The Court of Appeals for the Federal Circuit held that whether broadened claims are invalidated by the recapture rule is an issue separate from construction. (MBO Laboratories v. Becton, Dickinson & Company; 06-1062). In this case, MBO appealled a summary judgment of noninfringement of U.S. Patent No. RE 36,885 based on the district court’s claim construction on a hypodermic safety syringe.The patented invention relates to syringes with features intended to protect people from inadvertent needle sticks by somehow covering the needle. Having stuck myself with a needle here and there, I know it’s importance.
MBO’s syringe is essentially structured by having the needle or cannula mounted inside a guard sleeve. 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. During a long, tortured prosecution history, MBO differentiated cited prior art patents for failing to prevent the re-emergence of the needle. Id. at 7-8. MBO additionally differentiated the one reference as lacking “the automatic and immediate safety means of the present invention.”A reissue of the ’699 patent was done because the claims could be interpreted to cover only backwards movement—”retraction”—of the needle into a stationary guard, and not pushing the guard forward while holding the needle still. It asked to replace “retraction” with “relative movement” in order to more clearly capture embodiments where the guard sleeve was moved forward. The PTO allowed the reissue without objection. The district court then limited the claims to “retraction,” negating the expansion of claim scope permitted by the PTO, in part because of the recapture rule.
The recapture rule is a limitation on the ability of patentees to broaden their patents after issuance. Inventors may seek reissuance of their patent under 35 U.S.C. § 251, if the reissue application is filed within two years of the patent’s initial issuance and the patentee “through error without any deceptive intention . . . claim[ed] . . . less than he had a right to,” the reissue patent’s claims may be broader than the original patent’s claims. The recapture rule thus serves the same policy as does the doctrine of prosecution history estoppel: both operate, albeit in different ways, to prevent a patentee from regaining what had previously been committed to the public.
The court reversed and remanded stating:
We believe that the district court erred in the first instance by applying the recapture rule to rewrite the claims, essentially unmaking the change that the PTO had permitted. Claim construction should not, of course, be blind to validity issues: “claims should be so construed, if possible, as to sustain their validity.” Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). A claim that is interpreted too broadly will run into validity issues, providing motivation for the construing court to choose a narrower interpretation if possible. However, validity construction should be used as a last resort, not a first principle: “we have limited the maxim [that claims are to be construed to preserve validity] to cases in which the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Phillips, 415 F.3d at 1327 (quotation marks omitted).
The Federal Circuit disagreed with the district court’s construction of the phrase as referring to “a stationary body into which the movable needle retracts.” But said that this is not to say that the recapture rule may never properly factor into claim construction:
In a case where the available techniques of construction yield two possible interpretations of a reissue claim, only one of which includes previously surrendered matter, it would be correct to resolve the ambiguity by selecting the interpretation not barred by the recapture rule.
