# United States **Court of Appeals**  **for the Federal Circuit**

______________________
RETRACTABLE TECHNOLO GIES, INC.

AND THOMAS J. SHAW, Plaintiffs

- Appellees,

v.

BECTON DICKINSON AND COMPANY , Defendant

- Appellant.

______________________

2013

- 1567

______________________ Appeal from the United States District Court for the Eastern District of Texas in No. 07

- CV

- 0250, Chief Judge Leonard Davis.

______________________

Decided: July 7, 2014

______________________
C YNTHIA T IMMS , Locke Lord LLP, of Dallas, Texas, argued for plaintiffs

- appellees. With her on the brief were R OY W. H ARDIN and M ARK R. B ACKOFEN

.

W ILLIAM F. L EE , Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, argued for defen dant

- appellant. With him on the brief were W ILLIAM G. M C E LWAIN , H EATH A. B ROOKS , and R OBERT A. A RCAMONA , of Washington, DC. Of counsel was R USSELL S. P OST , Beck Redden LLP, of Houston, Texas.

______________________RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 2

Before L OURIE AND L INN , Circuit Judges. *

L INN , Circuit Judge

. Becton, Dickinson and Company (“Becton”) appeals from the district court’s denial of Becton’s motion to modify the district court’s damages award following the partially successful appeal of the infringement judgm ent on which the award was based

. Retractable Tech s ., Inc. v. Becton, Dickinson & Co. , No. 2:07

- cv

- 250

- LED

- RSP, 2013 WL 4037929 (E.D. Tex. Aug

. 7, 2013) (“ Opinion ”). Because the mandate rule forecloses the relief that Becton seeks , we affirm.

I. B ACKGROU ND In 2007, Retractable Technologies, Inc. (“Retractable”) sued Becton in the Eastern District of Texas, alleging th at Becton’s 1 mL and 3 mL Integra TM syringes infringed various claims of Retractable’s patents

. Retractable Techs

. , Inc. v. Becton, Dickins on & Co. , 653 F.3d 1296, 1301 (Fed. Cir. 2011)

. Becton had commercially launched its 3 mL syringe in March 2002 and the 1 mL s yringe in May 2003. J.A. 348. At trial, Retractable presented its theory that infringement began in 2000 and that a hyp othetical negotiation at that time would have resulted in a lump sum payment of approximately $72 million for a ten- year license to practice the patents in any type or number of syringes , granting Becton freedom to operate

. Id. Becton countered with a los t profits theory that would have Re tractable’s recover y limited to approximately $5 million based on the sales of the 1 mL and 3 mL syringes, the vast majority of which were the 3 mL syringe. J.A. 477

– 78. Alternatively, Becton argued that a reasonable

* Randall R. Rader, who retired from the position of Circuit Judge on June 30, 2014, did not participate in this decision.RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 3

ro yalty would have been no more than approximately $3 million. Id. at 478. The jury ultimately found that both the 1 mL and 3 mL syringes infringed. The jury’s verdict form included a number of interrogatories, including Interrogatory No. 6: If you have f ound that any of BD’s [Becton’s] a ccused devices infringe any of the asserted claims of any of the [patents

- in

- suit], then even if you have answered “yes” to any portion of Interrogat ory Nos. 3 through 5 [regarding invalidity], please determine the amount of reasonable royalty da mages that would fairly and adequately compensate RTI [Retractable] for infringement. The jury responded: “$5,000,000.” J.A. 143. The district court subsequently entered a final judgment in Retract able’ s favor and a permanent injunction against the co ntinued sale of both syringes.
Becton appealed the infringement and validity dete rminations to this court but neither appealed nor reques ted a remand of the damages determination in the event the infringement or validity determinations were upset in

any way. Becton , 653 F.3d at 1302. Becton simply requested that this court “reverse the judgment or, in the alternative, order a new trial on infringement and/or invalidity.” J.A. 1057, 1099. In that appeal, w e concluded that the district court misconstrued one claim term . As a

consequence, we held as a matter of law that the 3 mL syringe could not infringe the asserted claims . T herefore

, we reversed the district court’s judgment that the 3 mL syringe infringe d. Becton , 653 F.3d at 1311. But we affirmed the judgment that the 1 mL syringe infringed and that the claim at issue was not invalid. Id. Having no basis for a new trial on infringement or invalidity , no remand was or dered. See id.

B ecton subseque ntly requested the district court to modify the permanent injunction and the damages awardRETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 4

in light of this court’s decision. Becton used Fed. R. Civ. P. 6 0(b)(5) as its vehicle for filing the motion, a rule under which the court “may relieve” a party fro m a final jud gment when the judgment “has been satisfied, released, or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable . . . .” Becton also argued that ind ependent of Ru le 6 0(b), modification was necessary to conform the judgment to this court’s mandate

, contending that the injunction and the damages award must be adjusted to reflect the fact that the low er- selling 1 mL syringe is the only remaining infringing product

. R etractable consented to modification of the permanent injunction to exclude from its scope the non

- infringing 3 mL syringe, and the district court so ordered, concluding that its broad equitable powers allowed it to prospectively modify that injunction. O pinion at *1 . However, the district court concluded that the mandate rule precluded it from revisiting the damages issue because it was within the scope of the original judgment and was not raised in the prior appeal nor remanded to the district court for

re consideration. Id.
Becton appeals. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).

II

. S TANDARD OF R EVIEW

I nterpretation of this court’s mandate is a question of law that this cour t reviews de novo

. Laitram Corp. v. NEC Corp. , 115 F.3d 947, 950

– 51 (Fed. Cir. 1997).

III

. A NALYSIS Becton argues that this court’s mandate, reversing the infringement verdict for the 3 mL but not the 1 mL syringe , required the district court to conduct new da mages proceedings because the original judgment is inco nsistent with that mandate. Becton further argues that the issue of damages attributable only to the 1 mL syringeRETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 5

was not within this court’s mandate because it was not and could not have bee n considered previously. To the extent the damages issue was within the mandate, Becton argues that the district court erred by declining to apply an exception to the mandate rule in cases of a substantial change in the evidence. Lastly, Becton argues th at it did not waive the argument over damages by failing to raise it in the previous appeal because it contends that before the court’s mandate, Becton had no argument that the damages award itself was erroneous.
Retractable responds that the damages awar d, based on Interrogatory No. 6, is not inconsistent with this court’s mandate. Retractable further argues that the damages issue is within the court’s mandate because Becton could have and should have raised this issue in the previous appeal. Retractable further argues that there has not been a substantial change in the evidence that would warrant an exce ption to the mandate rule

. Retractable also argues that Rule 60(b) cannot be used to support Becton’s requested relief.
Becton’s first argument, that the damages award is inconsistent with the mandate, puts the cart before the horse. Considering that argument requires reconsider ati on of the damages award itself, which is possible only if the mandate rule allows revisit ing the question, does not apply, or can be avoided by an exception

. Becton further contends that this court’s mandate actually requires the district court to conduct further proceedings on damages to determine the effect of the reversal on any damages award. We disagree.

Becton relies on Verizon Servs

. Corp. v. Vonage Hol dings Corp. , 503 F.3d 1295, 1310 (Fed. Cir. 2007). In that case, the court reversed a finding of infringement under one of three asserted patents and, though neither party briefed the issue , remanded to the district court to further consider the damages issue in light of that partial reve r-RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 6

sal. Verizon remarked that “where the jury rendered a single verdict on damages, without breaking down the damages attributable to each patent, the normal rule would require a new trial as to damages.” Id. See also NTP, Inc. v. Research in Motion, Ltd. , 418 F.3d 1282 (Fed. Cir. 2005) (remanding for further consideration of dama ges in light of a partial reversal and a general verdict); Accentra, Inc. v. Staples, Inc. , 500 F. App’x 922, 931 (Fed. Cir. 2013) (same). But Verizon

, NTP , and Accentra were all cases in which our court specifically remanded the question of damages to the district court, either because we were requested to do so or determined sua sponte under the circumstances before us that such action was appropriate. The cases do not stand for the proposition that the district court is required, let alone permitted, to revisit damages in the absence of a reversal or remand of a damages determin ation within a judgment of invalidity or infringement appealed to this court. While this court regularly issue s remand s when requested and appropr iate
, or on our own initiative if some but not all products are found on appeal not to infringe, there is no “normal rule” giving district courts the authority to regularly revisit or recalculate damages t hat fall within our ma ndate. Becton’s current substantive argument

— that the damages award must be revisited if either one of the two products at issue are found not to infringe

— could have and should have been raised in the previous appeal. Becton conceded at oral argument that in a single se ntence in the previous appeal it could have raised the issue of remanding the damages issue

. See Oral Argument at 35: 48, Retractable Techs

. , Inc. v. Becton Dickinson & Co

., No. 2013

- 1567, available at http://www.cafc.uscourts.gov/ oral

- argument -r ecordings/search/audio.html (“. . . if we could go back in time, we’d add a portion of a sentence asking to vacate the damage s award, or could we wish that ‘remand’ was a word that was at the end of theRETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 7

court’s opinion, the answer is obviously ‘for sure’”). I nstead, Becton not only made no effort to raise the issue, it arguably made an effort to avoid raising the issue by only

re questing the district court to reverse the judgment or order a new trial on infringement and /or validity. J.A. 1057, 1099.

Becton contends nonetheless that the district court was free to revisit damages because doing so at least would have been consiste nt with this c ourt’s mandate. While the district court was certainly free to take act ion consistent with the mandate, s ee Exxon Chem. Patents, Inc. v. Lubrizol Corp. , 137 F.3 d 1475, 1484 (Fed. Cir. 1998), that does not mean that it was likewise free to di sturb matters t hat were within the mandate. “U nless remanded by this court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudic ation.” Engel Indus

. , Inc. v. Lockformer Co. , 166 F.3d 1379, 1383 (Fed. Cir. 1999)

. Becton’s failure in the prior appeal to raise the issue of remand is critical given the general nature of the jury verdict on damages and Retractable’s lump

- sum reasonable royalty theory that was prese nted to the jury.
[The] responsibility [to review judgments a ppealed to us] can be properly discharged only if the court assumes that the appellant has fully set forth its attack on the judg ment below ; only then will the court be able to address with confidence the range of issues determined by the appealed judgment. . . . An issue that falls within the scope of the judgment appealed from but is not raised by the appellant in its opening brief on appeal is ne cessarily waived. Unless remanded by this c ourt, all issues within the scope of the appealed jud gment are deemed incorporated within the ma ndate and thus are precluded from further adjudication.RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 8

166 F.3d at 1383. The damages award was within the scope of the appealed judgment and thus was inco rp orated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by pro duct.

Becton contends that a damage s amount attributable solely to the 1 mL syringe w as not determined by the jury or decided by the district co urt in the original judgment and, thus, should not be deemed within the court’s ma ndate. However, the damages award was the result of the general nature of Interrogatory No. 6

. The judgment included the $5 million infringement award, which did not specify amounts separately for each product and could have been based on Retractable’s lump

- sum reasonable royalty theory, which was not dependent on the type or number of products sold but rather on granting Becton freedom to operate

. Becton neither objected to Interrog atory No. 6 nor indicated to this court or Retractable that it believed a partial reversal would require revisiting th at award

. Thus, the $5 million award was within the scope of the judgment, was incorporated into the mandate without argument, and was precluded from further co nsideration by the district court.

This case is unlike Lubrizol , in which the district court never reached the issue of infringement under the doctrine of equivalents and thus was free to consider the issue following revers al on literal infringement. Lubrizol

, 137 F.3d at 1484. Nor is the case like Laitram, 115 F.3d
at 952
, in which the district court was free to address issues “not only undecided on the merits by the trial court because they were moot, and thus on appeal unripe, but also neither presented to us nor discussed in our opinion, nor necessary to our disposition o f the appeal.” Remand was not necessary in either case for the district court to address those issues because the issues were not within the appealed judgment.RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 9

Nor does an exception to the mandate exist in this ci rcumstance. Becton contends that a subs tantial change in the evidence has occurred and that such a change wa rrants an exception to the mandate rule

. In Tronzo v. Bio met, Inc. , 236 F.3d 1342, 1349 (Fed. Cir. 2001), the court noted that the mandate rule was “prudential” and that “courts have con sidered revisiting issues otherwise foreclosed in circumstances where there has been a su bstantial change in the evidence.” Tronzo later refers to a “substantial change in the facts.” Id. at 1350. Of the four

cases Tronzo cites in sup port for exceptions to the ma ndate rule , two case s discuss the force of the mandate rule in the face of changes in the underlying evidence or facts : Arizona v. California , 460 U.S. 605 (1982) and Heathcoat v. Potts , 905 F.2d 367 (11th Cir. 1990). In Arizona , the Court held that the Court may revisit an issue “in rea ction to changed circumstances” that “could not be di sposed of at the time of an initial decree.” 460 U.S. at 623

– 24. In Heathcoat , the Eleventh Circuit noted that an exception exists to the law of the case doc trine when “a subsequent trial produce [d] substantially different ev idence.” 1 905 F.2d at 371. Here, as discussed above, Becton could have and should have raised the issue at the previous appeal. Further, no subsequent trial has o ccurred and there has been no actual change in the ev idence or the facts

. T he only intervening change Becton identifies is this court’s previous opinion, reversing

- in

- part the infring ement verdict based on claim construction . However, Becton identifies no support for its posit ion that a decision of this court can be considered a change in the “evidence”

1 Heathcoat discusses two other exceptions, neither of which is relevant to Becton’s argument that a substa ntial change in the evidence allows an exception to the mandate r ule.RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 10

sufficient to create an exception to the mandate of that same decision

. Contrary to Becton’s contention, t he court in Tronzo did not substantively analyze whether its own decis ion was a substantial change in the evidence or facts

, but rather whether the district court’s decision was such a change. In Tronzo , a jury awarded approximately $7 million in compensatory damages and $20 million in punitive damages. 236 F.3d at 1345

– 46 . The defendant, Biomet, appealed with respect to infringement, validity, state law claims, and the compensatory damages assoc iated with those claims. Id. at 1346. Biomet did not appeal punitive damages. At the first appeal, this court reversed regardi ng aspects of infringe ment, validity , and compensatory da mages for the state law claims. Id. T his
court then specifically remanded for the district court to reconsider compensatory damages. Id. The district court reduced t he compensatory damages to $52 0 and corr espondingly reduced punitive damages to $52,000. Id. However, Biomet had not appealed the punitive damages award. T hus

, without an exception to the rule, the ma ndate rule precluded the district court from revisiting the issue. On a second app eal, this court carefully analyzed whether the district court’s reduction of the compensatory damages was a substantial change suffi cient to trigger such an exception and concluded it was not

. Id. at 1349

– 50

. Significantly, h owever, the subject of that analysis was the district court ’s change to the compensatory da mages award, not this court’s rever sal and remand that prompted the change in the first instance

. Becton has not presented a compelling reason to extend Tronzo

. Becton c ontends that the damages award is inconsistent with the mandate, but none of the arg uments are persuasive. Becton points out that the 3 mL syringe, whose infringement finding was reversed, far outsold the 1 mL syringe. But there is no way to conclude fro m this record what the significance of that alleged disparity might have been in the jury’s deliberations.RETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 11

Becton next contends that the district court’ s modification of the injunction to remove the 3 mL syringe from its scope i s inconsistent with the dis trict court’s refusal to revisit damages and that, had the district court not issued an injunction in the first instance, Becton’s victory on the previous appeal would have had no impact at all. Howe ver, the injunction

— unlike the verdict

— clearly implicate d each syringe individually and easily could be parsed. Moreover, a district court has broad equitable authority to modify its own injunction prospectively, authority that is independent of an appellate mandate. See Amado v. Microsoft Corp. , 517 F.3d 1353, 1358 (Fed. Cir. 2008). To the extent that Becton desired a partial reversal to have greater impact, it had the opportunity to request a r emand on damages in the first appeal but did not. Becton points out that t he district court did order prejudgment interest beginning in 2002, when the non

- infringing 3 mL syringe entered the market, rather than 2003, when the infringing 1 mL syringe entered the market. However, Becton is not seeking recalculation of prejudgment inte rest but an adjustment of the $5 m illion damages award

—
an argument that could have and should have been a ddressed previously

. Becton argues that the district court’s rationale would leave the $5 million award unassailable even if this court had reversed infringem ent findings of both syrin ges. B ut that is not the current circumstance

, and moreover in that situation, the complete reversal would have erased the judgment entirely. Lastly, Becton argues that the mandate rule should account for some policy or principle of fairness, but again: Becton had a fair opportunity to raise the issue during the prior appeal but did not. To permit this issue to be revisited anew would be to endorse an end

- run around the mandate rule, which we are not about to do. Concluding that the mandate rule forecloses the relief that Becton seeks, we need not reach the arguments as toRETRACTABLE TECHNOLO GIES , INC

. v. BECTON DICKINSON
AND COMPANY 12

Becton’s waiver of the issue or whether Rule 60(b) was an appropriate vehicle for the requested relief.

IV. C ONCLUSION
For the for e going reasons, this court affirms.

AFFIRMED