MBO Laboratories, Inc. v. Becton, Dickinson & Company
A Brief Commentary on Frequently Used Claim Language.
Plaintiff MBO Laboratories, Inc. (“MBO”) appealed a summary judgment of non-infringement of U.S. Patent No. RE 36,885 (“the RE ’885 patent”) granted by the United States District Court for the District of Massachusetts. After conducting a Markman hearing, the district court construed the various disputed claim terms. MBO Labs. v. Becton, Dickinson, & Co., 385 F. Supp. 2d 88 (D. Mass. 2005). MBO conceded that under the district court’s claim construction there was no infringement of the patent claims. The district court therefore granted summary judgment in favor of defendant Becton, Dickinson & Company (“Becton”). MBO timely appealed the claim construction to this court.
The district court’s construction of the disputed term “immediately” was affirmed in part, while the construction of the terms “slidably receiving,” “relative movement,” “adjacent,” “proximity,” and “mounted on said body” were reversed.
The RE ’885 patent is directed generally to a design for a hypodermic safety syringe. The patented invention, the accused device, and relevant prior art syringes all include features intended to protect health care workers and bystanders from inadvertent needle sticks following an injection or drawing of fluid. This largely involves ensuring that the contaminated parts of the cannula or needle, especially the sharp point at the end of the cannula that enters the body, are covered in some manner soon after removal from the patient.
MBO’s syringe is described in detail in the patent, but it is essentially structured by having the needle or cannula mounted inside a guard sleeve. The needle’s sharp end protrudes through a hole in the front of the guard, permitting it to be inserted into the patient. When the needle is removed from the patient, the health care worker slides the needle backwards relative to the guard. A “blocking flange” is mounted on the guard and held in spring tension against the needle. When the needle’s point slides behind this flange, the flange moves vertically in relation to the guard, covering the tip of the needle and preventing it from being inadvertently re-exposed. The needle’s tip is covered by the flange and the rest of the contaminated needle is sheathed inside the guard. Once the flange is activated, the needle is encapsulated by the guard sleeve and rendered safe.
The Term “Immediately”:
The interpretation of the term “immediately” was decided based on the prosecution history of the application. Arguments presented during prosecution drew distinctions between the patented invention and the prior art were utilized to determine what the patentee intended to surrender. Accordingly, this was not particularly helpful for claims drafting purposes and will not be discussed further.
The Terms “Relative Movement” and “Slidably Receiving”:
MBO 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, the court compelled to give effect to MBO’s stated intent to broaden the coverage of its claims. Whether those broadened claims would be invalidated by the recapture rule is an issue separate from construction. In the narrowly limited appellate posture of the case, only the question of infringement, not validity, was decided.
Given the specification, reissue prosecution, and associated Figures, the court found that the terms “relatively moved,” “slidably receiving,” and their cognates permit movement in a forward movement or in a retraction movement.
The Term “Adjacent”:
The district court found that the term “adjacent” meant “continuous or connected”. The proper construction of this term was decided by the court to mean “next to”.
The Term “Proximity”:
The court believed the specification as delineated by the figures rendered the district court’s construction—requiring that the needle be “flush with” the front of the guard when the flange activates—too narrow. In the embodiments designated by each figure, the blocking flange rests against the needle closely in front of, but not exactly at, the front of the guard body. As the needle moves, it will reach a point where it still protrudes from the front of the guard but is already clear of the blocking flange. The flange will therefore activate slightly but definitely before the needle submerges fully into the guard body and has its tip flush with the front; therefore, the district court’s construction impermissibly excludes these embodiments.
The proper construction of this term is “near.”
The Term “Mounted on Said Body”:
The district court found that where the term “mounted on said body” appeared, the mounting must be on the body’s exterior. The court found no reason to so limit the patent’s scope. The court stated that limiting claims from the specification is generally not permitted absent a clear disclosure that the patentee intended the claims to be limited as shown. Phillips, 415 F.3d at 1323.
The proper construction for “mounted on said body” is “attached to said body.”