Recapture Rule Must Not Undo Broadening Reissue

In a decision that one commentator rightly calls “yet another set of claim construction rulings [that] manifest just how very difficult it is to apply the claim construction regime that has evolved under the complex rules of the court,” the Federal Circuit in MBO Laboratories, Inc. v. Becton, Dickinson & Company (January 24, 2006) concluded, among other things, that the lower court improperly applied the recapture rule to rewrite the claims, essentially unmaking the change that the PTO had permitted.

Under U.S. law, the recapture rule excludes earlier deliberate withdrawals and amendments from the allowable scope of a reissue patent. According to the decision by Circuit Judge Gajarsa:

Under the recapture rule, claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution are impermissible.” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998). We described in depth the required analysis in a recapture case in In re Clement, 131 F.3d at 1468-70. First, the original and reissued claims are construed to ascertain “whether and in what aspect the reissue claims are broader than the patent claims.” Id. at 1468. If the reissue claims are broader in some way, the court must determine “whether the broader aspects of the reissue claims relate to the surrendered subject matter.” Id. at 1468-69. This is accomplished by reviewing the prosecution history to determine what has been surrendered and determining whether the additional coverage of the reissue claim reads on the surrendered matter. Id. at 1469-70. If it does, the recapture rule bars the claim. Id. at 1470.

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). Construction of the claims here is not so difficult a problem as to require resort to the validity maxim.

MBO clearly sought in reissue to broaden the scope of its patent coverage by rewriting its claims to cover all relative movement, not just retraction. That broadening was the explicitly stated purpose of the reissue application. Application for Reissue of U.S. Patent No. 5,755,699, Reissue Declaration of Blecher et al. at 2 (July 1, 1999) (original claims “claim less than we had a right to claim in that they fail to claim clearly that any relative movement … will achieve the desired result of preventing needlestick hazard, whether or not the needle moves toward the body and connected safety device”). In light of these clear statements in the prosecution history of the RE ‘885 patent, we are compelled to give effect to MBO’s stated intent to broaden the coverage of its claims. Whether those broadened claims are invalidated by the recapture rule is an issue separate from construction. In the narrowly limited appellate posture of this case, only the question of infringement, not validity, is before us.

All of the disputed method claims, both original and reissued, refer to “providing a body slidably receiving the needle.” The district court construed that phrase as referring to “a stationary body into which the movable needle retracts.” We disagree with that construction. In our view, the term refers to the physical relationship between the guard body and the needle, such that the guard body is capable of sliding relative to the needle. That construction of “slidably receiving” is dictated in part by the embodiment depicted in Figures 3 and 4 of the RE ‘885 patent; those figures show the needle extending forward, not retracting backwards, relative to the guard body. See RE ‘885 patent col.6 ll.25-32. Therefore, we find that the terms “relatively moved,” “slidably receiving,” and their cognates permit the needle and guard to slide in any manner.

For more information on this topic, please contact William F. Heinze ( at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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