Court Sticks Needle Patent With Invalidity

Posted on | February 26, 2009 | No Comments

2009-1152 MBO Labs v. Becton
D/MA 03-cv-10038
Judge Joseph Tauro

Plaintiff MBO appeals from Judge Joseph Tauro's grant of summary
judgment finding that RE 36,885 invalid for violating the recapture
rule, 35 U.S.C. § 251. 

This decision came after remand by the Federal
Circuit, 474 F.3d 1323 (2007).  Judge Tauro, applying the CAFC's
tripartite test from Pannu v. Storz Instruments, 258 F.3d 1366, 1370-1
(Fed. Cir. 2001), found that the reissue claims recaptured matter
surrendered during the original prosecution to overcome prior art and are therefore invalid.

Peter Zura's 271 Blog has a nice post on the earlier Fed. Cir. decision in this case.

More reading: Order

Counsel:

MBO: K & L Gates (Boston); Fish & Richardson (Boston)
Becton: Wilmer Hale (Boston, DC); Brown Law (Raleigh, NC)

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