Retractable Techs. v. Becton, Dickinson and Co.
659 F.3d 1369
Fed. Cir.2011Background
- RTI and BD design and sell retractable syringes and allege patent infringement relating to RTI's '733, '077, and '224 patents.
- A jury found BD infringed those patents and that the asserted claims were not invalid for anticipation or obviousness.
- The district court construed key terms, including 'retainer member' and 'body', and excluded RTI's discovery responses from evidence.
- The district court's decision included a 'bridge' embodiment disclosure and a rejection of an exclusion of 'cutting' as a potential limitation.
- BD challenged the claim constructions, the exclusion of cutting from claim scope, infringement verdicts, and the exclusion of RTI discovery materials; the district court's JMOL and denial of a new trial were at issue.
- BD also challenged the validity ruling on claim 25 of the '077 patent (anticipation/obviousness) and pressed related issues on remand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper scope of 'retainer member' and 'needle holder' | RTI's claims allow overlap; no requirement of separate pieces. | BD contends retainer member and needle holder must be separate parts. | Claims may not require two separate pieces; overlap permissible. |
| Limitation scope of 'body' as one-piece | The claims use 'body' without explicit one-piece limitation; description supports broader reading. | 'Body' should be one-piece per specification. | Court adopts one-piece limitation for 'body'. |
| Whether devices operating by 'cutting' are excluded from claim scope | Bridge embodiment suggests cutting can fall within invention. | Specifications disavow cutting as within the invention. | No express disavowal; cutting not excluded as matter of law. |
| Infringement of 3 mL Integra under revised 'body' construction; doctrine of equivalents | RTI could prove infringement via equivalents. | Doctrine of equivalents barred by specification stating one-piece body. | 3 mL Integra does not infringe under literal scope; doctrine of equivalents barred by express one-piece description. |
| Exclusion of RTI discovery responses from evidence | Responses are relevant to credibility and prior positions. | Exclusion preserved; not reversible error. | District court did not abuse discretion; exclusion affirmed. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims read in light of the specification; intrinsic record guides scope of invention)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc; claim construction is reviewed de novo)
- Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (U.S. 1950) (doctrine of equivalents standard)
- Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003) (anticipation and related issues; standard for prior art)
- J. M. Corp. v. Harley-Davidson, Inc., 269 F.3d 1360 (Fed. Cir. 2001) (whether specification limits equivalents; law of scope)
- Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir. 2010) (statements about prior art not necessarily disclaiming claim scope)
- Lazare Kaplan Int'l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359 (Fed. Cir. 2010) (import of limitations from specification into claims; caution against overreach)
- Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) (claim differentiation and interpretation)