Digest of Tyco Healthcare Group LP, v. Ethicon Endo-Surgery, Inc., No. 2013-1324, -1381 (Fed. Cir. Dec. 4, 2014) (precedential). On appeal from D. Conn. Before Prost, Reyna, and Hughes.

Procedural Posture: Ethicon was found to infringe claims of three Tyco patents directed to ultrasonic cutting and coagulating surgical devices, and the district court awarded damages to Tyco in the amount of $176 million. Ethicon appeals from judgment that certain asserted claims of Tyco’s patents would not have been obvious under 35 U.S.C. § 103. Tyco cross-appeals from judgment that the other asserted claims are anticipated under 35 U.S.C. § 102(g). CAFC affirmed invalidity of certain claims under § 102(g), reversed determination of no invalidity under § 103, and vacated damages award.

  • Anticipation—§ 102(g): The district court correctly held that an Ethicon prototype, which anticipated 26 of Tyco’s asserted claims, was prior art under 35 U.S.C. § 102(g) “because Ethicon conceived of the prototype before Tyco’s January 1997 conception date and diligently reduced it to practice without abandoning, suppressing, or concealing it thereafter.” The argument that Ethicon’s patent applications covering its prototype fail the written description and enablement requirements of § 112 is “irrelevant to the determination of whether the Ethicon Prototype itself qualifies as prior art under § 102(g).”
  • Obviousness: 102(g) Prior Art as 103 Prior Art. The district court improperly refused to consider the Ethicon prototype to be prior art for obviousness analysis under § 103: “Absent the application of a statutory exception, § 102(g) prior art may serve as prior art under § 103.” Reduction to practice of the prior art before the priority date of the asserted patent is not required when a reference otherwise qualifies as prior art under § 102(g). Further, a prior invention under § 102(g) does not need to be “known to the art” or to the patentee at the time of invention to constitute prior art under § 103.
  • Obviousness: Prior Art Teachings. The district court erred in holding that certain claims are not invalid under § 103 in view of a combination of two prior art references, by disregarding one reference (Ethicon prototype) and improperly distinguishing the other (Davidson patent). A person of ordinary skill would have been motivated to employ the disclosed benefits of Davison’s curved blade in the Ethicon Prototype (straight blade), to treat tissue at “awkward angles of approach.”
  • Obviousness: Analogous Art. The district court erred in holding that certain claims are not invalid under § 103 in view of a combination of two prior art references. The district court improperly disregarded the Ethicon prototype; and the other reference, while not directed to the same field of endeavor, is analogous art because it is “reasonably pertinent to the particular problem with which the inventor is involved.”