reactivate the appeal. This 

court has jurisdiction over MBO’s timely filed 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 recapture. 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. MBO further argues that the district court 

erred by invalidating the RE ’885 patent in its entirety, including original patent claims 

13, 19, and 20. 

 2

 On October 8, 2009, we dismissed Becton’s cross-appeal for lack of 

standing, ordering Becton to file 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 9
We review a district court’s legal determination that a reissue patent violates the 

rule against recapture without deference. Pannu v. Storz Instruments, Inc., 258 F.3d 

1366, 1370 (Fed. Cir. 2001). However, we review the district court’s underlying factual 

findings in support of its recapture holding for substantial evidence. Id. As explained 

below, we affirm the district court in holding that MBO violated 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 alternative grounds. However, 

we reverse the district court’s erroneous invalidation of all other claims and remand to 

the district court to address Becton’s motion 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 [original 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 from 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 principles 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 statute has limits. “The reissue 

statute was not enacted as a panacea for all patent prosecution problems, nor as a 

grant to the patentee of a second 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 10
matter that he surrendered during prosecution 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 claims.’” (quoting In re Clement, 131 F.3d 1464, 

1468 (Fed. Cir. 1997))). 

This court bars recapture because a patentee is only entitled to a reissue patent 

for broader claims when the patentee claimed “less than he had a right to claim in the 

patent” through “error without any deceptive intent[],” not through deliberate 

amendments or arguments designed 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 deliberate 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 withdrawal 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 the kind which will justify the granting of a 

reissue patent which includes the matter withdrawn.”). Moreover, the court prohibits 

recapture based on principles of equity. An applicant’s surrender of subject matter 

places “competitors and the public . . . on notice . . . and may have [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 11
Corp. v. Coloplast, Inc., 998 F.2d 992, 993 (Fed. Cir. 1993) (“[T]he reissue statute 

cannot be construed in such a way that competitors, 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, thereafter 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 before him the exact product offered by the 

now accused infringer.”). 

In applying the rule against recapture, 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 “determine whether and in what ‘aspect’ the 

reissue claims are broader than the [original] patent claims.” Clement, 131 F.3d at 

1468. Second, if the reissue claims are broader, the court 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 matter, 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 certain subject matter to overcome an examiner’s rejection 

based on prior art. Medtronic, 465 F.3d at 1376 (holding that a patent attorney’s 

2008-1288 12
argument did not “clearly and unmistakably surrender” the subject matter); Hester, 142 

F.3d at 1482 (explaining 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 whether 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 addressed the first step. We held that “the terms 

‘relatively moved,’ ‘slidably receiving,’ 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 the 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 court need only address the second step to determine 

whether MBO surrendered subject matter and “whether 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 district court that MBO violated the rule against recapture by 

claiming relative movement between the guard body and needle in the RE ’885 patent. 

Substantial evidence supports the district court’s finding that MBO clearly and 

unmistakably surrendered claiming a guard body that moved relative to a fixed needle. 

MBO twice overcame the examiner’s rejections by emphasizing that the prior art 

disclosed a type of guard that moved relative to a fixed needle. In contrast, MBO 

2008-1288 13
stressed 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 only of the needle lies behind [the] leg [of the sidemounted guard].” In other words, a health care worker in Smith 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 applicants’ arguments regarding Smith,” recognizing that MBO was 

limiting its invention to a needle that slidably retracted into the guard. MBO’s exchange 

with the examiner about Smith thus demonstrates that MBO 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 sheath that sprang 

forward to cover the needle. After the examiner rejected MBO’s claims as obvious over 

Bayless, MBO argued that Bayless disclosed a “needle [that] is fixed to [the] body 

‘support chamber.’” According to MBO, “Bayless 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 14
to cover a fixed needle. In contrast to Bayless, MBO asserted that its application 

disclosed a needle that was “slidable in the [guard] body” and a guard body “through 

which the needle . . . is initially extended (Fig. 3) and subsequently slidably retracted 

(Fig. 6B).” The examiner agreed, 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 disclaimed a guard that moved forward to cover 

the fixed needle to persuade the examiner 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 prosecuting 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[] needlestick hazard, whether or 

not the needle moves toward the body and connected 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 patent coverage by rewriting its claims to 

cover all relative movement, not just retraction.” MBO, 474 F.3d at 1332. MBO’s failure 

to claim relative movement was not “error without any deceptive intent.” 35 U.S.C. 

§ 251. MBO knew exactly how to claim relative 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 15
MBO argues on appeal that its references to a retractable needle were not an 

attempt to overcome prior art. According to MBO, it was not trying to persuade the 

examiner to allow its claims based on retraction, but merely conceding that the prior art 

disclosed a retractable needle. MBO further argues that instead of distinguishing its 

invention from the prior art based on a retractable needle, it distinguished its invention 

based on its unique safety flange. 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 distinguish 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 have disclosed a retractable needle cannot save 

MBO’s reliance on its retractable needle to distinguish other prior art. “The public’s 

reliance interest provides a justification 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 matter affect another. MBO’s arguments 

distinguishing the prior art based on its safety flange do not affect its surrender of 

another subject matter: a patentee’s arguments that emphasize one feature cannot 

cure arguments that clearly surrender 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 patentee surrendered while prosecuting a related patent application. We 

are aware of courts that have held that patentees may only violate the rule against 

2008-1288 16
recapture 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 recapture of subject matter 

surrendered in a related patent). Under this erroneous theory, the rule against 

recapture does not contemplate surrenders made while prosecuting the original 

application or any precedent divisional, continuation, or continuation-in-part 

applications. U.S. Filter Corp., 68 F. Supp. 2d at 72. This error stems from a 

misunderstanding of the term “original 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 histories that can be the basis for surrendered 

subject matter. We have never limited our review 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 prosecuting 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 original application—we found that the patentee’s surrender of 

subject matter during the original application carried through to the continuation 

application. Id. at 1339–40, 1349–50; cf. Kim, 465 F.3d at 1321–24 (rejecting an 

alleged infringer’s argument that the patentee surrendered subject matter from an 

abandoned parent application to overcome the examiner’s rejection based on 

obviousness); Clement, 131 F.3d at 1471–72 (rejecting a patent applicant’s argument 

2008-1288 17
that the rule against recapture 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 recapture address simpler prosecution histories, 

such as alleged surrenders during the prosecution of the patent corrected by reissue.3

 

But neither the reissue statute nor the rule against recapture’s rationale limits surrender 

to the prosecution history for the patent corrected by reissue. 

Congress has never limited the reissue statute’s error requirement to errors 

made while prosecuting the patent corrected by reissue. Starting in 1832, Congress 

granted the Secretary of State the authority to reissue a patent for an invention when 

the patentee surrendered the claims of his original 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 “inadvertence, accident, or mistake, 

and without any fraudulent or deceptive intent.” Act of July 3, 1832, ch. 162, § 3, 4 Stat. 

559, 559. Congress has since made several substantive changes to the reissue 

statute, but has never limited the “error without any deceptive intention” requirement to 

errors made during the prosecution of only the patent corrected 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 Statutes § 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 for 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 protect the public’s reliance 

interest on the patentee’s prosecution history. As early as 1879, the Court opined that 

reissue claims would be invalid if a patentee obtained “claims [that he] once formally 

abandoned . . . , in order to get his letters-patent through.” Legget v. Avery, 101 U.S. 

256, 259 (1879). According to the Court, a patentee 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 the 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 infringement 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 the reissue patent without satisfying the 

reissue statute’s error requirement. Consequently, 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 inadvertence, 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 19
legitimate 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 limited our recapture review to 

the prosecution history for the patent corrected by reissue, we would severely undercut 

the rule against recapture’s public-reliance rationale: a patentee 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 recapture 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 applying both the rule against recapture and prosecution 

history estoppel. “The recapture rule . . . serves the same policy as does the doctrine of 

prosecution history estoppel: both operate . . . to prevent a patentee from encroaching 

back into territory that had previously been committed to the public.” MBO, 474 F.3d at 

1332. Unsurprisingly, this court’s prosecution-history-estoppel cases recognize that 

“prosecution disclaimer may arise from disavowals 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 limitation 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 initial application, the prosecution history regarding a 

claim limitation in any patent that has issued applies with equal force to subsequently 

2008-1288 20
issued 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 history, we think equity requires a review of a patent family’s 

prosecution history to protect against recapture in a reissue patent. 

III. Invalidating Reissue Claims 

Finally, the district court erroneously invalidated 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 erred in this regard. 

When a reissue patent contains the unmodified original patent claims and the reissue 

claims, a court can only invalidate the reissue claims under the rule against recapture. 

See, e.g., N. Am. Container, 415 F.3d at 1349–50 (affirming summary judgment of noninfringement of original claims 1–28 and summary judgment of invalidity 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 they had the right to claim could not invalidate the original 

patent claims). Original patent claims will always survive a recapture challenge under 

the first step of our rule-against-recapture analysis. Under the first step, we construe 

the reissued claims to “determine whether and in what ‘aspect’ the reissue claims are 

broader than the [original] 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 summary judgment of non-infringement on claims 

13, 19, and 20. We decline Becton’s invitation to address its non-infringement 

2008-1288 21
2008-1288 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, the district court must consider Becton’s motion for summary 

judgment of non-infringement. 

CONCLUSION

For the foregoing reasons, we affirm the district court’s holding that the RE ’885 

patent claims 27, 28, 32, and 33 are invalid, but we reverse the district court’s 

invalidation of all other claims. We remand to the district court to address Becton’s 

motion for summary judgment of non-infringement on original claims 13, 19, and 20. 

AFFIRMED IN PART, REVERSED IN PART and REMANDED

COSTS 

Each party shall bear its own costs.