Federal Circuit Interprets Claim Terms Based Upon Specification Examples and Clarifies Claim Interpretation to Preserve Validity of Claims

In MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 , 81 USPQ2d 1661 (Fed. Cir. January 24, 2007), the Court of Appeals for the Federal Circuit affirmed-in-part, and reversed-in-part claims construction, and vacated a summary judgment ruling by the U.S. District Court for the District of Massachusetts.  MBO appealed the holding of summary judgment of non-infringement for Becton, of MBO’s patent relating to a hypodermic safety syringe, U.S. Patent No. RE 36, 885 (‘RE ‘885 patent’). 

The RE ‘885 patent covers a safety syringe with an attached guard device.  When the needle is extracted from a patient, a guard body mechanism attached to the syringe engages as the needle is retracted into the guard, and a flange portion covers and prevents the needle tip within the guard from exposure, preventing accidental puncture.  Prosecution history indicates a series of patents, based on continuations and continuations-in-part, ultimately resulting in issuance of U.S. Patent No. 5,755,699 (the ‘699 patent). 

MBO sought a broadening reissue of the ‘699 patent based on 35 U.S.C. § 251.  The United States Patent and Trademark Office allowed the reissue application without objection.  The reissue application issued as RE ‘885 in 2000.  MBO’s basis for the reissue request was that it was entitled to claim “any relative movement between the needle and the body”, not just a “system wherein the needle must be bodily moved toward the safety device.”  MBO sued Becton for infringement of various claims of RE ‘885, including claims 32 and 33 which were added in the reissue process.  The District Court conducted Markman hearings, construing “immediately”, “relative movement”, “slidably receiving”, “adjacent”, “proximity”, and “mounted on said body.” Conceding that under the District Court’s construction, there would be no infringement of the disputed claims, MBO appealed the District Court’s ruling on summary judgment for Becton.

Term “Immediately” Means “Simultaneously” In the Context of the Specification

The Federal Circuit, mirroring the District Court’s analysis, focused on the specification and claim preamble where “immediately” appeared.  The Federal Circuit noted that the uses in the specification, which were consistent with the entire prosecution history, indicated that MBO clearly distinguished its invention from the prior art by stressing that the needle would be made instantly safe upon withdrawal from the patient (by activation of the blocking flange at the front of the guard body).  The Federal Circuit agreed with the District Court’s construction that “immediately” meant “simultaneously with the needle’s withdrawal from the patient”, and its appearance in the claim preamble carried the meaning over into the claim itself. 

However, the District Court had also given this meaning to claims 32 and 33, in which “immediately” did NOT appear.  Despite the tenor of the specification and prosecution history stressing “immediately”, the Federal Circuit could not allow construction to include this same requirement in claims 32 and 33 since no actual textual reference to “immediately” could be found in those claims.  In addition, no other actual textual references within claims 32 and 33 indicated a “simultaneity” requirement. 

Claim Interpretation to Preserve Validity of Claim Not Allowable Where Only One Interpretation Possible

In interpreting the phrases “relative movement” and “slidably receiving,” the Federal Circuit noted the primary motivation for MBO’s reissue request was a broadening of claims in the RE ‘885 patent to permit replacing “retraction” with “relative movement.”  That is, the embodiments MBO envisioned did not limit the invention to a stationary guard body, while only the needle was moving.  Rather MBO sought the equivalent act of pushing the guard forward while holding the needle still.  The District Court did not permit this expansion of claim scope since the District Court believed that the expanded definition would render the claims invalid under the recapture rule.  Therefore, the District Court limited the claims to only cover “retraction.”

On appeal, the Federal Circuit found the District Court’s interpretation to be too narrow an application of the recapture rule.  The recapture rule, based in 35 U.S.C. 251, would prohibit such broadening of claim scope if the earlier withdrawals or claim amendments were deliberate.  Without ruling whether there was actual recapture, the Federal Circuit found in the prosecution history that MBO’s explicitly stated purpose clearly sought to broaden the scope of its coverage to include relative movement and not just retraction.  The Federal Circuit held that the rule of interpreting a claim to preserve its validity only applies where there are competing interpretations.  As there was no doubt of the applicant’s desire to capture the expanded claim scope, the Federal Circuit held that the District Court’s interpretation was too narrow and improperly rewrote the claims.

Claim Term “Adjacent” Not Limited to Contiguous Relationships since Interpretation Excludes Preferred Embodiments

Again, relying on embodiments shown in various figures of RE ‘885, the Federal Circuit found the District Court’s construction too narrow relating to “adjacent”, “proximity”, and “mounted on said body.”  The District Court found that the term “adjacent” meant contiguous.  However, the Federal Circuit noted that such an interpretation excluded the preferred embodiment, which did not show the term adjacent being connected to or contiguous bodies.  Quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004), the Federal Circuit held that “[A] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” As such, the Federal Circuit held that “adjacent” should be more broadly construed to mean “next to” and not strictly “contiguous” or “connected”.

The Court of Appeals for the Federal Circuit affirmed the District Court’s construction for “immediately” in all claims except 32 and 33, reversing the construction of them and the other disputed claims terms.  Summary judgment was vacated and the case remanded for further proceedings.

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