Retractable Technologies, Inc. v. Becton Dickinson and Company, 757 F.3d 1366

Background

Retractable sued Becton asserting that Becton’s 1 mL and 3 mL Integra syringes infringed Retractable’s patents; jury found both infringed and awarded $5,000,000 in a lump-sum reasonable royalty.
Becton appealed; this court reversed as a matter of law that the 3 mL syringe infringed, affirmed infringement for the 1 mL syringe, and did not remand damages.
After mandate, Becton moved in district court (invoking Rule 60(b)(5) and mandamus-style arguments) to modify the damages award and injunction to reflect the partial reversal.
The district court modified the injunction to exclude the 3 mL syringe but declined to revisit the $5 million damages award, concluding the mandate rule precluded reconsideration.
On appeal, Becton argued the mandate required new damages proceedings (or an exception to the mandate rule applied), while Retractable argued Becton waived the issue by not raising it on the prior appeal and the damages verdict was encompassed by the mandate.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the district court was required to reopen damages after this court partially reversed infringement	Becton: mandate required revisiting damages to allocate award to the surviving 1 mL infringement	Retractable: damages were part of the appealed judgment and incorporated into the mandate; Becton waived remand request by not raising it	Held: No — mandate forecloses reopening damages because damages were within scope of the appealed judgment and not remanded
Whether a substantial change in evidence/facts permits an exception to the mandate rule	Becton: partial reversal of infringement (this court’s opinion) constitutes a changed circumstance warranting exception	Retractable: no new trial or new evidence; appellate decision is not a change in evidence sufficient to excuse the mandate rule	Held: No — no substantial change in evidence occurred and appellate decision is not the kind of factual change that triggers the exception
Whether Becton waived the right to seek remand of damages by failing to raise it on prior appeal	Becton: could not have meaningfully asked to alter the damages award before the mandate	Retractable: Becton could and should have requested remand on damages during the first appeal; failing to do so waived the issue	Held: Court emphasizes Becton’s failure to raise remand earlier was critical and treats the issue as incorporated into the mandate (waiver dispositive)
Whether Rule 60(b)(5) authorized relief from the damages award	Becton: sought relief under Rule 60(b)(5) to modify judgment prospectively in light of partial reversal	Retractable: Rule 60(b) inappropriate to evade mandate rule; district court lacked authority absent remand	Held: Court did not reach Rule 60(b)(5) merits because mandate rule alone foreclosed relief

Key Cases Cited

Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir.) (partial reversal sometimes prompts remand for damages when damages verdict is general)
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir.) (remand for damages after partial reversal where general damages verdict cannot be parsed)
Accentra, Inc. v. Staples, Inc., [citation="500 F. App'x 922"] (Fed. Cir.) (similar treatment of damages remand after partial reversal)
Laitram Corp. v. NEC Corp., 115 F.3d 947 (Fed. Cir.) (mandate interpretation is a question of law)
Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379 (Fed. Cir.) (issues within the scope of an appealed judgment are incorporated into the mandate)
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475 (Fed. Cir.) (district court free to take actions consistent with a mandate but not to disturb matters within it)
Tronzo v. Biomet, Inc., 236 F.3d 1342 (Fed. Cir.) (discussing limited circumstances where substantial change may justify revisiting mandate)
Arizona v. California, 460 U.S. 605 (U.S.) (equity courts may revisit issues in reaction to changed circumstances)
Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir.) (district courts have broad equitable authority to modify injunctions prospectively)
Heathcoat v. Potts, 905 F.2d 367 (11th Cir.) (exception to law-of-the-case for substantially different evidence)