United States Court of Appeals 

for the Federal Circuit ______________________ 

RETRACTABLE TECHNOLOGIES, 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

______________________ 

CYNTHIA TIMMS, Locke Lord LLP, of Dallas, Texas, 

argued for plaintiffs-appellees. With her on the brief were 

ROY W. HARDIN and MARK R. BACKOFEN. 

WILLIAM F. LEE, Wilmer Cutler Pickering Hale and 

Dorr LLP, of Boston, Massachusetts, argued for defendant-appellant. With him on the brief were WILLIAM G.

MCELWAIN, HEATH A. BROOKS, and ROBERT A. ARCAMONA, 

of Washington, DC. Of counsel was RUSSELL S. POST, 

Beck Redden LLP, of Houston, Texas. 

______________________ 
 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON

AND COMPANY

2

Before LOURIE AND LINN,Circuit Judges.*

LINN, 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 judgment 

on which the award was based. Retractable Techs., 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. BACKGROUND

In 2007, Retractable Technologies, Inc. (“Retractable”) 

sued Becton in the Eastern District of Texas, alleging that

Becton’s 1 mL and 3 mL IntegraTM syringes infringed 

various claims of Retractable’s patents. Retractable 

Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 

1301 (Fed. Cir. 2011). Becton had commercially launched 

its 3 mL syringe in March 2002 and the 1 mL syringe in 

May 2003. J.A. 348. At trial, Retractable presented its 

theory that infringement began in 2000 and that a hypothetical 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 lost profits theory that would 

have Retractable’s recovery 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 TECHNOLOGIES, INC. v. BECTON DICKINSON 

AND COMPANY

3

royalty 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 found that any of BD’s [Becton’s] accused 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 Interrogatory Nos. 3 through 5 [regarding invalidity], please 

determine the amount of reasonable royalty damages 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 Retractable’s favor and a permanent injunction against the continued sale of both syringes. 

Becton appealed the infringement and validity determinations to this court but neither appealed nor requested 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, we 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. Therefore, 

we reversed the district court’s judgment that the 3 mL 

syringe infringed. 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 ordered. See id.

 Becton subsequently requested the district court to 

modify the permanent injunction and the damages award 
 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON

AND COMPANY

4

in light of this court’s decision. Becton used Fed. R. Civ. 

P. 60(b)(5) as its vehicle for filing the motion, a rule under 

which the court “may relieve” a party from a final judgment 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 independent of Rule 60(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 lower-selling 1 mL 

syringe is the only remaining infringing product. Retractable 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. Opinion 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 

reconsideration. Id. 

Becton appeals. This court has jurisdiction under 28 

U.S.C. § 1295(a)(1).

II. STANDARD OF REVIEW

 Interpretation of this court’s mandate is a question of 

law that this court reviews de novo. Laitram Corp. v. 

NEC Corp., 115 F.3d 947, 950–51 (Fed. Cir. 1997). 

III. ANALYSIS

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 damages proceedings because the original judgment is inconsistent with that mandate. Becton further argues that 

the issue of damages attributable only to the 1 mL syringe 
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 

AND COMPANY

5

was not within this court’s mandate because it was not 

and could not have been 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 that 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 award, 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 exception 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 reconsideration of the damages award itself, which is possible only if 

the mandate rule allows revisiting 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 Holdings 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 rever-
 RETRACTABLE TECHNOLOGIES, 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 damages 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 determination within a judgment of invalidity 

or infringement appealed to this court. While this court

regularly issues remands when requested and appropriate, 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 that fall within our mandate. 

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 sentence 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-recordings/search/audio.html (“. . . if we 

could go back in time, we’d add a portion of a sentence 

asking to vacate the damages award, or could we wish 

that ‘remand’ was a word that was at the end of the 
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 

AND COMPANY

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court’s opinion, the answer is obviously ‘for sure’”). Instead, Becton not only made no effort to raise the issue, it 

arguably made an effort to avoid raising the issue by only 

requesting 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 consistent with this court’s mandate. 

While the district court was certainly free to take action 

consistent with the mandate, see Exxon Chem. Patents, 

Inc. v. Lubrizol Corp., 137 F.3d 1475, 1484 (Fed. Cir. 

1998), that does not mean that it was likewise free to 

disturb matters that were within the mandate. “Unless 

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 adjudication.” 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 presented 

to the jury. 

[The] responsibility [to review judgments appealed to us] can be properly discharged only if 

the court assumes that the appellant has fully set 

forth its attack on the judgment 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 necessarily waived. Unless 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 

adjudication. 
 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON

AND COMPANY

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166 F.3d at 1383. The damages award was within the 

scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the 

issue of a remand to consider parsing damages by product. 

Becton contends that a damages amount attributable 

solely to the 1 mL syringe was not determined by the jury 

or decided by the district court in the original judgment 

and, thus, should not be deemed within the court’s mandate. 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 Interrogatory No. 6 nor indicated to this court or Retractable that it 

believed a partial reversal would require revisiting that 

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 consideration 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 reversal 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 of 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 TECHNOLOGIES, INC. v. BECTON DICKINSON 

AND COMPANY

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Nor does an exception to the mandate exist in this circumstance. Becton contends that a substantial change in 

the evidence has occurred and that such a change warrants an exception to the mandate rule. In Tronzo v. 

Biomet, Inc., 236 F.3d 1342, 1349 (Fed. Cir. 2001), the 

court noted that the mandate rule was “prudential” and

that “courts have considered revisiting issues otherwise 

foreclosed in circumstances where there has been a substantial change in the evidence.” Tronzo later refers to a 

“substantial change in the facts.” Id. at 1350. Of the four 

cases Tronzo cites in support for exceptions to the mandate rule, two cases 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 reaction to changed circumstances” that “could not be disposed 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 doctrine when “a 

subsequent trial produce[d] substantially different evidence.”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 occurred and there has been no actual change in the evidence or the facts. 

The only intervening change Becton identifies is this 

court’s previous opinion, reversing-in-part the infringement verdict based on claim construction. However, 

Becton identifies no support for its position 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 substantial change in the evidence allows an exception to the 

mandate rule.

 
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AND COMPANY

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sufficient to create an exception to the mandate of that 

same decision. Contrary to Becton’s contention, the court 

in Tronzo did not substantively analyze whether its own 

decision 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 associated with those claims. Id. at 1346. Biomet did not 

appeal punitive damages. At the first appeal, this court 

reversed regarding aspects of infringement, validity, and 

compensatory damages for the state law claims. Id. This 

court then specifically remanded for the district court to 

reconsider compensatory damages. Id. The district court 

reduced the compensatory damages to $520 and correspondingly reduced punitive damages to $52,000. Id. 

However, Biomet had not appealed the punitive damages 

award. Thus, without an exception to the rule, the mandate rule precluded the district court from revisiting the 

issue. On a second appeal, this court carefully analyzed 

whether the district court’s reduction of the compensatory 

damages was a substantial change sufficient to trigger 

such an exception and concluded it was not. Id. at 1349–

50. Significantly, however, the subject of that analysis 

was the district court’s change to the compensatory damages award, not this court’s reversal and remand that 

prompted the change in the first instance. 

Becton has not presented a compelling reason to 

extend Tronzo. Becton contends that the damages award 

is inconsistent with the mandate, but none of the arguments 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 

from this record what the significance of that alleged 

disparity might have been in the jury’s deliberations. 
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 

AND COMPANY

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Becton next contends that the district court’s modification

of the injunction to remove the 3 mL syringe from its 

scope is inconsistent with the district 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. However, the injunction—unlike the verdict—clearly implicated 

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 remand on damages in the first appeal but did not. Becton 

points out that the 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 interest but an adjustment of the $5 million damages award—

an argument that could have and should have been addressed previously. Becton argues that the district court’s 

rationale would leave the $5 million award unassailable 

even if this court had reversed infringement findings of 

both syringes. But 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 to 
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AND COMPANY

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Becton’s waiver of the issue or whether Rule 60(b) was an 

appropriate vehicle for the requested relief.

IV. CONCLUSION

For the foregoing reasons, this court affirms.

AFFIRMED