United States Court of Appeals for the Federal Circuit

2008-1288MBO LABORATORIES, INC.,Plaintiff-Appellant,v.BECTON, DICKINSON & COMPANY,Defendant-Appellee.John M. Skenyon, Fish & Richardson P.C., of Boston, Massachusetts, argued forplaintiff-appellant. With him on the brief was Jolynn M. Lussier.William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston,Massachusetts, argued for defendant-appellee. With him on the brief were William G.McElwain, Amy K. Wigmore and Todd C. Zubler, of Washington, DC; AlexandraMcTague, of New York, New York.Appealed from: United States District Court for the District of MassachusettsJudge Joseph L. Tauro

United States Court of Appeals for the Federal Circuit

2008-1288MBO LABORATORIES, INC.,Plaintiff-Appellant,v.BECTON, DICKINSON & COMPANY,Defendant-Appellee.Appeal from the United States District Court for the District of Massachusettsin case no. 03-CV-10038, Judge Joseph L. Tauro. ___________________________ DECIDED: April 12, 2010 ___________________________ Before GAJARSA, CLEVENGER, and DYK, Circuit Judges.GAJARSA, Circuit Judge.MBO Laboratories, Inc. (“MBO”) appeals from the U.S. District Court for theDistrict of Massachusetts’ judgment in favor of Becton, Dickinson & Co. (“Becton”),invalidating MBO’s U.S. Reissue Patent No. 36,885 (the “RE ’885 patent”) in its entiretybased on the rule against recapture. Because we hold that MBO violated the ruleagainst recapture, we affirm the district court’s holding that RE ’885 patent claims 27,28, 32, and 33 are invalid, but we reverse the district court’s invalidation of all other

claims. We remand to the district court to address Becton’s motion for summary judgment of non-infringement on original claims 13, 19, and 20.BACKGROUND

MBO is the assignee of the RE ’885 patent, which is a reissue of U.S. Patent No.5,755,699 (the “’699 patent”). In our previous opinion, we summarized the RE ’885patent’s technology and prosecution history at length. See MBO Labs., Inc. v. Becton,Dickinson & Co., 474 F.3d 1323, 1326–28 (Fed. Cir. 2007). We only recount the factsrelevant to this appeal below.I. The TechnologyThe RE ’885 patent discloses a design for a hypodermic safety syringe. “Thepatented invention, the accused device, and relevant prior art syringes all includefeatures intended to protect health care workers and bystanders from inadvertentneedle sticks following an injection or drawing of fluid.” Id. at 1326. In general, thesesyringes protect against needle-stick injuries by covering a contaminated cannula orneedle “after removal from the patient.” Id. The RE ’885 patent teaches a syringe thatprotects against needle-stick injuries by sheathing a contaminated needle in a flange-covered guard. Specifically, the patent discloses a needle mounted inside a “guardbody” wherein the needle can slide relative to the guard. See RE ’885 patent figs.4, 6B,col.2 ll.65–67, col.3 ll.1–3. “The needle’s sharp end protrudes through a hole in thefront of the guard, permitting it to be inserted into the patient. When the needle isremoved from the patient, the health care worker slides the needle backwards relativeto the guard.” MBO, 474 F.3d at 1326. As soon as the health care worker slides theneedle passed a “blocking flange,” which is mounted to the guard body, the flange2008-12882