RETRACTABLE TECHNOLOGIES, INC. AND THOMAS J. SHAW, Plaintiffs-Appellees,
BECTON DICKINSON AND COMPANY, Defendant-Appellant
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 defendant-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.
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 " ). Because the mandate rule forecloses the relief that Becton seeks, we affirm.
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 hypothetical 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 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] accused 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 Interrogatory Nos. 3 through 5 [regarding invalidity], please determine the amount of reasonable royalty damages 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 Retractable's favor and a permanent injunction against the continued sale of both syringes.
Becton appealed the infringement and validity determinations to this court but neither appealed nor requested 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 requested 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 ...