The invention of the patent-at-issue is directed to safety syringes which prevent or mitigates accidental needle prickings by medical professionals. On appeal, the patentee contended that the District Court’s claim construction of the terms “immediately”, “relative movement” and “slidably receiving” was in error.
The District Court construed “immediately” to require the activation of a blocking flange simultaneously upon removal of the needle from the patient. The Federal Circuit agreed with the District Court’s construction of the term “immediately” because the Summary of the Invention section of the patent highlighted the simultaneous removal and protection feature. Also, in response to the Examiner’s rejection, the patentee distinguished the invention over the prior art as providing assurance that the needle will be made instantly safe upon withdrawal from the patient. The Federal Circuit agreed that the simultaneous-removal requirement is an essential element and the “immediately” limitation should be construed to mean simultaneous-removal. However, the Federal. Circuit. did not agree with the District Court’s imposition of the simultaneous-removal requirement upon Claims 32 and 33 which do not have any claim limitations that can reasonably be construed to impose the immediate or simultaneous element. The Federal Circuit thus did not impose the simultaneous-removal requirement upon these claims.
In relation to the terms “relative movement” and “slidably receiving,” initially, the patentee obtained issuance of the ‘699 patent reciting the terms “slidably receiving”. After issuance, but within two years, the patentee filed a reissue application seeking broader protection. In particular, the patentee changed the terms “slidably receiving” to “relative movement” to broaden such term to include movement of the guard forward over the needle instead of only retraction of the needle back into the guard. The PTO granted the broadened reissued patent. The District Court, nonetheless, construed the terms “relative movement” to be “slidably receiving”. Thus narrowing the meaning of the term “relative movement.” The District Court construed the term “relative movement” to mean “slidably receiving” in order to preserve validity because if the term “relative movement” had a broader meaning compared to slideably receiving, then recapture of surrendered subject matter would invalidate the claim.
The Federal Circuit noted that claims are construed to preserve validity in cases where limitations are ambiguous (i.e. open to two different interpretations). But in the present case the term “relative movement” is not open to different interpretations. As such, “relative movement” covers all movement not just retraction. The Federal Circuit held that claim construction is a different matter compared to validity.
In footnote 3, the Federal Circuit stated that “this is not to say that the recapture rule may never properly factor into claim construction. In a case where the available techniques of construction yield two possible interpretations of a reissue claim, only one of which includes previously surrendered matter, it would be correct to resolve the ambiguity by selecting the interpretation not barred by the recapture rule.” MBO Laboratories v. Becton, Dickinson & Co., 81 USPQ2d 1161 (Fed. Cir., 2007).