Categories: Damages
      Date: Aug 27, 2014
     Title: Retractable Techs. v. Becton Dickinson & Co.: No Review of Damages when Failed to be Raised in a Previous Appeal and Incorporated Within the Previous Appeal's Mandate
Category: Damages  
 By: Eric Paul Smith, Contributor
TitleRectractable Tech., Inc. v. Becton Dickinson & Co., No. 2013-1567 (Fed. Cir. Jul. 7, 2014).
IssueWhether "[the Federal Circuit's] mandate, reversing the infringement verdict [for one product but not the other], required the district court to conduct new damages proceedings because the original judgment is inconsistent with that mandate."
Retractable Tech. at *4.
Holding"The damages award was within the scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by product." Id. at *8. "[T]he mandate rule forecloses the relief that Becton seeks . . . ." Id. at *11.

Procedural History"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. . . . The jury ultimately found that both the 1 mL and 3 mL syringes infringed. . . . The jury [awarded Retractable] $5,000,000. 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 simply requested that this court 'reverse the judgment or, in the alternative, order a new trial on infringement and/or invalidity.' 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. But we affirmed the judgment that the 1 mL syringe infringed and that the claim at issue was not invalid. Having no basis for a new trial on infringement or invalidity, no remand was ordered. Becton subsequently requested the district court to modify the permanent injunction and the damages award in light of this court’s decision. . . . 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."
Retractable Tech. *2-4 (citations omitted).
Legal Reasoning (LINN, Lourie, Rader) (J. Rader retired prior to the issuance of this decision and did not participate therein)
Standard of Review"Interpretation of this court’s mandate is a question of law that this court reviews de novo."
Retractable Tech. at *4 (citations omitted).
Damages Not Inconsistent with Mandate"Becton’s . . . argument, that the damages award is inconsistent with the mandate, puts the cart before the horse. Considering that argument requires reconsideration 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 [decisions of this court in which] the court [partially] reversed a finding of infringement . . . and, though neither party briefed the issue, remanded to the district court to further consider the damages issue in light of that partial reversal. . . . But [these] 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 appropriate, 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 mandate."
Id. at *5-6 (citations omitted).
Issue Should Have Been Raised in Previous Appeal"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 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."
Id. at *6-7 (citations omitted).
Issues Within the Scope of an Appealed Judgment Incorporated within the Mandate Thereof
"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 adjudication. 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 damages award was within the scope of the appealed judgment and thus was incorporated into the mandate when Becton failed to raise the issue of a remand to consider parsing damages by product."
Id. at *7-8 (citations omitted).
"To the extent that Becton desired a partial reversal to have greater impact, it had the opportunity to request a remand on damages in the first appeal but did not. . . . Becton is . . . seeking an adjustment of the $5 million damages award—an argument that could have and should have been addressed previously."
Id. at *11.
Damages Award Not Necessarily Tied to Both Products
"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 mandate. However, the damages award was the result of the general nature of [the relevant interrogatory]. 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 [the interrogatory] 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 consideration by the district court."
Id. at *8.
"Becton contends that the damages award is inconsistent with the mandate, but none of the arguments 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."
Id. at *10.
No Exception to the Mandate in this Case"[This] court [has] noted that the mandate rule was 'prudential' and that 'courts have considered revisiting issues otherwise foreclosed in circumstances where there has been a substantial change in the evidence.' . . . [T]wo 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 reaction to changed circumstances' that 'could not be disposed 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 evidence.' 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 occurred and there has been no actual change in the evidence or the facts. The only intervening change Becton identifies is this court’s previous opinion . . . . However, Becton identifies no support for its position that a decision of this court can be considered a change in the 'evidence' sufficient to create an exception to the mandate of that same decision."
Id. at *9-10 (citations partially omitted and footnotes omitted).
Fairness Not a Motivation to Alter the Mandate Rule"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."
Id. at *11.
[T]his court affirms [the district court’s findings]
Retractable Tech. at *12 (text added).
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