Court Reverses Indefiniteness Under Nautilus; Design Patents for Surgical Shears are Valid

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Federal Circuit Review – Issue No. 63-01.
Court Reverses Indefiniteness Under Nautilus; Design Patents for Surgical Shears are Valid

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., No. 2014-1370, 2015 U.S. App. LEXIS 13798 (Fed. Cir. Aug. 7, 2015) (Before Lourie, Bryson, and Chen, J.) (Opinion for the court, Chen, J.). Click Here for a copy of the opinion. 

Ethicon sued Covidien in the Ohio district court for infringement of utility and design patents directed to ultrasonic surgical shear devices.  The court granted Covidien’s motions for summary judgment, concluding that one patent was invalid as indefinite, that another patent was not infringed by Covidien’s products, and that several design patents were invalid as functional and were not infringed.  Ethicon appealed the judgment to the Federal Circuit.

First, the Court reversed the judgment of invalidity for indefiniteness under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).  The claimed ultrasonic surgical shears required a clamping pressure between 60 and 210 psi.  The district court found the patent did not identify a particular method for calculating pressure and various known methods would yield different results.  Thus, the claims were indefinite because a person of ordinary skill would not know how to determine the claimed psi range. The Federal Circuit concluded that these were “clearly erroneous factual conclusions,” in view of intrinsic and expert evidence that the known psi measurements aim to arrive at the same result, and any of the known methods could be used.  Section 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…[T]here is no requirement for the specification to identify a particular measurement technique.”

Second, the Court vacated the summary judgment of non-infringement for a surgical shears patent having a “transmission rod” to direct vibration toward the blade and clamping arm of the shears.  The claim also required a “damping member configured to loosely contact the transmission rod” to absorb transverse vibrations.  The district court found that Covidien’s products did not include a damping member to “loosely contact” the rod, because raised nodes prevent actual contact with the rod.  The court also relied on expert testimony that the accused products did not experience the same undesired vibrations as the shears in the patent.  The Federal Circuit disagreed, and rejected Covidien’s argument that its products were “designed” to avoid the undesired vibrations and to avoid contact between the damping member and transmission rod.  The Court found disputed facts, requiring adjudication, in conflicting expert testimony and tests showing instances of contact and occurrence of similar vibrations, regardless of the intention behind the design of the accused products.

Third, the Court reversed the district court’s determination that Ethicon’s design patents were invalid as primarily functional.  The district court found that each of the designs included functional elements such as a trigger, a torque knob, and a button.  Once each functional element was factored out of the analysis, the patents had no remaining scope and could not be infringed.  The Federal Circuit noted, however, that the underlying function of an article must not be confused with the functionality of the design of the article.  Instead, the proper inquiry is whether the design is truly “dictated” by its function.  In upholding the validity of the design patents, the Court found: (1) the district court failed to consider whether alternative ornamental designs could provide the same functionality, and (2) 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 features.

The Court affirmed the district court’s grant of summary judgment of non-infringement of the design patents.  The Court found that, after properly excluding functional aspects of the claimed designs and conducting a side-by-side comparison, the claimed designs were plainly dissimilar from the ornamental design of Covidien’s accused products.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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