The Federal Circuit clarified the correct invalidity and infringement analyses for design patents in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., No. 14-1370 (Fed. Cir. Aug. 7, 2015), which dealt with four design patents and two utility patents for ultrasonic surgical sheers.

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Ethicon’s U.S. Patent No. D661,804 (left) and the accused Covidien device (right)

Reversing a judgment of invalidity on the basis of functionality, the Court held that every functionality analysis “should begin with an inquiry into the existence of alternative designs.”  The Federal Circuit determined that the district court failed to adequately consider alternative designs for the underlying ultrasonic medical sheers, which weighed against a finding of functionality.

The Federal Circuit also concluded that “the district court’s functionality inquiry used too high of a level of abstraction,” because design patents “cover only the specific ornamental conceptions of the features shown in their figures, and not the general concepts[.]”  Even though the various components of Ethicon’s ultrasonic sheers had functional aspects, the Court held that the specific ornamental design aspects covered by the design patents were not functional.

Despite finding the design patents valid, the Federal Circuit nonetheless affirmed the district court’s judgment of noninfringement, holding that, when only the specific ornamental aspects were considered, the design of Covidien’s accused surgical sheers, particularly the overall linear shape of Covidien’s designs compared to the overall contoured shape of the claimed design, were “plainly dissimilar.”