Recapture Rule Pre-Empts Ability To Rewrite Claims

In a decision that centered on application of recapture rule in the context of claim construction, the U.S. Court of Appeals for the Federal Circuit vacated a district court’s grant of summary judgment of non-infringement of a patent relating to a hypodermic safety syringe. MBO Laboratories, Inc. v. Becton, Dickinson & Co., Case No. 06-1062 (Fed. Cir., Jan. 24, 2007) (Gajarsa J.).

MBO filed suit against Becton asserting infringement of claims 13, 19, 20, 27, 28, 32 and 33 of the U.S. Patent No. RE 36,885 (the RE ’885 patent). Claims 13, 19 and 20 were original to the patent; claims 27, 28, 32 and 33 were added during the reissue process. MBO’s primary reason for seeking reissue was that its claims could be interpreted to cover only backwards movement—"retraction"—of the claimed needle into a stationary guard and not the essentially equivalent act of pushing the guard forward while holding the needle still. MBO requested the U.S. Patent and Trademark Office (USPTO) to permit a