Becton Dickinson takes a whipping in Retractable Technologies case
Of interest in the decision is the text: Becton’s first argument, that the damages award is
inconsistent with the mandate, puts the cart before the horse. (...)
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/
Exxon v. Lubrizol was cited:
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.
The reference to Exxon v. Lubrizol is to the "doctrine of equivalents" issue:
Although this case involves an appeal from the denial of a JMOL motion, the same principle is applicable: in determining that Lubrizol did not literally infringe Exxon's patent, this court did not dispose of Exxon's doctrine-of-equivalents infringement claim; in fact, the court made clear that it was not addressing that issue. The mandate therefore cannot be interpreted as resolving the doctrine-of-equivalents claim, and for that reason the mandate does not foreclose the district court from addressing it.
In that case, Lubrizol had made an argument related to clarification/re-hearing:
No inferences can be drawn from the court's silence in response to Exxon's request for clarification. Courts normally do not respond to petitions for rehearing and it would be a mistake to conclude that a court's non-response to an argument made in a rehearing petition necessarily means that the court has rejected that argument on the merits. The inference that this court meant to rule on the merits of the new trial issue is particularly suspect in this case, since all that was presented to the court was a request for clarification. The court's failure to grant a request for clarification could well reflect the view that clarification was not required, rather than an intention to reject on the merits the legal argument on which Exxon sought clarification. See Laitram Corp., 115 F.3d at 951, 42 USPQ2d at 1900 (court of appeals' denial of request for clarification carries "no inferential weight").
Lubrizol cites to Fine v. Bellefonte Underwriters Insurance Co., 758 F.2d 50 (2d Cir.1985), for the proposition that an appellate court must be presumed to have considered arguments made to it on appeal. The Fine court made that statement in the course of rejecting an attempt to reopen an earlier mandate based on a previous panel's alleged failure to make a required finding. Fine relied on NLRB v. Brown & Root, Inc., 206 F.2d 73 (8th Cir.1953). Examination of Brown & Root, however, reveals the inapplicability of the principle to this case. Brown & Root explained that the purpose of rehearing petitions is "to direct the Court's attention to some material matter of law or fact which it has overlooked in deciding a case, and which, had it been given consideration, would probably have brought about a different result." Id. at 74. As explained earlier, the doctrine of equivalents was not at issue in the previous appeal and was immaterial to the decision on literal infringement. The court's silence with respect to Exxon's clarification request therefore does not carry a presumption of rejection on the merits.
Of the literal infringement issue in Exxon v. Lubrizol, Exxon had lost:
On appeal, this court rejected the claim construction proposed by Exxon and adopted a construction based on the one proposed by Lubrizol. See Exxon Chem. Patents, Inc., 64 F.3d at 1557-58, 35 USPQ2d at 1804-05. The court held that under the correct claim interpretation no reasonable jury could have found that Lubrizol's products literally infringed Exxon's patent. Accordingly, the court reversed the judgment of the district court. 64 F.3d at 1560, 35 USPQ2d at 1806. Judge Nies dissented from the decision as to the proper claim construction and from the decision to reverse the judgment without remanding the case for a new trial. 64 F.3d at 1563-70, 35 USPQ2d at 1808-14 (Nies, J., dissenting).