RE 36,885 goes to a safety feature for syringes: a guard sleeve to cover the needle.

RE 36,885 had an extensive prosecution history: a broadening reissue of 5,755,699, it is a descendent of the parent, and has a family.

The RE '885 patent is the only one asserted in this litigation, but the entire prosecution history of its relatives is relevant to the claim construction analysis. See Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004).

A lot of prior art was cited, a roasting over which claims were adjusted and narrowed, but later, the reissue widening scope.

After issuance of the '699 patent, MBO sought a broadening reissue pursuant to 35 U.S.C. § 251 in July 1999. In its reissue application, it argued the claims of the '699 patent were narrow and that it had a right to broader claims. Specifically, it noted that it was entitled to claim a system having "any relative movement between the needle and the body," not just a "system wherein the needle must be bodily moved toward the safety device." The PTO allowed the reissue application without objection...

As to the lawsuit -

MBO filed suit against Becton in the United States District Court for the District of Massachusetts, asserting infringement of claims 13, 19, 20, 27, 28, 32, and 33 of the RE '885 patent. MBO, 385 F. Supp. 2d at 91. Claims 13, 19, and 20 were original to the '699 patent; claims 27, 28, 32, and 33 were added during the reissue process. Id. at 103. The district court conducted a hearing to construe the claims pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Several claim terms were disputed by the parties, namely: "immediately," "relative movement," "slidably receiving," "adjacent," "proximity," and "mounted on said body." The district court's Markman order covers each of these terms.

The basic claim construction priority stack, elaborated in Phillips v. AWH: intrinsic before extrinsic.

Ascertaining the meaning of the claims requires that they be viewed in the context of "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004)). Phillips teaches that different weights are to be placed on these sources. The most relevant source is the patent's specification, which is "the single best guide to the meaning of a disputed term." Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Next in importance is the prosecution history, which is also part of the "intrinsic evidence" that directly reflects how the patentee has characterized the invention. Id. at 1317. Extrinsic evidence--testimony, dictionaries, learned treatises, or other material not part of the public record associated with the patent--may be helpful but is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history. Multiform Dessicants, Inc. v. Medzam, 133 F.3d 1473, 1478 (Fed. Cir. 1998).

"immediately"

[T]he district court construed "immediately" to require the activation of the blocking flange simultaneously with removal from the patient. The court decided that this term imposed a limitation upon claims where it appeared in the preamble, as well as upon two claims where it did not literally appear. We agree with each of these conclusions.

"adjacent"

We disagree with the requirement imposed by the district court that the blocking flange be "contiguous or connected" with the front face of the guard body. "[A] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct." On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) (quotation marks omitted). Two different preferred embodiments, depicted by Figure 4 of the '655 patent and Figure 9A of the RE '885 patent, clearly show the blocking flange resting somewhat in front of the front surface and not in any way "contiguous or connected" with it. The proper construction of this term is "next to."

"proximity"

The district court construed "proximity" to being "flush with." Too narrow, ruled the CAFC: "near" is more like it.

"mounted on said body"

The appeals court ruled that the district court had improperly imported limitation on the claim from the specification, particularly the figures.

The district court found that where the term "mounted on said body" appears, the mounting must be on the body's exterior. There is no reason to so limit the patent's scope. The patent figures all depict the flange connected mainly to the outside, but patent coverage is not necessarily limited to inventions that look like the ones in the figures. See, e.g., Gart v. Logitech, Inc., 254 F.3d 1334, 1342 (Fed. Cir. 2001) ("These drawings are not meant to represent 'the' invention or to limit the scope of coverage defined by the words used in the claims themselves."). To hold otherwise would be to import limitations onto the claim from the specification, which is fraught with "danger." Phillips, 415 F.3d at 1323; see also Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("We recognize that there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification."). 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."

"relative movement" & "slidably receiving"

Before the district court, the recapture rule came into play. The appeals court said that was a mistake in this instance: the broader meaning of the terms should be allowed, since that was the whole point of the reissue.

MBO's primary reason for seeking reissue of the '699 patent was that its claims could be interpreted to cover only backwards movement--"retraction"--of the needle into a stationary guard, and not the essentially equivalent act of pushing the guard forward while holding the needle still. It requested the PTO to permit a broadening of the claims, replacing the term "retraction" with "relative movement" in order to more clearly capture embodiments where the guard sleeve was moved forward. The PTO allowed the reissue without objection. The district court nonetheless limited the claims to "retraction," negating the expansion of claim scope permitted by the PTO. Its decision to do so was in part driven by the recapture rule. MBO, 385 F. Supp. 2d at 103-04 (citing N. Am. Container v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005)).

The recapture rule is a limitation on the ability of patentees to broaden their patents after issuance. Inventors may seek reissuance of their patent under 35 U.S.C. § 251, as MBO did here. If the reissue application is filed within two years of the patent's initial issuance and the patentee "through error without any deceptive intention . . . claim[ed] . . . less than he had a right to," the reissue patent's claims may be broader than the original patent's claims. Id. Section 251 is "remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). However, the remedial function of the statute is limited. Material which has been surrendered in order to obtain issuance cannot be reclaimed via section 251: "deliberate withdrawal or amendment cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251." In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (quoting Haliczer v. United States, 356 F.2d 541, 545 (Ct. Cl. 1966)). It is critical to avoid allowing surrendered matter to creep back into the issued patent, since competitors and the public are on notice of the surrender and may have come to rely on the consequent limitations on claim scope. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998) ("[T]he recapture rule . . . ensur[es] the ability of the public to rely on a patent's public record."). The public's reliance interest provides a justification for the recapture rule that is independent of the likelihood that the surrendered territory was already covered by prior art or otherwise unpatentable. The recapture rule thus serves the same policy as does the doctrine of prosecution history estoppel: both operate, albeit in different ways, to prevent a patentee from encroaching back into territory that had previously been committed to the public.

In operation, the recapture rule excludes earlier deliberate withdrawals and amendments from the allowable scope of a reissue patent. "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.

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.

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.

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.

Vacated and remanded.