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Retractable Techs., Inc. v. Becton Dickinson & Co.

United States Court of Appeals for the Fifth Circuit

March 26, 2019, Filed

No. 17-40960

Opinion

 [*872]  PATRICK E. HIGGINBOTHAM, Circuit Judge:

A jury found that Becton Dickinson & Co. falsely advertised its products for years. The district court determined that neither disgorgement of profits nor further injunctive relief would be equitable under the circumstances. It did not abuse its discretion. We affirm.

This case involves a narrow subset of medical syringes: retractable syringes, a type of "safety syringe" designed to reduce risk of accidental needlesticks. Retractable syringes compete both with other varieties of safety syringes and with "conventional" syringes.1 Although retractable syringes provide significant protection [**2]  against accidents, their fixed needles prevent use for some hospital and clinical purposes.2

 [*873]  Retractable Technologies, Inc. and Becton Dickinson & Co. compete in the U.S. safety syringe market alongside two other major safety syringe manufacturers.3 RTI primarily manufactures retractable syringes and dominates the retractable syringe sub-market; while BD produces retractable syringes, it also produces several conventional and non-retractable safety products that account for the bulk of its revenue.4 This appeal is the latest stage of ongoing litigation between the two.

BD made two false claims in its marketing materials. First, it advertised itself as having the "world's sharpest needle," reflecting that needle sharpness is seen as a proxy for patient comfort, and persisted in doing so after its internal tests indicated otherwise.5 Second, it promoted its retractable syringes as having seven times less "waste space" than RTI's product, meaning that the syringes would waste less medicine per use.6 While BD's testing supported this claim at first, internal tests from 2003 onward demonstrated that RTI's syringes were less wasteful than claimed.7

RTI and its founder, Thomas J. Shaw, [**3]  sued BD for antitrust violations and false advertising under the Lanham Act, pointing to these false claims and other allegedly unfair and anticompetitive business practices.8 A jury sided with RTI on one of its antitrust claims and all of its Lanham Act false advertising claims. It found that RTI was due more than $113.5 million in antitrust damages.9 RTI elected to not seek an award of damages for the Lanham Act claim from the jury.10

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919 F.3d 869 *; 2019 U.S. App. LEXIS 9020 **

RETRACTABLE TECHNOLOGIES, INCORPORATED; THOMAS J. SHAW, Plaintiffs - Appellants v. BECTON DICKINSON & COMPANY, Defendant - Appellee

Prior History: Retractable Techs., Inc. v. Becton, Dickinson & Co., 2011 U.S. Dist. LEXIS 161490 (E.D. Tex., Nov. 1, 2011)

Disposition: Appeals from the United States District Court for the Eastern District of Texas.

CORE TERMS

disgorgement, district court, diversion, false advertising, sales, profits, factors, syringes, palm off, diverted, injunction, advertising, injunctive relief, damages, antitrust, retractable, equitable, weighed, remedies, argues, speculative, reweighing, customers, confuse, favored, trebled, attenuated, assessing, deceive, distributors

Antitrust & Trade Law, Consumer Protection, False Advertising, Lanham Act, Trademark Law, Infringement Actions, Remedies, Equitable Relief, Business & Corporate Compliance, Federal Unfair Competition Law, Lanham Act, Remedies, Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Injunctions, Preliminary & Temporary Injunctions, Elements of False Advertising, Equitable Relief, Injunctions, Damages, Damages, Types of Damages, Profits