Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

Addressing the issues of indefiniteness and non-infringement for both utility and design patents, the U.S. Court of Appeals for the Federal Circuit reversed and vacated in part the district court’s grant of summary judgment in favor of defendants, finding factual issues that remain to be resolved. Ethicon Endo-Surgery, Inc. v. Covidien, Inc. Case No. 14-1370 (Fed. Cir., Aug. 7, 2015) (Chen, J.).

The patents-in-suit are directed to ultrasonic surgical devices. The defendants successfully moved for summary judgment of invalidity and/or non-infringement of the asserted claims following Markman proceedings and close of discovery. The plaintiffs appealed.

On appeal, the Federal Circuit reversed the district court’s finding that certain asserted claims of one patent was indefinite under 35 U.S.C. 112 ¶ 2. The asserted claims included limitations regarding a clamping pressure “that does not exceed” a certain amount or falls within a specific range. The question was how one measured the average clamping pressure. The district court focused on the plaintiff’s own product, noting that the plaintiff tested its product four different ways, which could lead to four different results. The Federal Circuit explained that the district court based its conclusions on mischaracterized testimony, and as a result, arrived at several clearly erroneous factual conclusions. Specifically, the district court ignored testimony that each of the four methods was designed to provide the same clamping force measurement and that any differences were simply due to natural variances in real-world testing conditions.

The district court also noted that the measurements could vary based on the position of the clamps, which it cited as additional evidence that the claims were indefinite. The Federal Circuit again disagreed, finding that the district court ignored testimony providing context for the differing force measurements at the proximal and distal ends of the clamping arm. As the Court explained, “the specification clearly discloses that the claimed clamping/coaptation pressures are average pressures on tissue disposed between the tissue pad and blade, and are measured when the clamping arm and blade are in a closed position. This disclosure is sufficient to inform skilled artisans as to where these average pressures should be measured.”

The Federal Circuit likewise vacated the district court’s finding of non-infringement for certain asserted claims of another patent. Although the Court affirmed the district court’s claim construction, it nevertheless found that the district court improperly resolved genuine disputes of material fact in favor of the moving party. According to the Court, summary judgment was not proper because there were disputed issues of material fact.

Concerning the design patents, the Federal Circuit reversed the district court’s grant of invalidity based on functionality but affirmed the grant of summary judgment of non-infringement. Here, the Court explained that the district court improperly discounted alternative designs that were still functional. Because alternatives existed, the design is more likely to serve a primarily ornamental purpose. The Federal Circuit affirmed, however, the district court’s grant of summary judgment of non-infringement of the accused design because the claimed and accused designs were plainly dissimilar to the ordinary observer.