A federal appeals court today upheld a Retractable Technologies (NYSE:RVP) patent infringement win over Becton Dickinson & Co. (NYSE:BDX), denying Becton Dickinson’s bid to have the damages award reconsidered.
A jury found that BD infringed patents with both its 1ml and 3ml syringes, but an appeals court later ruled that only the smaller size trespassed on the intellectual property, leaving a $7.7 million damages award intact.
Becton appealed, arguing that the decision to reverse the 3ml infringement ruling should have triggered a review of the damages award. But the U.S. Court of Appeals for the Federal Circuit disagreed, ruling today that BD should have raised the issue in its earlier appeal.
"Becton’s current substantive argument – that the damages award must be revisited if either 1 of the 2 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 sentence in the previous appeal it could have raised the issue of remanding the damages issue. Instead, 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," according to court documents. "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."
In September 2013, Retractable won a $114 million decision when a federal judge in Texas ruled that BD violated the Lanham Act’s false advertising proscription. The verdict in the antitrust case prompted Franklin Lakes, N.J.-based BD to set aside about $340 million in pre-tax charges during it fiscal 2013 4th quarter, or about $1.06 per share. Absent that adjustment, the company affirmed its guidance for the full year of 5% growth for the full year and EPS between $5.65 and $5.68. That works out to adjusted EPS of $4.59-$4.62.
BD lost its bid to toss the case after a judge ruled that infringement can constitute anti-competitive behavior.
Retractable sued BD in 2007, alleging that Becton’s Integra syringes infringe patents covering its competing VanishPoint devices. The federal appeals court later denied Retractable’s bid for a re-hearing, setting the stage for an appeal to the U.S. Supreme Court. But the high court refused to hear Retractable’s appeal.