Retractable Techs., Inc. v. Becton, Dickinson and Co. (Fed. Cir. July 8, 2011)
In this case, the patent at issue related to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used. Judge Lourie, writing for the majority, reversed the district court’s claim construction and found the term “body”, as used in the patent, required a one-piece structure, rather than including multiple-piece structures. The majority opinion explained that “none of the [patent] claims expressly recite a body that contains multiple pieces” and the specification distinguished “prior art syringes comprised of multiple pieces” while not disclosing a multiple-piece body as part of the claimed invention.
In dissent, Judge Rader opined that the majority had improperly imported limitations from the specification into the claims, finding the ordinary and customary meaning of the term “body” “does not inherently contain a one-piece structural limitation”, “neither the claim language or the written description evinces intent by the patentee to limit the scope of ‘body’ to one-piece bodies”, and using the doctrine of claim differentiation as two dependent claims recited a one-piece body limitation.
In a short concurrence, Judge Plager noted that “However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats … the claim cannot go beyond the actual invention that entitled the inventor to the patent. For that we look to the written description. … I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. … I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to server the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more."