In Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 2010-1402, 2011 WL 2652448 (Fed. Cir. 2011), the Federal Circuit once again found itself in the claim construction thicket. In this case, the Federal Circuit relied on Seachange, Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361 (Fed. Cir. 2005), and the majority held that any presumption created by claim differentiation here was overcome by a contrary construction dictated by written description and prosecution history.
At trial below, Retractable Technologies, Inc. (“RTI”) sued Becton, Dickinson and Company (“Becton”) alleging infringement of three patents related to retractable needles. Representative language claimed “a hollow syringe body comprising a barrel and having a front and a back end . . . a retraction mechanism . . . comprising a needle holder having a head portion . . . the head portion further comprising an inner head, a continuous retainer member surrounding the inner head. . .” In claim construction, the trial court concluded that “retainer member” and “needle holder” need not be two separate parts and that “body” need not be limited to a one-piece structure. A jury found Becton liable for infringement.
Becton appealed and challenged various trial court rulings, including the claim constructions. Becton argued that “retainer member” and “needle holder” must be separate pieces because the claims list the terms as separate limitations. The Federal Circuit disagreed. Writing for the majority, Judge Lourie noted that the claim language recited “retainer member” as a sub-element of the “needle holder” and, as such, the two elements could structurally overlap.
As for “body,” Becton argued that the specification described the “invention” as comprising a one-piece body while disparaging prior art with two-piece bodies. For its part, the majority noted that while the patents contained independent claims that recited “body” and dependent claims that limited “body” to “one-piece body,” none of these claims expressly recited a “body” that contained multiple pieces. The majority went on to state that although these claims can be read to imply “body” as not limited to single structure, that implication was weak. Citing Seachange, Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361 (Fed. Cir. 2005), the majority held that any presumption created by claim differentiation here was overcome by a contrary construction dictated by written description and prosecution history. The Court thus sided with Becton and reversed the trial court’s claim construction of “body.”
In dissent, Judge Rader invoked Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) which, he argued, stands for the proposition that the claims themselves, not the written description portion of the specification, define the patented invention. He added that claim language is to be given its ordinary and customary meaning one skilled in the art at the time of invention. According to Judge Rader, “body” did not have special or technical meaning and did not contain a one-piece limitation. He further noted that neither claim language nor written description shows intent by RTI to limit scope of body to one-piece body. Judge Rader would have upheld the trial court’s construction of the term.