Becton, Dickinson & Co. v. Tyco Healthcare Group, LP

United States Court of Appeals
for the Federal Circuit
__________________________

BECTON, DICKINSON AND COMPANY,
Plaintiff-Cross Appellant,
v.
TYCO HEALTHCARE GROUP, LP,
Defendant-Appellant.
__________________________

2009-1053,-1111
__________________________

Appeals from the United States District Court for the
District of Delaware in case no. 02-CV-1694, Chief Judge
Gregory M. Sleet.
______________________

Decided: July 29, 2010
_______________________

WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for plaintiff-
cross appellant. With him on the brief were WILLIAM G.
MCELWAIN, AMY K. WIGMORE, TODD C. ZUBLER and
ARTHUR W. COVIELLO, of Washington, DC.

FRANK P. PORCELLI, Fish & Richardson P.C., of Bos-
ton, Massachusetts, argued for defendant-appellant.
With him on the brief were JOHN M. SKENYON, and
JUANITA R. BROOKS, of San Diego, California.
__________________________
BECTON DICKINSON v. TYCO HEALTHCARE 2

Before GAJARSA, LINN, and MAYER, Circuit Judges.
Opinion for the court filed by Circuit Judge MAYER.
Dissenting opinion filed by Circuit Judge GAJARSA.
MAYER, Circuit Judge.
Tyco Healthcare Group, LP (“Tyco”) appeals a judg-
ment of the United States District Court for the District of
Delaware entered after a jury determined that Tyco’s
Monoject Magellan™ safety needles and blood collection
devices literally infringed claims 1-4, 6, 12, 13, 15, 24 and
27 of U.S. Patent No. 5,348,544 (the “’544 patent”). Be-
cause we conclude that the district court incorrectly
construed the “spring means” limitation of the asserted
claims and erred in denying Tyco’s motion for judgment
as a matter of law (“JMOL”), we reverse.
BACKGROUND
Becton, Dickinson and Company (“Becton”) is the as-
signee of the ’544 patent, which is directed toward a
safety needle designed to prevent accidental needle stick
injuries. The safety shield, or needle guard, of the pat-
ented invention is initially positioned at the base of the
needle, next to the needle hub. This is called the “first
position” and is shown in figure 2 of the ’544 patent.
3 BECTON DICKINSON v. TYCO HEALTHCARE

The guard is mounted on or close to the needle can-
nula and is attached to the needle hub by a hinged arm.
When the guard is in the first position, the hinged arm is
folded. When the needle has been removed from a pa-
tient, the health care worker pushes the hinged arm
forward, causing the hinged arm to unfold and the guard
to move along the needle cannula toward the tip of the
needle. When the guard covers the needle tip, it is said to
be in its “second position” as shown in figure 4.

To facilitate the movement of the guard toward the
needle tip, the ’544 patent discloses a “spring means” for
“urging [the] guard along [the] needle cannula.” The
specification describes two embodiments in which a spring
moves the guard down the needle cannula. The specifica-
tion does not attribute any movement of the guard to the
hinged arm of the safety needle.
On December 23, 2002, Becton filed suit against Tyco,
alleging infringement of the ’544 patent by Tyco’s Mono-
ject Magellan™ safety needles and blood collection de-
vices. Becton subsequently answered Tyco’s first set of
interrogatories, including interrogatory 3, which called for
an infringement claim chart “fully explain[ing] how each
claim element is met either literally or under the doctrine
of equivalents in each Tyco product accused of infringe-
ment.” In response, Becton identified the living hinges in
Tyco’s accused devices as satisfying the “spring means”
BECTON DICKINSON v. TYCO HEALTHCARE 4

limitation of asserted claims 1 and 24 and stated that
“[o]nce released, the spring means urges the guard along
the needle cannula toward” the tip of the needle. Later,
in updated infringement charts served on Tyco just prior
to the close of fact discovery, Becton reiterated its asser-
tion that “[o]nce released, the spring means urges the
guard along the needle cannula” toward the needle tip.
After the close of fact discovery, Becton issued its only
expert report on infringement. Becton’s expert, Charles
A. Garris, Jr., explained his theory as to how the hinges
in the hinged arm of Tyco’s accused devices functioned as
springs:
The hinged arm [in Tyco’s accused products] is . . .
folded and assembled with the other components
of the safety assembly. I expect to explain that
folding of the hinged arm imparts stress to the
hinge that results in a certain amount of stored
energy. In the accused Tyco Monoject Magellan™
devices, the force of this stored energy is initially
restrained by a latching mechanism. Once
unlatched, the stored energy is released, causing
the safety guard to be urged (i.e., moved) along
the needle cannula toward the tip of the needle.
On May 3, 2004, Tyco moved for summary judgment
of non-infringement, arguing that the spring means
limitation of the asserted claims required a spring sepa-
rate from the hinged arm structure. The district court
denied this motion, however, rejecting Tyco’s argument
that a proper construction of the spring means limitation
requires “a separate spring [which] must move the guard
along the cannula toward the second position.” Becton,
Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-
1694 GMS, 2004 U.S. Dist. LEXIS 18637 at *12 (D. Del.
Sept. 16, 2004) (“Summary Judgment Decision”).
5 BECTON DICKINSON v. TYCO HEALTHCARE

On October 26, 2004, a jury returned a verdict finding
literal infringement by both of Tyco’s accused products. 1
The jury found that the infringement was willful as to the
Magellan safety needle, but not as to the Magellan blood
collector; it also found that the patent was not invalid for
lack of an adequate written description. Tyco subse-
quently moved for a new trial, arguing that Becton had
improperly changed its theory of infringement during
trial. The district court agreed, noting that the only
infringement theory disclosed by Becton prior to trial was
that “once unlatched” the hinges in the hinged arm
caused the safety guard to move down the needle cannula:
From the outset, [this] case was postured on the
assertion that Tyco’s Monoject Magellan devices
infringed the “spring means” limitation of the
[’544] patent because, after the devices are
unlatched, the hinged arms move the guard to-
ward the cannula of the needle. Dr. Garris’ expert
statement, [Becton’s] summary judgment motion,
and [Becton’s] pretrial memorandum in support of
its claim of infringement and for damages, all
make clear that the “after unlatching” theory was
the only basis for Tyco’s alleged infringement.
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
No. 02-1694 GMS, 2006 U.S. Dist. LEXIS 14999 at *34-35
(D. Del. Mar. 31, 2006) (“New Trial Decision”).
During trial, however, Becton reversed course, argu-
ing that the living hinges in the hinged arm moved the
guard before the hinged arm was unlatched. Id. at *38-
40. Because Becton had “advanced a new theory of in-
fringement at trial” and its actions were “inconsistent

1 The district court concluded that Becton had
waived the right to assert infringement under the doc-
trine of equivalents.
BECTON DICKINSON v. TYCO HEALTHCARE 6

with substantial justice . . . and resulted in actual preju-
dice,” the district court granted Tyco’s motion for a new
trial. Id. at *40.
In January 2007, prior to the start of the second trial,
Tyco filed a petition in the United States Patent and
Trademark Office (“PTO”) requesting reexamination of
the ’544 patent based on Netherlands Patent Publication
No. 9000909. The examiner in charge of the re-
examination issued an office action in which she found
that the “spring means” limitation in claims 1 and 24 of
the ’544 patent was a “means-plus-function” limitation
and required that the spring means be a separate struc-
tural element from the hinged arm. See 35 U.S.C. § 112,
¶ 6. Tyco then filed a motion asking the district court to
adopt the PTO’s construction of the disputed claims, but
the court denied this motion on November 21, 2007. 2
At the second trial, the district court instructed the
jury that the spring means limitation required that “once
the hinged arm is unlatched for the first time, the ‘spring
means’ must move the guard along the needle toward the
needle tip.” The trial court also instructed the jury that
“[t]he spring is not required to move the guard all the way
to the tip of the needle but must, by itself, move the guard
for some distance.”
On November 30, 2007, a jury returned a verdict of in-
fringement as to both of Tyco’s accused products. Tyco
thereafter filed motions seeking JMOL and a new trial.
The district court denied these motions, however, explain-
ing that although it was a “close issue,” Becton had “ad-
duced enough circumstantial evidence from which the

2 Following the second trial, the PTO issued a final
office action affirming the examiner’s conclusion that the
spring means limitation was a means-plus-function
limitation.
7 BECTON DICKINSON v. TYCO HEALTHCARE

jury could reasonably conclude that the living hinges of
Tyco’s products are springs that, by themselves, move the
guard toward the needle tip once unlatched.” See Becton,
Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-
1694 GMS, 2008 U.S. Dist. LEXIS 82915 at *10 (D. Del.
Oct. 14, 2008) (footnote omitted) (“JMOL Decision”).
Tyco then appealed to this court, challenging the dis-
trict court’s interpretation of the asserted claims and the
denial of its motions for JMOL and a new trial. Becton
filed a conditional cross-appeal, arguing that if the district
court’s judgment is reversed, it should be granted a new
trial on the issue of whether Tyco infringed the ’544
patent by manufacturing—rather than selling—the
Magellan needles and blood collectors. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
Precedent requires that this court conduct a de novo
review of claim construction. See Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en
banc). We review the denial of a JMOL motion “under the
law of the regional circuit where the appeal from the
district court would normally lie.” Muniauction, Inc. v.
Thomson Corp., 532 F.3d 1318, 1323 (Fed. Cir. 2008). In
the Third Circuit, when determining whether to grant a
JMOL motion “[t]he question is not whether there is
literally no evidence supporting the party against whom
the motion is directed but whether there is evidence upon
which the jury could properly find a verdict for that
party.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153,
1166 (3d Cir. 1993) (citations and internal quotation
marks omitted). “Although judgment as a matter of law
should be granted sparingly,” it is mandated “where the
record is critically deficient of the minimum quantum of
evidence” necessary to support a jury verdict. Eshelman
BECTON DICKINSON v. TYCO HEALTHCARE 8

v. Agere Sys., Inc., 554 F.3d 426, 433 (3d Cir. 2009) (inter-
nal quotation marks omitted).
I.
To establish literal infringement, “every limitation set
forth in a claim must be found in an accused product,
exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed. Cir. 1995). Thus, “[i]f any claim
limitation is absent from the accused device, there is no
literal infringement as a matter of law.” Amgen Inc. v. F.
Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1374 (Fed. Cir.
2009). Tyco argues that its Monoject Magellan™ safety
needle and blood collection devices do not literally in-
fringe the ’544 patent because they lack the added spring
member required by the asserted claims. We agree. The
unambiguous language of the asserted claims, as well as
the disclosure in the specification, requires an added
spring element that moves the safety guard toward the
tip of the needle. 3
Claim 1, which has been treated as representative,
calls for a “spring means connected to said hinged arm for
urging said guard along said needle cannula toward” the
tip of the needle. Following a Markman hearing, the
district court correctly construed this limitation to require
that: “The hinged arm is connected to a spring that moves
the guard along the cannula toward” the tip of the needle.

3 Tyco also contends that a separate spring is re-
quired because the spring means limitation is in means-
plus-function format, see 35 U.S.C. § 112, ¶ 6, and the
only structures disclosed in the specification for perform-
ing the recited function of moving the guard toward the
tip of the needle are added spring members. We need not
reach this argument, however, because we conclude
that—regardless of whether the asserted claims invoke
section 112, paragraph 6—an added spring element is
required by the plain language of the claims.
9 BECTON DICKINSON v. TYCO HEALTHCARE

By its plain terms, this construction contemplates that
the spring means and the hinged arm are separate struc-
tures which are “connected to” each other. The district
court erred, however, when it later held that its claim
construction did not require a spring means that was a
distinct structural element from the hinged arm. See
Summary Judgment Decision, 2004 U.S. Dist. LEXIS
18637 at *12 (rejecting Tyco’s argument that a proper
construction of the spring means limitation requires “a
separate spring [which] must move the guard along the
cannula toward the second position”).
Claim construction “begins and ends in all cases with
the actual words of the claim.” Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
The unequivocal language of the asserted claims of the
’544 patent requires a spring means that is separate from
the hinged arm. Claim 1 recites:
1. A shieldable needle assembly comprising:
a needle cannula having a proximal end and a dis-
tal tip;
a guard having a proximal end, an opposed distal
end and a side wall extending therebetween, said
guard being slidably movable along said needle
cannula from a first position substantially adja-
cent said proximal end of said needle cannula to a
second position where said distal tip of said needle
cannula is intermediate said opposed proximal
and distal ends of said guard;
a hinged arm having proximal and distal seg-
ments articulated to one another for movement
between a first position where said segments are
substantially collapsed onto one another and a
second position where said segments are extended
from one another, said proximal segment of said
BECTON DICKINSON v. TYCO HEALTHCARE 10

hinged arm being articulated to a portion of said
needle assembly adjacent said proximal end of
said needle cannula, said distal segment of said
hinged arm being articulated to said guard, said
proximal and distal segments of said hinged arm
having respective lengths for permitting said
guard to move from said first position to said sec-
ond position on said needle cannula, and for pre-
venting said guard from moving distally beyond
said second position; and
spring means connected to said hinged arm for
urging said guard along said needle cannula to-
ward said second position.
’544 patent col.7 ll.7-35 (emphases added).
Claim 1 lists four separate elements: 1) a needle, 2) a
guard that rides on the needle, 3) a hinged arm attached
to the guard, and 4) a spring means “connected to” the
hinged arm. Where a claim lists elements separately,
“the clear implication of the claim language” is that those
elements are “distinct component[s]” of the patented
invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288
(Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96
F.3d 1398, 1404-05 (Fed. Cir. 1996) (concluding that
where a claim provides for two separate elements, a
“second portion” and a “return portion,” these two ele-
ments “logically cannot be one and the same”). There is
nothing in the asserted claims to suggest that the hinged
arm and the spring means can be the same structure.
See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH &
Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence
of any evidence to the contrary, we must presume that the
use of . . . different terms in the claims connotes different
meanings.”).
11 BECTON DICKINSON v. TYCO HEALTHCARE

The specification, moreover, confirms that the spring
means is a separate element from the hinged arm, as the
only elements disclosed in the specification as “spring
means” for urging the guard forward are separate struc-
tures from the hinged arm and its hinges. There is no
suggestion that the hinged arm or its hinges can function
as springs, because nothing in the specification describes
the hinges as moving the guard or even helping to move
the guard. Nothing in the specification indicates that the
hinges in the hinged arm might contain sufficient stored
energy to enable them to move the safety guard toward
the tip of the needle. To the contrary, the specification
cautions that it is undesirable to allow stored energy to
act for any extended period on the plastic parts of the
needle assembly. See ’544 patent col.5 ll.12-13 (explaining
that “stored energy acting on plastic can affect the reli-
ability and performance of the part”). In short, the speci-
fication comports with the plain language of the claims,
fully supporting the conclusion that the spring means is a
separate structural component of the patented invention.
See Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333,
1336 (Fed. Cir. 2004) (“A long line of cases indicates that
evidence intrinsic to the patent—particularly the patent’s
specification, including the inventors’ statutorily-required
written description of the invention—is the primary
source for determining claim meaning.”); Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
(The specification is “is the single best guide to the mean-
ing of a disputed [claim] term.”).
Indeed, Becton’s assertion that the spring means and
the hinged arm can be the same structure renders the
asserted claims nonsensical. Independent claim 1 of the
’544 patent describes the spring means as being “con-
nected to” the hinged arm and independent claim 24
describes it as “extending between” the hinged arm and a
BECTON DICKINSON v. TYCO HEALTHCARE 12

mounting means. 4 If the hinged arm and the spring
means are one and the same, then the hinged arm must
be “connected to” itself and must “extend between” itself
and a mounting means, a physical impossibility. A claim
construction that renders asserted claims facially nonsen-
sical “cannot be correct.” Schoenhaus v. Genesco, Inc., 440
F.3d 1354, 1357 (Fed. Cir. 2006); see Bd. of Regents v.
BENQ Am. Corp., 533 F.3d 1362, 1370 (Fed. Cir. 2008)
(refusing to adopt a claim construction that “would effect
[a] nonsensical result”).
Furthermore, if the hinged arm and spring means are
not separate structures, then the asserted claims are
clearly invalid as obvious over the prior art. See
Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712
(Fed. Cir. 1990) (“[C]laims are generally construed so as
to sustain their validity, if possible.”). The first three
elements of Becton’s claimed invention—the needle, the
protective guard, and the hinged arm—were disclosed in
several prior art patents. See U.S. Patent Nos. 4,911,706;
4,898,589; 4,790,828. The Hagen patent, U.S. Patent No.
4,735,618, specifically discloses a safety needle, a guard
and a hinged arm, which includes hinges comprised of
thinned pieces of plastic. What distinguished the claimed
invention from the prior art was the addition of a spring
means separate from the hinged arm. See ’544 patent
col.1 ll.33-34 (discussing “prior art needle shields [that]
are hingedly attached to the hub of the needle cannula”).
There can be no literal infringement where a claim
requires two separate structures and one such structure
is missing from an accused device. See Gaus, 363 F.3d at
1288-90 (concluding that where a claim called for “an

4 Claim 24 calls for a “spring means extending be-
tween said mounting means and said hinged arm for
urging said guard toward said second position.”
13 BECTON DICKINSON v. TYCO HEALTHCARE

electrical operating unit and a pair of spaced-apart elec-
trically exposed conductive probe networks,” it required
that the two elements be “separate” structures in the
accused device). Because the unequivocal language of the
asserted claims of the ’544 patent requires both a hinged
arm and a spring means, there can be no literal infringe-
ment by Tyco’s accused products which, as the district
court correctly concluded, do not contain a spring means
that is a separate structural element from the hinged arm
and its hinges. See Summary Judgment Decision, 2004
U.S. Dist. LEXIS 18637 at *9. 5

5 On appeal, Becton contends that the district court
did not find that Tyco’s accused devices lacked a spring
that was a distinct structural element from the hinged
arm. This argument is belied by the record. In denying
Tyco’s motion for summary judgment, the district court
stated:
Tyco . . . sells the Monoject Magellan™ safety
products, including the Monoject safety needle
products and the Monoject SBC products. . . . The
Monoject safety needle products do not have a
separate spring that moves the guard toward the
second position. . . . The Monoject SBC products
do not have a separate spring that moves the
guard toward the second position.
Summary Judgment Decision, 2004 U.S. Dist. LEXIS
18637 at *9 (emphases added).
Although the district court later referenced two of
the hinges of the hinged arm as possible springs in its
March 2006 decision denying Tyco’s JMOL motion follow-
ing the first trial, the district court never altered its
original finding that the accused products do not contain
an added spring element. Furthermore, as will be dis-
cussed more fully in section III, there is nothing in the
’544 patent to suggest that the hinges are not part of the
hinged arm or that they function as springs that move the
safety guard down the needle cannula.
BECTON DICKINSON v. TYCO HEALTHCARE 14

In rejecting Tyco’s argument that the asserted claims
require an added spring member, the district court noted
that “the abstract of the ’544 patent states that a spring
may be provided to assist movement of the guard toward
the distal shielded position. It does not state that a
spring must be provided.” Summary Judgment Decision,
2004 U.S. Dist. LEXIS 18637 at *12 (emphases added). It
is true that the ’544 patent states that “a spring may be
provided to assist movement of the guard.” This lan-
guage, however, refers to the fact that the patent has
three independent claims and only two of them include a
spring means limitation. Independent claim 17, which is
not now asserted against Tyco, contains the identical
hinged arm limitation found in independent claims 1 and
24 but, unlike the asserted claims, does not contain an
added spring means limitation. 6 Thus, while all three

6 Claim 17, which includes a clip feature not found
in the asserted claims, recites:
A shieldable needle assembly comprising:
a needle cannula having a proximal end and a
sharply pointed distal tip,
a guard having a proximal end, an opposed distal
end and a side wall extending therebetween, said
guard being slidably movable along said needle
cannula . . . [and] said guard including a clip re-
tained between said side wall and said needle
cannula, said clip being configured to cover said
tip when said guard is in said second position on
said needle cannula; and
a hinged arm having proximal and distal seg-
ments articulated to one another for movement
between a first position where said segments are
substantially collapsed onto one another and a
second position where said segments are extended
from one another, said proximal segment of said
hinged arm being articulated to a portion of said
needle assembly adjacent said proximal end of
said needle cannula, said distal segment of said
15 BECTON DICKINSON v. TYCO HEALTHCARE

independent claims require a hinged arm comprised of
two plastic segments which are “articulated to” each
other, “articulated to” the guard, and “articulated to” the
needle assembly, only the asserted claims call for an
added spring member.
Claims must be “interpreted with an eye toward giv-
ing effect to all terms in the claim.” Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). If the
spring means limitation contained in claims 1 and 24—
but not in claim 17—is not to be read out of the asserted
claims, it must require an additional element beyond that
which is already called for by the hinged arm limitation.
See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885
(Fed. Cir. 2008) (refusing to adopt a claim construction
which would render a claim limitation meaningless);
Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214
F.3d 1302, 1305-07 (Fed. Cir. 2000) (refusing to adopt a
claim construction which would render claim language
superfluous). Simply put, a claim construction that does
not require a spring member in addition to the hinged
arm structure renders the spring means limitation func-
tionally meaningless. See Bicon, 441 F.3d at 950 (“Allow-
ing a patentee to argue that physical structures and
characteristics specifically described in a claim are merely
superfluous would render the scope of the patent ambigu-
ous, leaving examiners and the public to guess about

hinged arm being articulated to said guard, said
proximal and distal segments of said hinged arm
having respective lengths for permitting said
guard to move from said first position to said sec-
ond position on said needle cannula, and for pre-
venting said guard from moving distally beyond
said second position.
’544 patent col.8 ll.34-64 (emphases added).
BECTON DICKINSON v. TYCO HEALTHCARE 16

which claim language the drafter deems necessary to his
claimed invention . . . .”).
II.
Furthermore, even under the trial court’s erroneous
claim construction, Becton adduced no credible evidence
establishing literal infringement by Tyco’s accused prod-
ucts. The thrust of Becton’s infringement argument was
that the hinges in Tyco’s needles contain stored energy
and that when the hinged arm is unlatched, the hinges
act as “springs” that cause the guard to move down the
needle cannula. The fatal defect in this theory is that
Becton failed to produce any evidence that this posited
movement ever occurred. Becton did not provide any test
data or even a single live demonstration showing that: 1)
the hinges in the accused devices contained stored energy,
or 2) they moved the guard even one millimeter down the
needle cannula.
Living hinges are thinned pieces of plastic that have a
long “flex-life,” meaning that they can bend or flex repeat-
edly without breaking. Depending on how they are manu-
factured, such hinges can contain differing amounts of
stored energy. The hinges in certain prior art safety
needles contained stored energy. Becton, however, failed
to produce evidence demonstrating that the hinges in
Tyco’s accused devices contained any such stored energy.
Tyco’s expert, Mary Boyce, testified without contradiction
that any stored energy imparted to the hinges during the
manufacturing process quickly dissipates.
An important feature of living hinges is that they
have “memory,” i.e., they “remember” past positions and
seek to return to them after being bent. Although the
hinged arm in Tyco’s safety needle is initially molded in a
flat configuration, it is bent into a folded position during
the manufacturing process. During the final step of the
17 BECTON DICKINSON v. TYCO HEALTHCARE

manufacturing process, the fully-assembled needle, with
the hinged arm folded and latched, is placed in a sealed
package and sterilized with gamma radiation. This
irradiation changes the molecular structure of the hinges
so that the folded position of the hinged arm has become
the neutral or “relaxed” position to which the hinged arm,
if moved, will tend to return.
At trial, Tyco demonstrated repeatedly that once the
hinged arms in the accused devices were unlatched, 7 the
hinges never pushed the guard down the needle cannula.
No “spring” from the living hinges was ever demon-
strated. To the contrary, if at any time during the period
when the guard was being manually pushed down the
7 The district court did not err in instructing the
jury that the spring must move the guard “once the hinge
is unlatched for the first time.” Prior to the first trial,
Becton’s sole infringement contention was that “once
unlatched” the hinges in the hinged arm caused the guard
to move toward the tip of the needle. During trial, how-
ever, Becton reversed course, arguing that the living
hinges moved the guard down the needle cannula before
the hinged arm was unlatched. Even though Becton’s
expert had only testified about guard movement after
unlatching, Becton attempted to persuade the jury that
infringement could be established by pre-unlatching
movement. Because Becton had improperly changed its
theory of infringement, the district court concluded that
Tyco had been unfairly prejudiced and granted its motion
for a new trial. See New Trial Decision, 2006 U.S. Dist.
LEXIS 14999 at *40 (explaining that Becton had “ad-
vanced a new theory of infringement at trial” and that its
actions were “inconsistent with substantial justice . . . and
resulted in actual prejudice”). When the second trial
commenced, the district court, aware that Becton had
previously attempted to rely on an improper theory re-
garding pre-unlatching movement, correctly instructed
the jury that infringement could be established only by
showing movement of the guard after the hinged arm was
unlatched.
BECTON DICKINSON v. TYCO HEALTHCARE 18

needle cannula the user removed his finger from the
hinged arm, the hinged arm moved backwards toward its
original folded position. Instead of pushing the guard
toward the tip of the needle, as required by the asserted
claims, the living hinges in the accused devices tended to
move the hinged arm backwards toward the needle hub.
Thus, as the district court correctly acknowledged,
Becton’s “direct evidence regarding the movement of the
guard [was] insufficient to support the jury’s finding of
infringement.” JMOL Decision, 2008 U.S. Dist. LEXIS
82915 at *11 n.2. The court, however, refused to set aside
the jury’s verdict. It reasoned that because the accused
devices have a latch that holds the hinged arm in a folded
position, the hinges might contain some stored energy
that might be capable of moving the guard some distance
down the needle cannula. Id. at *10-15.
It is undisputed that the accused devices contain a
latch. It is also beyond cavil that a living hinge can
contain stored energy and that if that hinge is held back
by a latch and then released, it could act as a spring. Not
every hinge contains stored energy, however, and not
every device with a latch acts as a spring. A door, for
example, can have both hinges and a latch, but does not
necessarily spring open when unlatched. Although Bec-
ton had ample opportunity to do so, it failed to demon-
strate either that the hinges in Tyco’s safety needles
contained any stored energy or that they pushed the
guard forward after the latch was released. Instead, as
Tyco explained at trial, the latches on the accused safety
needles were designed not to restrain stored energy, but
to prevent the shield from being accidently activated or
dislodged prior to use.
The Magellan products were initially developed by
Specialized Health Products, Inc. (“SHPI”), a small Utah
19 BECTON DICKINSON v. TYCO HEALTHCARE

company that designs safety needles for several larger
medical companies, including both Tyco and Becton.
Mark Ferguson, an SHPI mechanical engineer, testified
that the Magellan safety needles and blood collection
devices were specifically designed not to include a “spring
assist” feature. Instead, they were intended to allow for
“full manual control of the activation of the [safety]
guard.” The reason for this was that many “clinicians . . .
didn’t care for the abrupt activation of spring-assisted
devices.” Furthermore, a spring-assisted blood collection
device can activate so rapidly that blood remaining on a
needle after use can splatter, increasing the risk of dis-
ease transmission. Ferguson stated unequivocally that
“[t]he living hinges in the Magellan [products] are not
springs,” and that “[a]n operator, the nurse or [the] doc-
tor, is the only thing . . . that moves the guard toward the
needle tip.”
Contrary to Becton’s assertions, the testimony of Gar-
ris, Becton’s expert, is insufficient to support the jury’s
verdict. See id. at *11 n.2 (emphasizing that “Garris’
testimony regarding the spring assist of Tyco’s Monoject
Magellan devices is entitled to little, if any, weight, be-
cause it is directed to a combination of forces that cause
movement of the guard, not the spring by itself”). Garris,
in preparing his expert report, artificially created a
“spring” movement in the hinges. At his deposition,
Garris admitted that he had repeatedly extended and
refolded the hinged arms of the accused devices. Garris
was never able to demonstrate that the hinges in the
accused products, as manufactured and sold, contained
stored energy which moved the guard toward the needle
tip. To the contrary, Garris produced no test evidence and
no measurements showing that the hinges contained
stored energy or that they moved the guard even the
smallest distance after unlatching.
BECTON DICKINSON v. TYCO HEALTHCARE 20

Becton claims that video clips of Tyco’s expert, Boyce,
removing the latch from an accused needle demonstrates
that a spring moves the needle guard down the needle
cannula. As the district court correctly concluded, how-
ever, “Dr. Boyce’s videos . . . are not sufficient to support
the jury’s verdict.” Id. Boyce did a series of tests in which
she attempted to cut the latch off of an accused needle
while the hinged arm was still latched. In these tests,
however, the guard never moves to the position it would
be in after an actual device is unlatched. Nothing in the
Boyce videos, therefore, demonstrates that the hinges in
the accused devices, as manufactured and sold, move the
guard toward the tip of the needle after the hinged arm is
unlatched.
Becton also asserts that a force-displacement test
conducted by Boyce “shows that the living hinges exert a
force immediately after unlatching that helped the artifi-
cial finger move the guard forward.” As a preliminary
matter, it should be noted that even if it had been estab-
lished that the hinges “helped” the artificial finger move
the guard, this would not be sufficient to meet the trial
court’s claim construction, which required that the hinged
arm move the guard “by itself” at least some distance
toward the tip of the needle. 8 Even more fundamentally,

8 The trial court correctly instructed the jury that
the spring means was required to move the guard “by
itself” for some distance down the needle cannula. The
court gave this instruction because, as discussed previ-
ously, the only infringement theory disclosed by Becton
prior to trial was that once the hinged arm was unlatched,
the hinges moved the guard toward the needle tip. Sig-
nificantly, Becton did not assert that the hinges in the
hinged arm only moved the guard when the guard was
also being pushed down the cannula by a health care
worker. During the second trial, however, Becton at-
tempted to assert yet another new infringement theory,
21 BECTON DICKINSON v. TYCO HEALTHCARE

Becton never argued at trial that Boyce’s force displace-
ment test showed that the hinges contributed in any way
to the movement of the guard. No witness, either on
direct or cross-examination, testified that Boyce’s tests
reflected any such movement. Unsupported attorney
argument, presented for the first time on appeal, is an
inadequate substitute for record evidence. See Gemtron
Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.
Cir. 2009) (emphasizing that “unsworn attorney argument
. . . is not evidence”).
Becton makes much of the fact that “the accused de-
vices themselves were in evidence, and the jury was able
to examine them.” The jury, however, was not free to
disregard the overwhelming record evidence showing that
no movement of the guard occurred after the hinged arm
was unlatched and instead to “infer” that the hinges
might contain some stored energy that might be capable

which was that the hinged arm did not actually move the
guard by itself, but only helped to move the guard when a
health care worker was already pushing the guard down
the needle cannula. Recognizing that this “combination of
forces” theory was a “new argument” on Becton’s part, the
district court properly instructed the jury that to establish
infringement Becton was required to show that the spring
“by itself” moved the guard at least some distance toward
the tip of the needle.
A further problem with Becton’s newly-minted “com-
bination of forces” theory is that Becton never provided
any objective evidence demonstrating that the hinges of
the hinged arm assisted the user’s finger in moving the
safety guard down the needle cannula. Although Becton
argued that the user’s finger and the hinges worked in
tandem to move the safety guard, it never established
that the hinges actually contributed to this movement.
Becton provided no test data that reliably distinguished
between movement caused by the user’s finger and move-
ment caused by the hinged arm itself.
BECTON DICKINSON v. TYCO HEALTHCARE 22

of moving the guard down the needle cannula. It is
inconceivable that the jury, by examining the accused
devices, could see the hinges move the guard when Bec-
ton, despite repeated opportunities to do so, was unable to
demonstrate that such movement ever occurred. A jury
verdict based on inferences wholly unsupported by the
record cannot stand. See Lightning Lube, 4 F.3d at 1166
(JMOL is appropriate “if, upon review of the record, it is
apparent that the verdict is not supported by legally
sufficient evidence.”).
III.
In its quixotic quest to establish infringement of the
’544 patent, Becton argues that Tyco’s accused needles do,
in fact, have springs that are separate structures from the
hinged arm. In support, it contends that the hinges in the
hinged arm are separate structures from the hinged arm
itself. This argument is unavailing. A “hinged arm,” by
definition, must include at least one hinge. Becton, in
fact, concedes in its brief on appeal that the middle hinge,
which connects the proximal and distal segments of the
hinged arm “is part of the hinged arm.” It argues, how-
ever, that the two other hinges of the hinged arm—one
which connects the arm to the needle hub and one which
connects the arm to the guard—are separate structures
from the hinged arm and can therefore satisfy the spring
means limitation of the asserted claims. 9 An insur-

9 We do not agree with Becton’s assertion that some
of the hinges of the hinged arm can be considered sepa-
rate structures from the hinged arm itself. The hinged
arm limitation requires the hinged arm to have two
segments which are “articulated to” each other; it also
requires that these segments be “articulated to” the guard
and “articulated to” the needle assembly. The hinged arm
limitation thus includes not only the two plastic segments
of the arm, but also the hinges that articulate the seg-
23 BECTON DICKINSON v. TYCO HEALTHCARE

mountable problem with this theory is that the spring
means limitation requires not only a spring, but a spring
that moves the guard down the needle cannula. See ’544
patent col.7 ll.33-35 (requiring that the spring means
“urge” the guard down the needle cannula). Thus, even if
the hinges other than the middle hinge were separate
structures from the hinged arm (which they are not) and
Becton had produced evidence that the hinges moved the
guard down the needle cannula (which it did not), Becton
never established that any hinge other than the middle
hinge connecting the two segments of the hinged arm
caused such movement. In other words, even if the hinges
other than the middle hinge could be considered separate
structures from the hinged arm, there is no evidence that
they function as springs that move the guard down the
needle cannula.
We likewise reject Becton’s argument that the district
court erred in granting Tyco’s motion for an order in
limine precluding Becton from presenting evidence that
Tyco’s accused products infringed the ’544 patent during
the manufacturing process. After Boyce, Tyco’s expert,
submitted her expert report concluding that any energy
imparted to the hinges in Tyco’s accused products quickly
dissipates, Becton attempted to rely on the fact that the

ments to each other, to the needle guard and to the needle
hub. See, e.g., McGraw-Hill Dictionary of Sci. & and Tech.
Terms 142 (6th ed. 2003) (defining an “articulated struc-
ture” as “a structure in which relative motion is allowed
to occur between parts, usually by means of a hinged or
sliding joint or joints”).
Becton, moreover, fails to explain why the middle
hinge is part of the hinged arm but the other two hinges
are not. There is nothing in the language of the asserted
claims or the specification of the ’544 patent to suggest
that all three hinges are not part of the hinged arm
structure.
BECTON DICKINSON v. TYCO HEALTHCARE 24

hinges might contain some stored energy during the
manufacturing process. Because Becton’s argument—
that a version of Tyco’s products that existed temporarily
during the manufacturing process might infringe the ’544
patent—was not properly raised during discovery, the
district court did not abuse its discretion in precluding
Becton from presenting evidence regarding this theory at
trial. 10 See Acumed LLC v. Advanced Surgical Servs.,
Inc., 561 F.3d 199, 211 (3d Cir. 2009) (In order to show
that a trial court abused its discretion in issuing an
evidentiary ruling, “an appellant must show that the
court’s decision was arbitrary, fanciful or clearly unrea-
sonable.” (citations and internal quotation marks omit-
ted)).
CONCLUSION
Accordingly, the judgment of the United States Dis-
trict Court for the District of Delaware is reversed.
REVERSED

10 In its complaint, Becton asserted that Tyco “has
made . . . and continue[s] to make, use, sell and/or offer
for sale . . . products which infringe one or more claims of
the ’544 patent.” The argument that a product infringes
as it is manufactured and sold, however, is very different
from the argument that an interim version of Tyco’s
product, which existed only temporarily during the manu-
facturing process could infringe the asserted claims, even
if that product did not infringe when the manufacturing
process was complete or when the item was sold.
 United States Court of Appeals
for the Federal Circuit
__________________________

BECTON, DICKINSON AND COMPANY,
Plaintiff-Cross Appellant,
v.
TYCO HEALTHCARE GROUP, LP,
Defendant-Appellant.
__________________________

2009-1053, -1111
__________________________

Appeals from the United States District Court for the
District of Delaware in Case No. 02-CV-1694, Chief Judge
Gregory M. Sleet.
__________________________

GAJARSA, Circuit Judge, dissenting.
The majority avoids the critical issue upon which this
decision turns; i.e., whether 35 U.S.C. § 112, ¶ 6 governs
the claim construction of the “spring means” limitation.
In a brief footnote, the majority sweeps and brushes aside
the means-plus-function analysis as unnecessary in light
of the “plain language of the claims.” Maj. Op. 8 n.3.
Without having analyzed the scope of the claims, the
majority somehow concludes that the claim language
covers only devices having separate “spring means” and
“hinged arm” structures. Then applying this simplistic
BECTON DICKINSON v. TYCO HEALTHCARE 2

claim construction to analyze the sufficiency of the evi-
dence, the majority improperly overturns the jury’s ver-
dict finding infringement. For these reasons,
I respectfully dissent.
Although the majority ignores the issue completely,
the parties have vigorously contested the claim construc-
tion of the “spring means” limitation and have made this
issue the focal point of their legal position before the
district court and this court. The limitation reads: “a
spring means connected to said hinged arm for urging
said guard along said needle cannula toward said second
position.” ’544 patent, col.7 ll.33-35. The parties disagree
over whether the “spring means” language should be
construed as a means-plus-function limitation pursuant to
§ 112, ¶ 6. The majority, however, dismisses the means-
plus-function analysis entirely in a single footnote, assert-
ing that the language of the claims is “unambiguous”:
Tyco . . . contends that a separate spring is
required because the spring means limita-
tion is in means-plus-function format, see
35 U.S.C. § 112, ¶ 6 . . . We need not reach
this argument, however, because we con-
clude that—regardless of whether the as-
serted claims invoke section 112,
paragraph 6—an added spring element is
required by the plain language of the
claims.
Maj. Op. 8 n.3. First, it is unclear what the majority
means by “an added spring element.” An “added spring
element” does not appear in the “plain language of the
claims,” specification, or prosecution history of the patent.
Second, claim construction is necessary to determine the
scope of the claims. Markman v. Westview lnstruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517
3
BECTON DICKINSON v. TYCO HEALTHCARE

U.S. 370 (1996). The majority opinion injects ambiguity
into the claims and fails to construe the claims as re-
quired by our case law. See, e.g., Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc); Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996). It is
impossible for the majority to determine the scope of the
claims without undertaking a means-plus-function analy-
sis. Accordingly, the majority’s claim construction is
premised upon an inadequate foundation.
If a claim element “contains the word ‘means’ and re-
cites a function,” there is a presumption that the claim is
in means-plus-function form. Envirco Corp. v. Clestra
Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000).
That presumption can be rebutted, however, if the claim
also “recites sufficient structure to perform the claimed
function.” Id. If the claim term “is one that is understood
to describe structure . . . [it] is simply a substitute for the
term ‘means for.’” Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004).
To determine whether the claim term should be con-
strued as a means-plus-function limitation, we begin by
evaluating how the term “spring” is used in the specifica-
tion and the intrinsic record. Phillips, 415 F.3d at 1315
(“[T]he specification is always highly relevant” and is “the
single best guide to the meaning of a disputed term”).
Next, the court should consider whether the “spring
means” limitation contains additional structure to rebut
the means-plus-function presumption. See Sage Prods.,
Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir.
1997) (holding that where a claim recites a function, but
goes on to elaborate sufficient structure, the claim is not
in means-plus-function format).
BECTON DICKINSON v. TYCO HEALTHCARE 4

In this case, the written description defines the term
“spring means” as a type of device that imparts a function
of urging the safety guard toward the needle tip.
A “spring” as defined in the written description denotes a
type of device with a generally understood meaning in the
mechanical arts. See Greenberg v. Ethicon Endo-Surgery,
Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
Each embodiment described in the patent employs a type
of spring; e.g., coil springs, plastic springs, hinged springs,
and over-centered springs. ’544 patent, col.3 ll.5-7; id. at
col. 4 ll. 40-42; id. at col. 5 ll.9-16; id. at col.6 ll. 38-42.
None of the embodiments employ any structure other
than springs. Indeed, the patent contains no suggestion
that the claims include urging mechanisms other than
springs. Accordingly, the intrinsic evidence demonstrates
that the ’544 patent defines “spring means” as a particu-
lar structure—a spring.
Next, the court in a proper claim analysis should con-
sider whether the claims elaborate sufficient structure to
rebut the means-plus-function presumption. The
’544 patent claims state that the function of the “spring
means” is for “urging the guard along said needle can-
nula.” Id. at col.7 ll.34-35. The claims go on to recite
additional structure to achieve that function. Claim 1
recites “spring means connected to said hinged arm,”
id. at col.7 ll.34-35 (emphasis added), and claim 24 recites
“spring means extending between said mounting means
and said hinged arm,” id. at col.10 ll.17-20 (emphasis
added). Thus, the claim language demonstrates that the
combination of the “spring means” and “hinged arm”
perform the “urging” function. Accordingly, the claims
include additional structural limitations to rebut the
means-plus-function presumption.
Tyco obviously disagrees with this conclusion; how-
ever, its reliance on Unidynamics Corporation v. Auto-
5
BECTON DICKINSON v. TYCO HEALTHCARE

matic Products International, 157 F.3d 1311, 1314 (Fed.
Cir. 1998) is unavailing. This court in Unidynamics
applied § 112, ¶ 6 to the claim limitation “spring means
tending to keep the door closed.” In that case,
the patent’s written description stated that “[t]he
spring . . . is an example of spring means tending to keep
the door closed.” Id. at 1319 (emphasis added). Accord-
ingly, the “spring means” was not defined solely as a
spring structure, but as any type of structure to perform
the function. Furthermore, the Unidynamics court noted
that the claim language did not provide additional struc-
ture following the “spring means” language. Id. It merely
recited a function of “tending to keep the door closed.” Id.
Therefore, the court there properly concluded that “spring
means” was a means-plus-function limitation because
neither the claim language nor the written description
provided sufficient structure to rebut the § 112, ¶ 6 pre-
sumption. Id.
In this case, however, the written description defines
“spring means” as a spring structure. For example, each
embodiment employs a spring structure; e.g., coil springs,
plastic springs, hinged springs, and over-centered springs.
Unlike Unidynamics, the spring is not just an example of
a spring means to perform the function; it is the only type
of structure disclosed in the written description. More-
over, the claim language itself provides additional struc-
ture following the “spring means” language. For example,
claim 1 recites “spring means connected to said hinged
arm,” ’544 patent, col.7 ll.34-35 (emphasis added), and
claim 24 recites “spring means extending between said
mounting means and said hinged arm,” id. at col.10 ll.17-
20 (emphases added). Unlike Unidynamics, the claim
language itself includes additional structure; e.g.,
the hinged arm and mounting means—to perform the
BECTON DICKINSON v. TYCO HEALTHCARE 6

function of urging the guard along the needle cannula.
Here, the means-plus-function presumption is rebutted
and the claims should not be construed according to
§ 112, ¶ 6. Therefore, the district court correctly con-
strued the “spring means” limitation according to its
ordinary meaning: “[t]he hinged arm is connected to a
spring that moves the guard along the cannula toward the
second position.” Becton, Dickinson & Co. v. Tyco Health-
care Group, LP, No. 02-1694-GMS, 2004 WL 2075413, at
*4 (D. Del. Sept. 16, 2004).
The majority first approves of the district court’s
claim construction, see Maj. Op. 8-9, but then proceeds to
improperly import an extraneous limitation into the
claims, which is contrary to our case law. See Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.
Cir. 1998). The majority asserts that “the unequivocal
language of the asserted claims of the ’544 patent requires
a spring means that is separate from the hinged arm”
because they are written as separate limitations in the
claim language. Maj. Op. 9. However, the unequivocal
language articulates no requirement for separate struc-
tures. It merely recites “a spring means connected to said
hinged arm for urging said guard along said needle can-
nula toward said second position.” The majority’s limita-
tion requiring two separate structures is not supported
anywhere in the intrinsic or extrinsic record. Such a
claim interpretation violates our established tenants of
claim construction prohibiting the court from reading
extraneous limitations into the claims. E.I. du Pont de
Nemours & Co. v. Phillips Petroleum, 849 F.2d 1430, 1433
(Fed. Cir. 1998) (“It is entirely proper to use the specifica-
tion to interpret what the patentee meant by a word or
phrase in the claim . . . . But this is not to be confused
with adding an extraneous limitation appearing in the
specification, which is improper.”) (citation omitted).
7
BECTON DICKINSON v. TYCO HEALTHCARE

The majority relies on CAE Screenplates, Inc. v.
Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed.
Cir. 2000), which states that “we must presume that the
use of . . . different terms in the claims connotes different
meanings.” (emphases added). While this is correct, the
majority fails to recognize that “the use of two terms in a
claim requires that they connote different meanings, not
that they necessarily refer to two different structures.”
Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
1324, 1333 n.3 (Fed. Cir. 2006) (emphases added); see also
Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision
of Westchester, Inc., 336 F.3d 1308, 1320 (Fed. Cir. 2003).
Indeed, it is well established that a single structure in an
accused device may satisfy two different claim limitations.
Intellectual Prop., 336 F.3d at 1320 n.9 (“[W]e see no
reason why, as a matter of law, one claim limitation may
not be responsive to another merely because they are
located in the same physical structure); In re Kelley,
305 F.2d 909, 915-16 (CCPA 1962) (stating that two claim
terms may read upon the same physical structure). In the
absence of evidence requiring two structures, the claim
language must be interpreted broadly to read upon an
accused product containing the two claim terms, regard-
less of whether those elements are encompassed in one or
two structures.
In the ’544 patent, nothing in the claim language,
written description or prosecution history requires that
the “spring means” and “hinged arm” be separate struc-
tures. The plain language of the claims includes no such
“separate structures” limitation. To the contrary, the
written description contemplates that the “spring means”
and “hinged arm” be included as part of the same “hinged
arm assembly.” See, e.g., ’544 patent, col.4 ll.40-44 (stat-
ing that a spring may be encompassed “between” the
BECTON DICKINSON v. TYCO HEALTHCARE 8

joints of the hinged arm assembly); id. at col.5 ll.66-68
(“proximal and distal segments . . . of [the] hinged arm
assembly . . . can be articulated about [the] hinges.”). In
other words, the “hinged arm assembly” is described as a
structure with the “spring means” and “hinged arm” as
components of that structure. There is no support in the
written description requiring that the “spring means” and
“hinged arm” be separate structures themselves. Accord-
ingly, a proper claim construction does not require two
separate structures for the “spring means” and “hinged
arm.” The majority’s ruling improperly imports an extra-
neous limitation into the claims and fails to give the claim
language its full, literal scope. By injecting this addi-
tional and extraneous limitation, the majority sidesteps
the required analysis of whether the “spring means”
limitations are prescribed by § 112, ¶ 6.
In addition to applying a wholly simplistic claim con-
struction, the majority fails to consider substantial evi-
dence on the record supporting the jury’s determination of
infringement. The majority opinion states that:
The thrust of Becton’s infringement ar-
gument was that the hinges in Tyco’s nee-
dles contain stored energy and that when
the hinged arm is unlatched, the hinges
act as “springs” that cause the guard to
move down the needle cannula. The fatal
defect in this theory is that Becton failed
to produce any evidence that this posited
movement ever occurred. Becton did not
provide any test data or even a single live
demonstration showing that: 1) the hinges
in the accused devices contained stored
energy, or 2) they moved the guard even
one millimeter down the needle cannula.
9
BECTON DICKINSON v. TYCO HEALTHCARE

Maj. Op. 16. However, the majority turns a blind eye to
sufficient evidence supporting the jury’s determination of
infringement. In reviewing a motion for judgment as a
matter of law (“JMOL”) under Third Circuit law, we
overturn a jury verdict “only if, viewing the evidence in
the light most favorable to the nonmovant and giving it
the advantage of every fair and reasonable inference,
there is insufficient evidence from which a jury reasona-
bly could find liability.” Lightning Lube, Inc. v. Witco
Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). In this case, the
majority fails to view the evidence in the light most
favorable to Becton and fails to draw reasonable infer-
ences from the evidence introduced at trial. Had the
majority properly analyzed the jury verdict, it would have
concluded that there is sufficient evidence on the record
supporting the finding of infringement.
First, the accused devices themselves were entered in
evidence, and the jury was able to examine them. The
jury requested and received additional samples of the
accused safety needles during its deliberations. Observa-
tion of the device is sufficient to determine whether the
accused devices have a spring that, by itself, moves the
guard towards the needle tip once the hinged arm is
unlatched. The jurors directly examined the devices and
concluded that they infringed. The jury’s factual findings
based on direct examination of the accused devices are
entitled to deference. See, e.g., Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1329 (Fed. Cir. 2002) (affirming
the jury’s infringement verdict where the accused device
was available to the jury).
Second, Becton’s expert, Mr. Garris, testified that the
accused devices contain a spring that, by itself, moves the
BECTON DICKINSON v. TYCO HEALTHCARE 10

guard once unlatched. To show that the living hinges
were responsible for motion, Becton’s expert demon-
strated the activation of a Tyco Safety Needle and Blood
Collector before the jury. Mr. Garris testified that a small
movement occurs upon unlatching, which is caused by the
living hinges. The jury is entitled to credit this testimony,
particularly given that the jury viewed the device and
could examine the action of the guard and the needle. We
as an appellate court cannot and should not reweigh the
reasonable evidentiary conclusions found by a jury and
reverse its judgment.
Tyco argues that Mr. Garris’s opinion “was based en-
tirely on a combination of forces working at the same time
to move the guard, and not motion caused by the spring
itself,” as required by the district court. But this is incor-
rect. There is testimony in the record that the court’s
claim construction allows for a combination of forces “to
get the process started;” e.g., to push the guard over the
latch. Mr. Garris also testified that once the hinged arm
is unlatched, the living hinge “springs up”, moving the
guard “a little bit” in the direction of the needle tip.
Third, the jury is allowed to infer from the evidence
that the living hinge, by itself, moves the guard towards
the needle tip based on the fact that Tyco included a latch
on its product. Mr. Garris testified that the latch “re-
strains” the stored energy imparted to the living hinges at
the time that they are folded. Mr. Garris testified that:
[I]t is very obvious that there is a spring.
And in the folding process, it’s very clear
that energy was put in. So without doing
anything, it was very clear that there was
a spring which was biased in a way that
would make the guard go toward the tip of
the cannula.
11
BECTON DICKINSON v. TYCO HEALTHCARE

Mr. Garris also explained that the latch functions to “hold
back the spring force and prevent[] the hinged arm from
deploying” while a health care worker is giving an injec-
tion.
Fourth, Becton presented evidence that the hinged
arm of the accused products is, in fact, biased against the
latch at the time of their use and, hence, will extend to
move the guard forward once unlatched. Moreover,
Becton played a video clip that shows Tyco’s expert re-
moving the latch of a Safety Needle while holding the
guard in its initial position. The evidentiary video shows
that once the latch is removed and the guard is released,
the spring, by itself, moves the guard toward the needle
tip a small but visible distance. The jurors could rea-
sonably have concluded that this videotaped evidence is
sufficient to show infringement.
In sum, there is substantial evidence–the jury’s self-
examination of the accused needle guards, the expert
testimony regarding the “spring” in the guard, the pres-
ence of the latch to restrain the guard’s movement, and
the video tape evidence showing movement of the guard
in the absence of the latch–to support the jury’s finding of
infringement. Accordingly, applying the test of the Third
Circuit as outlined in Lightning Lube, it is improper to
disturb the jury’s finding of infringement. The district
court was correct in denying the JMOL.
In conclusion, the majority opinion is severely flawed
in several aspects. Most importantly, it fails to conduct a
claim construction analysis to determine whether con-
struction of the “spring means” limitation is governed by §
112, ¶ 6. Indeed, the majority puts the cart before the
horse by concluding that the claim language covers only
BECTON DICKINSON v. TYCO HEALTHCARE 12

devices having two separate structures, but fails to under-
take a proper claim construction analysis. The majority
then applies its simplistic claim construction to its in-
fringement analysis in reviewing the denial of JMOL.
Contrary to Third Circuit law, the majority fails to view
the evidence in the light most favorable to Becton and
improperly overturns the jury’s verdict finding infringe-
ment. The majority climbs Jacob’s Ladder in search of
perfection in the jury verdict, but, by substituting its own
fact finding for that of the jury, it fails to allow the jury to
perform its proper function. For these reasons, I dissent
from the judgment of the majority opinion.