Retractable Technologies, Inc. v. Becton Dickinson and Company

United States Court of Appeals
for the Federal Circuit
______________________
RETRACTABLE TECHNOLOGIES, INC.
AND THOMAS J. SHAW,
Plaintiffs-Appellees,
v.
BECTON DICKINSON AND COMPANY,
Defendant-Appellant.
______________________
2013-1567
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 07-CV-0250, Chief Judge
Leonard Davis.
______________________
Decided: July 7, 2014
______________________
CYNTHIA TIMMS, Locke Lord LLP, of Dallas, Texas,
argued for plaintiffs-appellees. With her on the brief were
ROY W. HARDIN and MARK R. BACKOFEN.
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for defend-
ant-appellant. With him on the brief were WILLIAM G.
MCELWAIN, HEATH A. BROOKS, and ROBERT A. ARCAMONA,
of Washington, DC. Of counsel was RUSSELL S. POST,
Beck Redden LLP, of Houston, Texas.
______________________
2 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
Before LOURIE AND LINN,Circuit Judges. *
LINN, Circuit Judge.
Becton, Dickinson and Company (“Becton”) appeals
from the district court’s denial of Becton’s motion to
modify the district court’s damages award following the
partially successful appeal of the infringement judgment
on which the award was based. Retractable Techs., Inc. v.
Becton, Dickinson & Co., No. 2:07-cv-250-LED-RSP, 2013
WL 4037929 (E.D. Tex. Aug. 7, 2013) (“Opinion”). Be-
cause the mandate rule forecloses the relief that Becton
seeks, we affirm.
I. BACKGROUND
In 2007, Retractable Technologies, Inc. (“Retractable”)
sued Becton in the Eastern District of Texas, alleging that
Becton’s 1 mL and 3 mL IntegraTM syringes infringed
various claims of Retractable’s patents. Retractable
Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296,
1301 (Fed. Cir. 2011). Becton had commercially launched
its 3 mL syringe in March 2002 and the 1 mL syringe in
May 2003. J.A. 348. At trial, Retractable presented its
theory that infringement began in 2000 and that a hypo-
thetical negotiation at that time would have resulted in a
lump sum payment of approximately $72 million for a
ten-year license to practice the patents in any type or
number of syringes, granting Becton freedom to operate.
Id. Becton countered with a lost profits theory that would
have Retractable’s recovery limited to approximately $5
million based on the sales of the 1 mL and 3 mL syringes,
the vast majority of which were the 3 mL syringe. J.A.
477–78. Alternatively, Becton argued that a reasonable
* Randall R. Rader, who retired from the position of
Circuit Judge on June 30, 2014, did not participate in this
decision.
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 3
AND COMPANY
royalty would have been no more than approximately $3
million. Id. at 478. The jury ultimately found that both
the 1 mL and 3 mL syringes infringed. The jury’s verdict
form included a number of interrogatories, including
Interrogatory No. 6:
If you have found that any of BD’s [Becton’s] ac-
cused devices infringe any of the asserted claims
of any of the [patents-in-suit], then even if you
have answered “yes” to any portion of Interrogato-
ry Nos. 3 through 5 [regarding invalidity], please
determine the amount of reasonable royalty dam-
ages that would fairly and adequately compensate
RTI [Retractable] for infringement.
The jury responded: “$5,000,000.” J.A. 143. The district
court subsequently entered a final judgment in Retracta-
ble’s favor and a permanent injunction against the con-
tinued sale of both syringes.
Becton appealed the infringement and validity deter-
minations to this court but neither appealed nor request-
ed a remand of the damages determination in the event
the infringement or validity determinations were upset in
any way. Becton, 653 F.3d at 1302. Becton simply re-
quested that this court “reverse the judgment or, in the
alternative, order a new trial on infringement and/or
invalidity.” J.A. 1057, 1099. In that appeal, we concluded
that the district court misconstrued one claim term. As a
consequence, we held as a matter of law that the 3 mL
syringe could not infringe the asserted claims. Therefore,
we reversed the district court’s judgment that the 3 mL
syringe infringed. Becton, 653 F.3d at 1311. But we
affirmed the judgment that the 1 mL syringe infringed
and that the claim at issue was not invalid. Id. Having
no basis for a new trial on infringement or invalidity, no
remand was ordered. See id.
Becton subsequently requested the district court to
modify the permanent injunction and the damages award
4 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
in light of this court’s decision. Becton used Fed. R. Civ.
P. 60(b)(5) as its vehicle for filing the motion, a rule under
which the court “may relieve” a party from a final judg-
ment when the judgment “has been satisfied, released, or
discharged; it is based on an earlier judgment that has
been reversed or vacated; or applying it prospectively is
no longer equitable . . . .” Becton also argued that inde-
pendent of Rule 60(b), modification was necessary to
conform the judgment to this court’s mandate, contending
that the injunction and the damages award must be
adjusted to reflect the fact that the lower-selling 1 mL
syringe is the only remaining infringing product. Re-
tractable consented to modification of the permanent
injunction to exclude from its scope the non-infringing 3
mL syringe, and the district court so ordered, concluding
that its broad equitable powers allowed it to prospectively
modify that injunction. Opinion at *1. However, the
district court concluded that the mandate rule precluded
it from revisiting the damages issue because it was within
the scope of the original judgment and was not raised in
the prior appeal nor remanded to the district court for
reconsideration. Id.
Becton appeals. This court has jurisdiction under 28
U.S.C. § 1295(a)(1).
II. STANDARD OF REVIEW
Interpretation of this court’s mandate is a question of
law that this court reviews de novo. Laitram Corp. v.
NEC Corp., 115 F.3d 947, 950–51 (Fed. Cir. 1997).
III. ANALYSIS
Becton argues that this court’s mandate, reversing
the infringement verdict for the 3 mL but not the 1 mL
syringe, required the district court to conduct new dam-
ages proceedings because the original judgment is incon-
sistent with that mandate. Becton further argues that
the issue of damages attributable only to the 1 mL syringe
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 5
AND COMPANY
was not within this court’s mandate because it was not
and could not have been considered previously. To the
extent the damages issue was within the mandate, Becton
argues that the district court erred by declining to apply
an exception to the mandate rule in cases of a substantial
change in the evidence. Lastly, Becton argues that it did
not waive the argument over damages by failing to raise
it in the previous appeal because it contends that before
the court’s mandate, Becton had no argument that the
damages award itself was erroneous.
Retractable responds that the damages award, based
on Interrogatory No. 6, is not inconsistent with this
court’s mandate. Retractable further argues that the
damages issue is within the court’s mandate because
Becton could have and should have raised this issue in
the previous appeal. Retractable further argues that
there has not been a substantial change in the evidence
that would warrant an exception to the mandate rule.
Retractable also argues that Rule 60(b) cannot be used to
support Becton’s requested relief.
Becton’s first argument, that the damages award is
inconsistent with the mandate, puts the cart before the
horse. Considering that argument requires reconsidera-
tion of the damages award itself, which is possible only if
the mandate rule allows revisiting the question, does not
apply, or can be avoided by an exception. Becton further
contends that this court’s mandate actually requires the
district court to conduct further proceedings on damages
to determine the effect of the reversal on any damages
award. We disagree.
Becton relies on Verizon Servs. Corp. v. Vonage Hold-
ings Corp., 503 F.3d 1295, 1310 (Fed. Cir. 2007). In that
case, the court reversed a finding of infringement under
one of three asserted patents and, though neither party
briefed the issue, remanded to the district court to further
consider the damages issue in light of that partial rever-
6 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
sal. Verizon remarked that “where the jury rendered a
single verdict on damages, without breaking down the
damages attributable to each patent, the normal rule
would require a new trial as to damages.” Id. See also
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed.
Cir. 2005) (remanding for further consideration of damag-
es in light of a partial reversal and a general verdict);
Accentra, Inc. v. Staples, Inc., 500 F. App’x 922, 931 (Fed.
Cir. 2013) (same). But Verizon, NTP, and Accentra were
all cases in which our court specifically remanded the
question of damages to the district court, either because
we were requested to do so or determined sua sponte
under the circumstances before us that such action was
appropriate. The cases do not stand for the proposition
that the district court is required, let alone permitted, to
revisit damages in the absence of a reversal or remand of
a damages determination within a judgment of invalidity
or infringement appealed to this court. While this court
regularly issues remands when requested and appropri-
ate, or on our own initiative if some but not all products
are found on appeal not to infringe, there is no “normal
rule” giving district courts the authority to regularly
revisit or recalculate damages that fall within our man-
date.
Becton’s current substantive argument—that the
damages award must be revisited if either one of the two
products at issue are found not to infringe—could have
and should have been raised in the previous appeal.
Becton conceded at oral argument that in a single sen-
tence in the previous appeal it could have raised the issue
of remanding the damages issue. See Oral Argument at
35:48, Retractable Techs., Inc. v. Becton Dickinson & Co.,
No. 2013-1567, available at http://www.cafc.uscourts.gov/
oral-argument-recordings/search/audio.html (“. . . if we
could go back in time, we’d add a portion of a sentence
asking to vacate the damages award, or could we wish
that ‘remand’ was a word that was at the end of the
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 7
AND COMPANY
court’s opinion, the answer is obviously ‘for sure’”). In-
stead, Becton not only made no effort to raise the issue, it
arguably made an effort to avoid raising the issue by only
requesting the district court to reverse the judgment or
order a new trial on infringement and/or validity. J.A.
1057, 1099.
Becton contends nonetheless that the district court
was free to revisit damages because doing so at least
would have been consistent with this court’s mandate.
While the district court was certainly free to take action
consistent with the mandate, see Exxon Chem. Patents,
Inc. v. Lubrizol Corp., 137 F.3d 1475, 1484 (Fed. Cir.
1998), that does not mean that it was likewise free to
disturb matters that were within the mandate. “Unless
remanded by this court, all issues within the scope of the
appealed judgment are deemed incorporated within the
mandate and thus are precluded from further adjudica-
tion.” Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379,
1383 (Fed. Cir. 1999). Becton’s failure in the prior appeal
to raise the issue of remand is 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] responsibility [to review judgments ap-
pealed to us] can be properly discharged only if
the court assumes that the appellant has fully set
forth its attack on the judgment below; only then
will the court be able to address with confidence
the range of issues determined by the appealed
judgment. . . . An issue that falls within the scope
of the judgment appealed from but is not raised by
the appellant in its opening brief on appeal is nec-
essarily waived. Unless remanded by this court,
all issues within the scope of the appealed judg-
ment are deemed incorporated within the man-
date and thus are precluded from further
adjudication.
8 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
166 F.3d at 1383. The damages award was within the
scope of the appealed judgment and thus was incorpo-
rated into the mandate when Becton failed to raise the
issue of a remand to consider parsing damages by prod-
uct.
Becton contends that a damages amount attributable
solely to the 1 mL syringe was not determined by the jury
or decided by the district court in the original judgment
and, thus, should not be deemed within the court’s man-
date. However, the damages award was the result of the
general nature of Interrogatory No. 6. The judgment
included the $5 million infringement award, which did
not specify amounts separately for each product and could
have been based on Retractable’s lump-sum reasonable
royalty theory, which was not dependent on the type or
number of products sold but rather on granting Becton
freedom to operate. Becton neither objected to Interroga-
tory No. 6 nor indicated to this court or Retractable that it
believed a partial reversal would require revisiting that
award. Thus, the $5 million award was within the scope
of the judgment, was incorporated into the mandate
without argument, and was precluded from further con-
sideration by the district court.
This case is unlike Lubrizol, in which the district
court never reached the issue of infringement under the
doctrine of equivalents and thus was free to consider the
issue following reversal on literal infringement. Lubrizol,
137 F.3d at 1484. Nor is the case like Laitram, 115 F.3d
at 952, in which the district court was free to address
issues “not only undecided on the merits by the trial court
because they were moot, and thus on appeal unripe, but
also neither presented to us nor discussed in our opinion,
nor necessary to our disposition of the appeal.” Remand
was not necessary in either case for the district court to
address those issues because the issues were not within
the appealed judgment.
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 9
AND COMPANY
Nor does an exception to the mandate exist in this cir-
cumstance. Becton contends that a substantial change in
the evidence has occurred and that such a change war-
rants an exception to the mandate rule. In Tronzo v.
Biomet, Inc., 236 F.3d 1342, 1349 (Fed. Cir. 2001), the
court noted that the mandate rule was “prudential” and
that “courts have considered revisiting issues otherwise
foreclosed in circumstances where there has been a sub-
stantial change in the evidence.” Tronzo later refers to a
“substantial change in the facts.” Id. at 1350. Of the four
cases Tronzo cites in support for exceptions to the man-
date rule, two cases discuss the force of the mandate rule
in the face of changes in the underlying evidence or facts:
Arizona v. California, 460 U.S. 605 (1982) and Heathcoat
v. Potts, 905 F.2d 367 (11th Cir. 1990). In Arizona, the
Court held that the Court may revisit an issue “in reac-
tion to changed circumstances” that “could not be dis-
posed of at the time of an initial decree.” 460 U.S. at 623–
24. In Heathcoat, the Eleventh Circuit noted that an
exception exists to the law of the case doctrine when “a
subsequent trial produce[d] substantially different evi-
dence.” 1 905 F.2d at 371. Here, as discussed above,
Becton could have and should have raised the issue at the
previous appeal. Further, no subsequent trial has oc-
curred and there has been no actual change in the evi-
dence or the facts.
The only intervening change Becton identifies is this
court’s previous opinion, reversing-in-part the infringe-
ment verdict based on claim construction. However,
Becton identifies no support for its position that a decision
of this court can be considered a change in the “evidence”
1 Heathcoat discusses two other exceptions, neither
of which is relevant to Becton’s argument that a substan-
tial change in the evidence allows an exception to the
mandate rule.
10 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
sufficient to create an exception to the mandate of that
same decision. Contrary to Becton’s contention, the court
in Tronzo did not substantively analyze whether its own
decision was a substantial change in the evidence or facts,
but rather whether the district court’s decision was such a
change. In Tronzo, a jury awarded approximately $7
million in compensatory damages and $20 million in
punitive damages. 236 F.3d at 1345–46. The defendant,
Biomet, appealed with respect to infringement, validity,
state law claims, and the compensatory damages associ-
ated with those claims. Id. at 1346. Biomet did not
appeal punitive damages. At the first appeal, this court
reversed regarding aspects of infringement, validity, and
compensatory damages for the state law claims. Id. This
court then specifically remanded for the district court to
reconsider compensatory damages. Id. The district court
reduced the compensatory damages to $520 and corre-
spondingly reduced punitive damages to $52,000. Id.
However, Biomet had not appealed the punitive damages
award. Thus, without an exception to the rule, the man-
date rule precluded the district court from revisiting the
issue. On a second appeal, this court carefully analyzed
whether the district court’s reduction of the compensatory
damages was a substantial change sufficient to trigger
such an exception and concluded it was not. Id. at 1349–
50. Significantly, however, the subject of that analysis
was the district court’s change to the compensatory dam-
ages award, not this court’s reversal and remand that
prompted the change in the first instance.
Becton has not presented a compelling reason to
extend Tronzo. Becton contends that the damages award
is inconsistent with the mandate, but none of the argu-
ments are persuasive. Becton points out that the 3 mL
syringe, whose infringement finding was reversed, far
outsold the 1 mL syringe. But there is no way to conclude
from this record what the significance of that alleged
disparity might have been in the jury’s deliberations.
RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON 11
AND COMPANY
Becton next contends that the district court’s modification
of the injunction to remove the 3 mL syringe from its
scope is inconsistent with the district court’s refusal to
revisit damages and that, had the district court not issued
an injunction in the first instance, Becton’s victory on the
previous appeal would have had no impact at all. Howev-
er, the injunction—unlike the verdict—clearly implicated
each syringe individually and easily could be parsed.
Moreover, a district court has broad equitable authority to
modify its own injunction prospectively, authority that is
independent of an appellate mandate. See Amado v.
Microsoft Corp., 517 F.3d 1353, 1358 (Fed. Cir. 2008). To
the extent that Becton desired a partial reversal to have
greater impact, it had the opportunity to request a re-
mand on damages in the first appeal but did not. Becton
points out that the district court did order prejudgment
interest beginning in 2002, when the non-infringing 3 mL
syringe entered the market, rather than 2003, when the
infringing 1 mL syringe entered the market. However,
Becton is not seeking recalculation of prejudgment inter-
est but an adjustment of the $5 million damages award—
an argument that could have and should have been ad-
dressed previously. Becton argues that the district court’s
rationale would leave the $5 million award unassailable
even if this court had reversed infringement findings of
both syringes. But that is not the current circumstance,
and moreover in that situation, the complete reversal
would have erased the judgment entirely. Lastly, Becton
argues that the mandate rule should account for some
policy or principle of fairness, but again: Becton had a
fair opportunity to raise the issue during the prior appeal
but did not. 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.
Concluding that the mandate rule forecloses the relief
that Becton seeks, we need not reach the arguments as to
12 RETRACTABLE TECHNOLOGIES, INC. v. BECTON DICKINSON
AND COMPANY
Becton’s waiver of the issue or whether Rule 60(b) was an
appropriate vehicle for the requested relief.
IV. CONCLUSION
For the foregoing reasons, this court affirms.
AFFIRMED