Ethicon Endo-Surgery, Inc. et al. v. Covidien, Inc. et al.

Docket No. 2014-1370

August 7, 2015

Brief Summary: DC finding of invalidity of ‘501 patent for indefiniteness reversed; claim construction of ‘275 patent affirmed but grant of SJ vacated as evidence of genuine dispute considered in favor of movant; design patents found not to be functional but finding of infringement affirmed.

Summary: Ethicon appealed DC grant of SJ that US 8,182,501 is indefinite, US 5,989,275 is not infringed, and that four US design patents are invalid as functional and in the alternative, not infringed. The technology relates to surgical instruments that use ultrasonic energy and heat to cut and seal tissue and blood vessels. The disputed terms of the ‘501 patent include “clamping pressure of 210 psi at the clamping surface area” and “an average predetermined clamping pressure between and including 60 psi and 210 psi” of representative claim 17. The DC concluded the specification did not specify how to measure the pressure. The FC panel, reviewing this point de novo (Interval Licensing, FC 2014) under the “reasonable certainty” standard (Nautilus, FC 2014), concluded that the specification “reference[d] average clamping/coaptation pressures, regardless of whether or not the word ‘average’ is expressly recited by the claims” which “signal[s] to a skilled artisan how to arrive at the claimed force and pressure measurements” (based on unrebutted expert testimony), and distinguished this case from Honeywell (FC 2003) in which the method of measurement was not found in the specification or in the art but only in Honeywell’s confidential files. The DC’s ‘275 claim construction of “loosely contacts” and “over a portion of the transmission rod” was reviewed de novo as it relied only on intrinsic evidence (Teva, US 2015) and affirmed. But the FC panel considered expert testimony to conclude “genuine disputes remain as to whether the sheath of Covidien’s accused ultrasonic shears ‘loosely contacts’ its transmission rod”, and vacated the grant of SJ because the DC resolved genuine disputes of material fact in favor of Covidien instead of Ethicon (the non-movant). The FC panel also disagreed with the DC on invalidity of the design patents (reviewed for clear error), finding it “evaluated the claimed designs using too high a level of abstraction, focusing on the unclaimed utilitarian aspects of the underlying article instead of the claims ornamental designs of that underlying article” (“[t]he function of the article itself must not be confused with ‘functionality’ of the design of the article” (Hupp, FC 1997); invalid where key blade design dictated by functional concerns (Best Lock, FC 1996); likely ornamental where “other designs could produce same or similar functional capabilities” (LA Gear, FC 1993)) and reversed on invalidity. The DC’s claim construction reviewed de novo (Teva US 2015), the opinion noting “the preferable course ordinarily will be for a [DC] not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design” (Egyptian Goddess, FC 2008), and the DC construction “that the Design Patents cover ‘nothing’” was vacated. Non-infringement was nonetheless considered and the FC panel ultimately agreed with the DC conclusion of no infringement (Egyptian Goddess, FC 2008 (whether designs are “substantially the a whole” “in the eye of the an ordinary observer” (a “principal purchaser of the underliying articles” (Gorham, US 1871)).

This entry was posted in Claim Construction, Design Patents, Indefiniteness. Bookmark the permalink.

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