Digest of Ethicon Endo-Surgery, LLC v. Covidien, Inc., Inc., No. 2014-1370 (Fed. Cir. Aug. 7, 2015) (precedential). On appeal from S.D. Ohio. Before Lourie, Bryson, and Chen.

Procedural Posture: Plaintiffs-appellants appealed summary judgment of non-infringement and invalidity. CAFC affirmed in part, reversed in part, vacated in part and remanded.

  • Indefiniteness: The district court erred in granting summary judgment of indefiniteness based on its finding that the claim limitation “a method of measurement, the location of measurement, and the type and amount of tissue used for the measurement of clamping force[s] and clamping pressure[s]” was insufficiently described in the specification and not understood in the art. Reviewing the district court’s determination de novo, the CAFC reversed, explaining that one of ordinary skill in the art would have understood the scope of the claims with reasonable certainty in view of the specification.
  • Claim Construction: The district court properly construed the term “configured to loosely contact” as “structured to have contact other than at fixed support points, but not tightly fitted” based on the claim language and specification.
  • Infringement: The district court’s summary judgment of non-infringement was vacated. The district court improperly resolved factual disputes in favor of the moving party, as conflicting expert testimony regarding the claim limitation “loosely contact” created a genuine issue of material fact. Also, in finding that the accused ultrasonic shears did not meet the “adapted to absorb undesired vibrations along the transmission rod” limitation, the district court improperly discounted clear evidence of infringement and relied upon an incomplete view of the record.
  • Design Patent Invalidity: The district court erred in granting summary judgment that the design patents were invalid as primarily functional because it improperly discounted the existence and availability of alternative designs. The district court’s determination that alternative designs did not work “equally well” was based on surgeons’ preferences for certain basic design concepts, not differences in functionality of the differently designed ultrasonic shears. Further, an alternative must simply provide “the same or similar functional capabilities,” and there was no dispute that the patented shears could still function in the same manner with a different design. The district court’s functionality inquiry also “used too high of a level of abstraction” and focused on general concepts rather than “ornamental designs adoring th[e] elements.”
  • Design Patent Claim Construction: The district court erred in construing the design patent to have no scope whatsoever based on its finding that the designs were dictated by function. The proper scope of the design patents encompassed the depicted ornamental aspects of certain combinations of the trigger, torque knob, and activation button elements of ultrasonic surgical shears, in specific relative positions and orientations.
  • Design Patent Infringement: The district court properly granted summary judgment of non-infringement based on its finding that the claimed ornamental designs of the design patents were, as a whole, plainly dissimilar to the ornamental design of the accused products. The district court properly refused to compare the claimed designs and the accused designs with the prior art because the claimed designs and the accused designs were plainly dissimilar.