Mixed CAFC decision in ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

Plaintiffs-appellants Ethicon Endo-Surgery, Inc. and
Ethicon Endo-Surgery, LLC (collectively, Ethicon) sued
defendants-appellees Covidien, Inc. and Covidien LP
(collectively, Covidien) in the U.S. District Court for the
Southern District of Ohio for alleged infringement of
several utility and design patents related to ultrasonic
surgical devices. After the close of discovery, the district
court granted Covidien’s motions for summary judgment,
concluding that 1) U.S. Patent No. 8,182,501 (the ’501
patent) is invalid as indefinite, 2) U.S. Patent No.
5,989,275 (the ’275 patent) is not infringed by Covidien’s
accused products, and 3) U.S. Patent Nos. D661,801 (the
D’801 patent), D661,802 (the D’802 patent), D661,803 (the
D’803 patent), and D661,804 (the D’804 patent) (collectively,
the Design Patents) are invalid as functional and
in the alternative, not infringed. The district court entered
final judgment in favor of Covidien, and Ethicon
now appeals.

We reverse and vacate in part. As to the ’501 patent,
we reverse the district court’s grant of invalidity for
indefiniteness, because the specification provides sufficient
guidance to a person of ordinary skill in the art as to
the scope of its asserted claims. As to the ’275 patent, we
vacate the district court’s grant of summary judgment of
noninfringement because the district court improperly
resolved genuine disputes of material fact in favor of
Covidien instead of Ethicon, the non-moving party, and
questions of fact remain as to whether Covidien’s accused
ultrasonic devices infringe the asserted claims of the ’275
patent.

As for the Design Patents, we reverse the district
court’s grant of invalidity based on functionality. The
district court evaluated the claimed designs using too
high a level of abstraction, focusing on the unclaimed
utilitarian aspects of the underlying article instead of the
claimed ornamental designs of that underlying article.
We affirm, however, the district court’s grant of summary
judgment of noninfringement of the Design Patents.
After the functional aspects of the claimed designs are
properly excluded from the infringement analysis, the
claimed ornamental designs are plainly dissimilar from
the ornamental design of Covidien’s accused products.
Based on the foregoing, we remand to the district court to
resolve Ethicon’s allegations that Covidien’s accused
devices infringe the asserted claims of the ’501 and ’275
patents.


Nautilus is cited:


We review the district court’s indefiniteness determination
de novo. Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1370 (Fed. Cir. 2014). A claim is invalid for
indefiniteness under 35 U.S.C. § 112 ¶ 22 if its language,
when read in light of the specification and prosecution
history, fails to inform skilled artisans about the scope of
the invention with reasonable certainty. Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).

(...)

But in the context of the dispute here, the definiteness
requirement of 35 U.S.C. § 112 mandates only that one
skilled in the art must be able to understand which
pressures are relevant to the claims and how those pressures
can be measured, so to discern the scope of the
claimed average pressure range with reasonable certainty.
See Nautilus, 120 S. Ct. at 2124. If such an understanding
of how to measure the claimed average
pressures was within the scope of knowledge possessed by
one of ordinary skill in the art, there is no requirement for
the specification to identify a particular measurement
technique. As discussed above, evidence in the record
demonstrates that because the specification and claims of
the ’501 patent focused on average clamping and coaptation
pressures, a skilled artisan would have possessed
such an understanding and such knowledge. See J.A.
4427 ¶ 247; 4356 ¶ 102.




Of design patents


Design patents enjoy the same presumption of validity
as utility patents under 35 U.S.C. § 282. L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993); 35 U.S.C. § 171. Thus, Covidien has the
burden to prove invalidity of the Design Patents by clear
and convincing evidence. Microsoft v. i4i Ltd. P’ship, 131
S. Ct. 2238, 2242 (2011); L.A. Gear, 988 F.2d at 1124. We
have described as “stringent” this standard as it applies to
invalidating design patents on grounds of functionality.
Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed.
Cir. 2002). We review the district court’s finding that the
patented designs are dictated by their function for clear
error. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563,
1566 (Fed. Cir. 1996).
Articles of manufacture necessarily serve a utilitarian
purpose, but design patents are directed to ornamental
designs of such articles. 35 U.S.C. § 171. If a particular
design is essential to the use of an article, it cannot be the
subject of a design patent. L.A. Gear, 988 F.2d at 1123.
We have found designs to be essential to the use of an
article when the claimed design is “dictated by” the use or
purpose of the article. Id. (citing In re Carletti, 328 F.2d
1020, 1022 (CCPA 1964); Power Controls Corp. v. Hybrinetics,
Inc., 806 F.2d 234, 238 (Fed. Cir. 1986)). Design
patents on such primarily functional rather than ornamental
designs are invalid. PHG Techs., 469 F.3d at
1366; see also Bonito Boats, Inc. v. Thunder Craft Boats,
Inc., 489 U.S. 141, 148 (1989).
In determining whether a claimed design is primarily
functional, “[t]he function of the article itself must not be
confused with ‘functionality’ of the design of the article.”
Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed.
Cir. 1997). In Hupp, we separated the function inherent
in a concrete mold—producing a simulated stone pathway
by molding concrete—from the particular pattern of the
stone produced by the mold itself—an aesthetic design
choice. Id. at 1461. Thus, even though the claimed
design pattern was embedded within the functional
concrete mold, the proper analysis required a determination
of whether the design pattern within the mold—and
not the concrete mold itself—was “dictated by” its function.
Because there was no utilitarian reason the mold
had to impress the particular claimed rock walkway
pattern into the concrete, we determined that the claimed
design was “primarily ornamental,” and not invalid as
functional. Id.

(...)

We have not mandated applying any particular test
for determining whether a claimed design is dictated by
its function and therefore impermissibly functional. We
have often focused, however, on the availability of alternative
designs as an important—if not dispositive—factor
in evaluating the legal functionality of a claimed design.
For example, the district court in L.A. Gear referenced the
evidence of many alternative designs that accomplished
the same functionality associated with the underlying
athletic sneaker. 988 F.2d at 1123. In view of that evidence,
we noted that “[w]hen there are several ways to
achieve the function of an article of manufacture, the
design of the article is more likely to serve a primarily
ornamental purpose. Id. See also Rosco, 304 F.3d at 1378
(“[I]f other designs could produce the same or similar
functional capabilities, the design of the article in question
is likely ornamental, not functional.”); Best Lock, 94
F.3d at 1566 (same); Hupp, 122 F.3d at 1460 (same).



***The specifics of the design patent issue:


The Design Patents claim particular ornamental designs
of an ultrasonic surgical device. The D’801 patent
claims a particular ornamental design of an inverted “U”-
shaped trigger. The D’802 patent claims the overall
appearance of the ornamental design of the “U”-shaped
trigger and the particular ornamental design of a rounded
and fluted torque knob positioned above and forward from
the trigger. The D’803 patent claims the overall appearance
of the ornamental design of the “U”-shaped trigger
and the particular ornamental design of a rounded activation
button positioned directly above the trigger. The
D’804 patent claims the overall appearance of the ornamental
designs of the “U”-shaped trigger, the fluted
torque knob, and the rounded activation button, with the
torque knob and the button positioned relative to the
trigger as in the D’802 and D’803 patents, respectively. A
figure from the D’804 patent, depicting the ornamental
designs of the trigger, torque knob, and button claimed in
various combinations

(...)

The district court concluded that the claimed designs
in the Design Patents were all dictated by function and
were therefore invalid. Ethicon DCt, ECF No. 132, at 22.
Specifically, the district court determined that under each
consideration for assessing functionality identified in
PHG Technologies v. St. John Companies, 469 F.3d 1361,
1366 (Fed. Cir. 2006), Ethicon’s claimed designs were
dictated by function.


We have not mandated applying any particular test
for determining whether a claimed design is dictated by
its function and therefore impermissibly functional. We
have often focused, however, on the availability of alternative
designs as an important—if not dispositive—factor
in evaluating the legal functionality of a claimed design.
For example, the district court in L.A. Gear referenced the
evidence of many alternative designs that accomplished
the same functionality associated with the underlying
athletic sneaker. 988 F.2d at 1123. In view of that evidence,
we noted that “[w]hen there are several ways to
achieve the function of an article of manufacture, the
design of the article is more likely to serve a primarily
ornamental purpose. Id. See also Rosco, 304 F.3d at 1378
(“[I]f other designs could produce the same or similar
functional capabilities, the design of the article in question
is likely ornamental, not functional.”); Best Lock, 94
F.3d at 1566 (same); Hupp, 122 F.3d at 1460 (same).
Here, the district court appeared to discount the existence
and availability of alternative designs in determining
that the claimed Design Patents were “primarily
functional” based on its evaluation of the five considerations
identified in PHG, 469 F.3d at 1366 (quoting Berry
Sterling, 122 F.3d at 1456). In Berry Sterling, we vacated
and remanded a district court’s grant of summary judgment
of invalidity where it had failed to “elicit the appropriate
factual underpinnings for a determination of
invalidity of a design patent due to functionality.” 122
F.3d at 1454. In our instructions on remand, we explained
that where the existence of alternative designs is
not dispositive of the invalidity inquiry, the district court
may look to several other factors for its analysis:
whether the protected design represents the best
design; whether alternative designs would adversely
affect the utility of the specified article;
whether there are any concomitant utility patents;
whether the advertising touts particular
features of the design as having specific utility;
and whether there are any elements in the design
or an overall appearance clearly not dictated by
function.
Id. at 1456. We explained that evaluating these other
considerations “might” be relevant to assessing whether
the overall appearance of a claimed design is dictated by
functional considerations. Id.; High Point, 730 F.3d at
1315 (“Assessing [these five] factors may help determine
whether a claimed design, as a whole, is ‘dictated by’
functional considerations.” (emphasis added)). Thus,
while the Berry Sterling factors can provide useful guidance,
an inquiry into whether a claimed design is primarily
functional should begin with an inquiry into the
existence of alternative designs.

(...)

The foregoing evidence does not support the district
court’s grant of summary judgment that the claimed
designs are primarily functional for two reasons. First,
the district court’s determination that the designs did not
work “equally well” apparently describes the preferences
of surgeons for certain basic design concepts, not differences
in functionality of the differently designed ultrasonic
shears. For example, in supporting its conclusion that
alternative designs “would not have worked as well” as
the claimed design, the district court pointed to testimony
that surgeons preferred ultrasonic shears with certain
basic design features like activation buttons on the front,
rather than the rear of the device, “open” triggers, rather
than closed or loop-style triggers, and forward positions,
as opposed to other positions, for placement of the torque
knob. Ethicon DCt, ECF No. 132, at 18–19.
Second, to be considered an alternative, the alternative
design must simply provide “the same or similar
functional capabilities.” Rosco, 304 F.3d at 1378 (reversing
functionality finding because alternative mirror
designs could still provide a similar level of performance);
see also Seiko Epson Corp. v. Nu-Kote Intern., Inc., 190
F.3d 1360, 1368 (Fed. Cir. 1999) (explaining that to be
patentable, there cannot only be one “possible [ornamental]
form of the article that could perform its function”).




link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1370.Opinion.8-5-2015.1.PDF