Becton Dickinson Liable for Full Infringement Damages Award Despite Part Appeal Success

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By Tony Dutra  

July 7 — Becton Dickinson and Co. had to appeal a damages award along with validity and infringement findings if it hoped partial reversal of the findings would result in a reduced award, the U.S. Court of Appeals for the Federal Circuit ruled on July 7.

The court affirmed a district court's judgment that the appeals court's previous mandate—partial reversal, without remand, that only one of two accused syringe products infringed patents owned by Retractable Technologies Inc.—barred Becton from asking for a lower award.

One Out of Two Syringes Infringe

Becton and Retractable are competitors in the retractable syringe market. Their products feature a needle that retracts into the syringe body after use, avoiding accidental sticking by contaminated needles.

Thomas J. Shaw filed an application in 1995 that ultimately led to three patents (U.S. Patent Nos. 5,632,733, 6,090,077, and 7,351,224) now assigned to Retractable. The company filed a complaint in the U.S. District Court for the Eastern District of Texas, alleging patent infringement by Becton's 1 milliliter and 3 milliliter Integra syringes.

A jury found infringement by both products. A question on the verdict form further asked for “the amount of reasonable royalty damages that would fairly and adequately compensate [Retractable]” if “any of [Becton's] accused devices infringe any of the asserted claims of any of the [patents-in-suit].” The jury entered simply “$5,000,000” on the verdict form.

On appeal in 2011, the Federal Circuit reversed one claim construction judgment and consequently held that the 3 ml Integra did not infringe. 653 F.3d 1296, 2011 BL 179237, , 99 U.S.P.Q.2d 1233 (Fed. Cir. 2011). The court thus reversed in part and affirmed in part, but it did not remand for further consideration.

Back at the district court, Judge Leonard Davis refused Becton's request to modify the damages award, and Becton again appealed.

Contrary Results Distinguished

Judge Richard Linn wrote the court's opinion, which was joined by Judge Alan D. Lourie. The opinion for the most part distinguishes the court's precedents that allowed revisiting issues after appeals court reversals.

Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 2007 BL 108626, 84 U.S.P.Q.2d 1609 (Fed. Cir. 2007), was one of three cases remanded to the district court to further consider the damages issue in light of a partial reversal. But, the court said, in each case, “we were requested to do so or determined sua sponte under the circumstances before us that such action was appropriate.”

The court faulted Becton for failing to raise the issue in the first appeal, which further was “critical given the general nature of the jury verdict on damages and Retractable's lump-sum reasonable royalty theory that was presented to the jury.”

The court also distinguished two other cases where a district court considered a new issue despite a Federal Circuit's mandate lacking a remand order. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 45 U.S.P.Q.2d 1865 (Fed. Cir. 1998), and Laitram Corp. v. NEC Corp., 115 F.3d 947, 42 U.S.P.Q.2d 1897 (Fed. Cir. 1997).

The court said, “Remand was not necessary in either case for the district court to address those issues because the issues were not within the appealed judgment.”

Finally, the court distinguished Tronzo v. Biomet, Inc., 236 F.3d 1342, 57 U.S.P.Q.2d 1385 (Fed. Cir. 2001). That case was an “exception” to the mandate rule, the court said, because there was a substantial change in the evidence available in the case.

In contrast here, the court said, “The only intervening change Becton identifies is this court's previous opinion,” which cannot be considered a change in “evidence.”

The court acknowledged that the 3 ml Integra syringe far outsold the 1 ml syringe, but said, “there is no way to conclude from this record what the significance of that alleged disparity might have been in the jury's deliberations.”

The district court had agreed with Becton that an injunction against the 3 ml syringe should be lifted after the Federal Circuit's first decision. But the appeals court rejected the argument that separating the injunction question was inconsistent with not separating the damages issue.

It said, “the injunction—unlike the verdict—clearly implicated each syringe individually and easily could be parsed.”

“Becton had a fair opportunity to raise the issue during the prior appeal but did not,” the court said once more. “To permit this issue to be revisited anew would be to endorse an end-run around the mandate rule, which we are not about to do.”

Cynthia K. Timms of Locke, Lord, Bissell & Liddell LLP, Dallas, represented Retractable. William F. Lee of Wilmer Cutler Pickering Hale and Dorr, Boston, represented Becton Dickinson.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

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