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

• Decision Date: 07 August 2015
• Docket Number: No. 2014–1370.,2014–1370.
• Citation: 115 U.S.P.Q.2d 1880,796 F.3d 1312
• Parties: ETHICON ENDO–SURGERY, INC., Ethicon Endo–Surgery, LLC, Plaintiffs–Appellants v. COVIDIEN, INC., Covidien LP, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

796 F.3d 1312

115 U.S.P.Q.2d 1880

ETHICON ENDO–SURGERY, INC., Ethicon Endo–Surgery, LLC, Plaintiffs–Appellants

v.COVIDIEN, INC., Covidien LP, Defendants–Appellees.

No. 2014–1370.

United States Court of Appeals, Federal Circuit.

Aug. 7, 2015.

William F. Cavanaugh, Jr., Patterson Belknap Webb & Tyler LLP, New York, N.Y., argued for plaintiffs-appellants. Also represented by Chad J. Peterman, Jeremy A. Weinberg, R. James Madigan III, Helen P. O'Reilly.

Drew Miller Wintringham III, DLA Piper U.S. LLP, New York, N.Y., argued for defendants-appellees. Also represented by Francis W. Ryan IV, Matthew Ganas, Melissa Reinckens ; Stanley Joseph Panikowski III, San Diego, CA.

Before LOURIE, BRYSON, and CHEN, Circuit Judges.

Opinion

CHEN, Circuit Judge.

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.

I. Background

The patents-in-suit are directed to surgical instruments that use ultrasonic energy created by blades vibrating at high frequencies to cut tissue and blood vessels. These surgical instruments also use the heat generated from the friction of the blade vibrating against the blood vessel to coagulate and seal those blood vessels in order to prevent bleeding. Ethicon develops, manufactures, and sells such ultrasonic surgical instruments

. After Covidien launched a competing line of ultrasonic surgical equipment, Ethicon sued Covidien, alleging infringement of the utility and design patents at issue in this appeal, among others. Both parties waived their rights to a jury trial and agreed to a bench trial on all disputed issues. After Markman proceedings and the close of discovery, Covidien successfully moved for summary judgment of invalidity and/or noninfringement of the asserted patent claims. See Ethicon Endo–Surgery, Inc. v. Covidien, Inc., No. 11–cv–871, ECF Nos. 130–32 (S.D. Oh. Jan. 22, 2014) (Ethicon DCt ). The district court entered a stipulated final judgment of noninfringement and/or invalidity of all patents-in-suit in favor of Covidien. Ethicon timely appealed, and we have jurisdiction over Ethicon's appeal pursuant to 28 U.S.C. § 1295(a)(1).

II. Discussion

We review the grant of summary judgment under the law of the regional circuit. Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 (Fed.Cir.2011). The Sixth Circuit reviews an order granting summary judgment de novo. Savage v. Gee, 665 F.3d 732, 737 (6th Cir.2012).

A. The '501 patent

The '501 patent is directed to ultrasonic surgical shears for cutting and sealing a blood vessel. '501 patent, 1:20–23. The claimed device includes an ultrasonic surgical blade, a clamping arm, and a tissue pad attached to the clamping arm. Id. at 2:7–10. The clamping arm opens and closes towards the ultrasonic blade in a manner similar to the two blades of a pair of scissors. Id. at 2:8–9. During use, a blood vessel is positioned between the blade and the tissue pad on the clamping arm. Id. at 1:67–2:2. When the blade and clamping arm are in a “closed position,” the average clamping pressure on the blood vessel is between 60 and 210 pounds per square inch (psi). Id. at 2:2–4. The ultrasonic blade then vibrates at a high frequency. Id. at 2:4–5. The combination of this ultrasonically-vibrating blade and clamping pressure on the blood vessel results in the bringing together the walls of the blood vessel (a “coaptation”), the cutting of the coaptated blood vessel (a “transection”), and the sealing of the coaptated cut ends of the blood vessel (a “coagulation”). Id. at 1:40–46. According to the '501 patent, the 60 to 210 psi average clamping pressure range provides improved blood vessel sealing with shorter transection times on smaller blood vessels and blood vessel sealing with acceptable transection times on larger blood vessels, a result which was not conventionally achievable. Id. at 2:25–31. Claim 17 is representative, and recites as follows:

17. An ultrasonic surgical shears comprising:

a) an ultrasonic surgical blade;

b) a clamping arm operable to open and close toward the blade;

c) a tissue pad attached to the clamping arm, wherein the blade and tissue pad define a clamping surface area so that the applied clamp force does not exceed a clamping pressure of 210 psi at the clamping surface area; and

d) means for limiting a user applied clamping force on the clamping arm creating an average predetermined clamping pressure between and including 60 psi and 210 psi on tissue disposed between the tissue pad and the blade.

Id. at 7:15–27 (emphases added).

Each asserted claim of the '501 patent includes at least one limitation that requires clamping pressure values similar to those recited in claim 17. Ethicon DCt, ECF No. 131 at 49. The asserted claims recite either an “average” clamping/coaptation pressure (e.g., claims 1 and 17) or simply a “clamping pressure” (e.g., claims 12, 22, and 23). We understand the '501 patent's specification to use “clamping pressure” interchangeably with “average” clamping/coaptation pressure. For example, in describing the “method of the invention” as illustrated in Figure 1, the specification describes the “exert coaptation pressure” step (element 14) as the exertion of “an average coaptation pressure on the blood vessel between and including 60 psi and 210 psi.” Id. at 3:27–41. The “Summary of the Invention” also describes the “method of the invention” as the exertion of “an average coaptation pressure on the blood vessel between and including 60 psi and 210 psi.” Id. at 2:1–4, 2:10–13, 2:18–22. The remainder of the specification then refers interchangeably to this key 60 psi to 210 psi range as either the “average coaptation pressure,” the clamping/coaptation pressure, or simply “the pressure.” Compare id. at 3:38–41 (“average coaptation pressure”), with id. at 5:4–8 (“clamping pressure”), id. at 5:41–52 (“coaptation pressure”), and id. at 4:17–27 (“the pressure”). Thus, we understand the '501 patent's claims to reference average clamping/coaptation pressures, regardless of whether or not the word “average” is expressly recited by the claims.

The district court found the asserted claims of the '501 patent to be invalid as indefinite, finding that nothing in the specification or understanding in the art specified “a method of measurement, the location of measurement, and the type and amount of tissue used for the measurement of clamping force[s] and clamping pressure[s]” recited by the claims. Ethicon DCt, ECF No. 131 at 56. The district court was troubled by the fact that “measuring at different locations along the clamp arm provide[d] different force and pressure values” and “when the clamp arm [wa]s fully engaged with tissue, the tissue c[ould] be thin or thick, stiff or compressible, and depending on the type of tissue, the measurement of the clamping force and pressure w[ould] differ.” Id. at 56–57.

Ethicon contends that the district court ignored much of Ethicon's proffered evidence and instead improperly resolved disputed issues of fact in favor of the movant, Covidien. Ethicon argues that a skilled artisan reading the specification would understand that the clamping force measurements recited in the claims must be made when the clamping arm and blade are in a closed position, and in a manner that reflects the average pressure applied by the clamping arm on the clamping surface area, which can be measured at the midpoint of the recited clamping surface area—the midpoint of the tissue pad.¹

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...