Ethicon v. Covidien - Appellate Briefs

2014-1370

IN THE

United States Court of AppealsFOR THE FEDERAL CIRCUIT

ETHICON ENDO-SURGERY, INC. and ETHICON ENDO-SURGERY, LLC,

Plaintiffs-Appellants,—v.—

COVIDIEN, INC. and COVIDIEN LP,Defendants-Appellees.

ON APPEAL FROM THE UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION IN CASE NO. 11-CV-871JUDGE TIMOTHY S. BLACK

BRIEF FOR PLAINTIFFS-APPELLANTS

d

WILLIAM F. CAVANAUGH, JR.CHAD J. PETERMANR. JAMES MADIGAN IIIHELEN P. O’REILLYJEREMY A. WEINBERGPATTERSON BELKNAP WEBB & TYLER LLP1133 Avenue of the AmericasNew York, New York 10036(212) 336-2000

Attorneys for Plaintiffs-Appellants

Case: 14-1370 CASE PARTICIPANTS ONLY Document: 23 Page: 1 Filed: 07/21/2014

CERTIFICATE OF INTEREST

Counsel for Plaintiffs-Appellants Ethicon Endo-Surgery, Inc. and Ethicon

Endo-Surgery, LLC certify the following:

1. The full name of every party or amicus represented by me:

Ethicon Endo-Surgery, Inc. and Ethicon Endo-Surgery, LLC

2. The name of the real party in interest (if the party named in the caption is not

the real party in interest) represented by me is:

Not Applicable.

3. All parent corporations and any publicly held companies that own 10 percent

or more of the stock of the party or amicus curiae represented by me are:

Johnson and Johnson; Ethicon, Inc.; Ethicon, LLC; Ethicon PRHoldings

4. The name of all law firms and the partners or associates that appeared for the

party or amicus now represented by me in the trial court or agency or are

expected to appear in this court are:

William F. Cavanaugh, Jr., Chad J. Peterman, R. James Madigan III,Helen P. O’Reilly, Jeremy A. WeinbergPATTERSON BELKNAP WEBB & TYLER LLP

Charles D. HoffmanHOFFMANN MARSHALL STRONG LLP

David Edward SchmitFROST BROWN & TODD, LLC


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TABLE OF CONTENTSPage

TABLE OF AUTHORITIES.................................................................................... iii

STATEMENT OF RELATED CASES ......................................................................1

STATEMENT OF JURISDICTION ..........................................................................1

INTRODUCTION .....................................................................................................2

STATEMENT OF THE ISSUES ...............................................................................5

STATEMENT OF THE CASE...................................................................................6

STATEMENT OF FACTS .........................................................................................7

I. THE PARTIES.................................................................................................7

II. THE PATENTS-IN-SUIT................................................................................8

A. The ’501 Patent .....................................................................................8

B. The ’275 Patent ...................................................................................10

C. The Design Patents..............................................................................12

III. THE ACCUSED SONICISION DEVICE.....................................................15

IV. THE DISTRICT COURT’S GRANT OF SUMMARY JUDGMENT..........18

SUMMARY OF ARGUMENT................................................................................19

STANDARD OF REVIEW .....................................................................................20

ARGUMENT ...........................................................................................................21

I. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF INDEFINITENESS ON THE ’501 PATENT...................22

II. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF NON-INFRINGEMENT ON THE ’275 PATENT...........29

A. The District Court Erred In Its Construction of “Configured toLoosely Contact” the Transmission Rod.............................................30


TABLE OF CONTENTS(CONTINUED)

Page

ii

B. Even Under Its Construction, the District Court Erred InGranting Summary Judgment of Non-Infringement ...........................32

C. The District Court Erred In Finding That Sonicision’s Sleeve IsNot “Adapted to Absorb Undesired Vibrations”.................................36

1. Covidien Admitted That Sonicison’s Sleeve WasDesigned To Prevent Metal-to-Metal Contact, a Form ofUndesired Vibrations.................................................................36

2. Covidien’s “Droplet” Tests Demonstrated UndesiredVibrations ..................................................................................38

III. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF INVALIDITY AND NON-INFRINGEMENT ONTHE DESIGN PATENTS ..............................................................................39

A. The District Court Erred In Granting Summary Judgment ofInvalidity .............................................................................................40

1. Whether the Patented Designs Are Dictated by FunctionIs a Disputed Issue of Fact ........................................................41

2. The District Court Erred In Its Application of the OtherFactors Identified In Berry........................................................47

B. The District Court Erred In Granting Summary Judgment OfNon-Infringement of the Design Patents.............................................50

1. The District Court Erred In “Factoring Out” Elements ofthe Design Patents Based On Functionality..............................50

2. The District Court Erred In Failing to Consider the PriorArt In Its Infringement Analysis ...............................................52

CONCLUSION........................................................................................................57


iii

TABLE OF AUTHORITIES

Page(s)CASES

Anderson v. Liberty Lobby, Inc.,477 U.S. 242 (1986)................................................................................20, 29, 44

Apple, Inc. v. Samsung Elecs. Co.,11 Civ 1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011)............51

Arminak & Assocs. v. Saint-Gobain Calmar, Inc.,501 F.3d 1314 (Fed. Cir. 2007) ..........................................................................56

Aventis Pharma SA v. Hospira, Inc.,675 F.3d 1324 (Fed. Cir. 2012) ..........................................................................30

Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc.,853 F.2d 1557 (Fed. Cir. 1988) ....................................................................46, 49

Banks v. Wolfe Cnty. Bd. of Educ.,330 F. 3d 888 (6th Cir. 2003) .......................................................................20, 22

Berry Sterling Corp. v. Pescro Plastics, Inc.,122 F.3d 1452 (Fed. Cir. 1997) ..............................................................41, 46, 47

Bright v. Westmoreland Co.,380 F.3d 729 (3d Cir. 2004) ...............................................................................21

Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294 (Fed. Cir. 2010) ..........................................................................49

Crown Packaging Tech., Inc. v. Ball Metal Bev. Container Corp.,635 F.3d 1373 (Fed. Cir. 2011) ..............................................................29, 34, 39

DiLeo v. Ernst & Young,901 F.2d 624 (7th Cir. 1990) ..............................................................................21

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) (en banc) .....................................................passim


TABLE OF AUTHORITIES(CONTINUED)

Page(s)

iv

Ergo Licensing, LLC v. CareFusion Inc.,673 F.3d 1361 (Fed. Cir. 2012) ..........................................................................29

Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank,527 U.S. 627 (1999)............................................................................................35

Good Sportsman Mktg. LLC v. Li & Fung Ltd.,07 Civ 395, 2010 U.S. Dist. LEXIS 65458 (E.D. Tex. June 29, 2010)..............51

Gorham Co. v. White,81 U.S. 511 (1871)..............................................................................................52

High Point Design LLC v. Buyer’s Direct, Inc.,730 F.3d 1301 (Fed. Cir. 2013) ........................................................39, 40, 41, 45

HIL-ROM v. Stryker,___ F.3d ___, 2014 U.S. App. LEXIS 12105 (Fed. Cir. June 27, 2014) ...........30

Hilgraeve Corp. v. McAfee Assocs., Inc.,224 F.3d 1349 (Fed. Cir. 2000) ....................................................................34, 39

Honeywell Int’l Inc. v. ITC,341 F.3d 1332 (Fed. Cir. 2003) ....................................................................27, 28

Hupp v. Siroflex of Am., Inc.,122 F.3d 1456 (Fed. Cir. 1997) ..............................................................40, 45, 47

In re GPAC Inc.,57 F.3d 1573 (Fed. Cir. 1995) ............................................................................26

L.A. Gear, Inc. v. Thom McAn Shoe Co.,988 F.2d 1117 (Fed. Cir. 1993) ....................................................................46, 51

Lexion Med., LLC v. Northgate Techs., Inc.,641 F.3d 1352 (Fed. Cir. 2011) ..........................................................................20

Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.,744 F.3d 1272 (Fed. Cir. 2014) (en banc) ..........................................................21



Page(s)

v

Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,730 F.2d 1452 (Fed. Cir. 1984) ..........................................................................21

Med. Inst. Of Minn. v. Nat’l Ass’n of Trade & Technical Schools,817 F.2d 1310 (8th Cir. 1987) ............................................................................20

Metro. Life Ins. Co. v. Bancorp Servs., L.L.C.,527 F.3d 1330 (Fed. Cir. 2008) ..............................................................29, 34, 39

Nautilus, Inc. v. Biosig Instruments, Inc.,572 U.S. ___, 2014 U.S. LEXIS 3818 (June 2, 2014).................................passim

Nordock, Inc. v. Sys., Inc.,927 F. Supp. 2d 577 (E.D. Wis. 2013) ...............................................................51

Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,806 F.2d 1565 (Fed. Cir. 1986) ..........................................................................26

Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,739 F.3d 694 (Fed. Cir. 2014) ............................................................................53

PHG Techs., LLC v. St. John Cos.,469 F.3d 1361 (Fed. Cir. 2006) ..............................................................41, 44, 46

Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................30

Revision Military, Inc. v. Balboa Mfg. Co.,700 F.3d 524 (Fed. Cir. 2012) ......................................................................52, 55

Richardson v. Stanley Works,597 F.3d 1288 (Fed. Cir. 2010) ....................................................................50, 51

Rosco, Inc. v. Mirror Lite Co.,304 F.3d 1373 (Fed. Cir. 2002) ........................................................40, 41, 45, 49

Savage v. Gee,665 F.3d 732 (6th Cir. 2012) ..............................................................................20



Page(s)

vi

Seiko Epson Corp. v. Nu-Kote Int’l, Inc.,190 F.3d 1360 (Fed. Cir. 1999) ..........................................................................40

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,655 F.3d 1364 (Fed. Cir. 2011) ..........................................................................28

Thorner v. Sony Computer Entm’t Am. LLC,669 F.3d 1362 (Fed. Cir. 2012) ..........................................................................30

Wellman, Inc. v. Eastman Chem. Co.,642 F.3d 1355 (Fed. Cir. 2011) ..........................................................................28

STATUTES

28 U.S.C. § 1295(a)(1)...............................................................................................1

28 U.S.C. § 1331........................................................................................................1

28 U.S.C. § 1338(a) ...................................................................................................1

35 U.S.C. § 171........................................................................................................40

OTHER AUTHORITIES

FED. CIR. R. 32(b).....................................................................................................59

FED. CIR. R. 47.5 ........................................................................................................1

FED. R. APP. P. 4(a)(1)(A)..........................................................................................1

FED. R. APP. P. 32.....................................................................................................59

FED. R. CIV. P. 56(a).................................................................................................20


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STATEMENT OF RELATED CASES

Pursuant to Federal Circuit Rule 47.5, counsel for Plaintiffs-Appellants

states there are no related cases to this case and there are no other cases that will be

directly affected by the Court’s decision in this case.

STATEMENT OF JURISDICTION

The district court had jurisdiction in this action pursuant to 28 U.S.C.

§§ 1331 and 1338(a). The Notice of Appeal from the Final Judgment entered on

March 4, 2014 was timely filed on March 19, 2014 in accordance with FED. R.

APP. P. 4(a)(1)(A). This Court has appellate jurisdiction under 28 U.S.C.

§ 1295(a)(1).


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INTRODUCTION

Ethicon Endo-Surgery, Inc. and Ethicon Endo-Surgery, LLC (collectively

“Ethicon”) appeal from the district court’s decisions granting Covidien, Inc. and

Covidien LP (collectively “Covidien”) summary judgment of: (1) invalidity on

U.S. Patent No. 8,182,501 (“’501 Patent”), (2) non-infringement on U.S. Patent

No. 5,989,275 (“’275 Patent”), and (3) invalidity and non-infringement on U.S.

Design Patent Nos. D661,801 (“’801 Patent”), D661,802 (“’802 Patent”),

D661,803 (“’803 Patent”), and D661,804 (“’804 Patent”) (collectively, the “Design

Patents”).

The patents at issue in this appeal cover important advances in the field of

ultrasonic surgical instruments. In granting summary judgment of invalidity and

non-infringement, the district court ignored disputed issues of material fact and

failed to view the evidence in the light most favorable to Ethicon.

First, the district court erred in granting summary judgment that the asserted

claims of the ’501 Patent are invalid as indefinite. The ’501 Patent relates to

surgical devices that apply ultrasonic energy and force/pressure through a clamping

arm that clamps down on blood vessels. The inventors unexpectedly found that,

when the clamping arm is fully engaged, a particular range of clamping

forces/pressures produces more reliable vessel sealing. The ’501 Patent claims

devices/methods operating within those ranges.


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The district court’s ruling is at odds with the Supreme Court’s recent holding

in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ___, 2014 U.S. LEXIS 3818

(June 2, 2014). In granting summary judgment of invalidity, the district court

ignored relevant portions of the specification when it stated that the patent provides

“no guidance” as to the method of measuring clamping forces/pressures for

purposes of the claims. (A0099, A0101) In fact, the specification provides the

guidance that the district court said was missing. The district court also ignored

Ethicon’s expert’s opinion that the scope of the claimed invention would have been

reasonably clear to a person of skill in the art. At a minimum, there are disputed

fact issues that make summary judgment of invalidity inappropriate under

Nautilus.

Second, the district court erred in granting summary judgment that the

accused Covidien Sonicision device does not infringe the ’275 Patent. The ’275

Patent relates to a damping sheath “configured to loosely contact the transmission

rod” to absorb undesired vibrations along the rod during use of the ultrasonic

surgical device. The district court erred by reading into its claim construction a

requirement that the sheath’s “loose contact” with the transmission rod must be at

points other than at so-called “fixed support points.” That requirement is not part

of the ordinary meaning of the claim term and is not justified by any re-definition

or disclaimer by the patentees.


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After adopting this erroneous construction, the district court compounded its

error on summary judgment by ignoring disputed issues of material fact on

whether the accused Sonicision product meets the elements of the claim as so

construed. For example, CT scans taken by Ethicon’s expert show the contact

necessary under the district court’s claim construction. Covidien’s expert

disagreed with that interpretation of the scans. The district court’s failure to treat

this evidence as creating a triable issue of fact is reversible error.

Finally, the district court erred in granting summary judgment that Ethicon’s

Design Patents are invalid and not infringed. The four Design Patents claim the

design of the trigger (handle), rotation knob, and activation button of ultrasonic

devices. The district court invalidated these patents by finding that they were all

“dictated by function.” In doing so, the district court again failed to view the

evidence in the light most favorable to Ethicon. In finding that the designs were

dictated by function, the district court rejected fact and expert evidence showing

that the designs were not “dictated by function,” including evidence of alternative

designs that could function as well as the patented designs.

The district court also erred in its infringement analysis. Having found the

designs functional in its invalidity analysis, the district court repeated that error in

its infringement analysis by factoring out the shape and placement of the handle,

rotation knob and trigger, thereby distorting the proper analysis of whether the


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accused devices are substantially similar to the patented designs. The district court

also erred by failing to consider the patented designs and accused designs in the

context of the prior art. Ethicon’s patented designs, which Sonicision sought to

reproduce, represent a departure from prior art designs of triggers, rotation knobs,

and activation buttons.

For all of these reasons, the grants of summary judgment should be reversed.

STATEMENT OF THE ISSUES

1. As to the ’501 Patent: Did the district court err in granting summary

judgment that the ’501 Patent is invalid as indefinite where there are disputed

issues of material fact under Nautilus, Inc. v. Biosig Instruments, Inc. as to whether

the scope of the asserted claims would be reasonably clear to a skilled artisan at the

time of the patent application?

2. As to the ’275 Patent: Did the district court err in granting summary

judgment of non-infringement where: (a) the district court’s claim construction

erroneously imported a limitation into the asserted claim, and (b) there are disputed

issues of material fact as to whether the accused product meets the requirements of

the claims, even under the district court’s incorrect claim construction?

3. As to the Design Patents: (a) Did the district court err in granting

summary judgment of invalidity where there are disputed issues of material fact on

whether the claimed designs are dictated by function; and (b) Did the district court


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err in granting summary judgment of non-infringement when it factored out

elements that it erroneously considered to be functional and failed to consider the

patented and accused designs in the context of the prior art with which an ordinary

observer would reasonably be familiar?

STATEMENT OF THE CASE

Ethicon filed this patent infringement action on December 14, 2011. The

district court issued its claim construction ruling on April 25, 2013. (A0001-

A0024)

On October 21, 2013, Covidien filed the three summary judgment motions at

issue here. (A1975; A2435; A2784) In response, Ethicon presented evidence,

including declarations from experts in the relevant art, that presented disputed

issues of material fact warranting the denial of summary judgment. (See, e.g.,

A0177-A0180; A3595-A3606; A3617-A3618; A3649-A3651; A3659; A3684-

A3688; A4281-A4282; A4356; A4394-A4427; A4807-A4818; A5570-A5576)

On January 22, 2014, the district court granted summary judgment. Copying

Covidien’s opening briefs almost word-for-word and without addressing much of

the evidence that Ethicon presented, the district court granted summary judgment

that: (1) the asserted claims of the ’501 Patent are invalid as indefinite; (2) the

asserted claims of the ’275 Patent are not infringed; and (3) the asserted claims of


7

the Design Patents are invalid and not infringed. (A0025-A0051; A0052-A0109;

A0110-A0143)

Final Judgment was entered on March 4, 2014. (A0150-A0152) Ethicon

timely filed a Notice of Appeal on March 19, 2014. (A6147)

STATEMENT OF FACTS

The patents-in-suit involve energy-based instruments, in particular, devices

that use ultrasonic energy to cut tissue and blood vessels, and seal those blood

vessels to prevent bleeding.1 (A0154-A0214)

I. THE PARTIES

Ethicon develops, manufactures, and sells innovative medical devices,

including ultrasonic surgical instruments, which it markets under the HARMONIC

brand. (A0230; A4656) Ethicon has been the market leader in ultrasonic surgical

devices for decades. (A3652/131:5-18; A4235; A4664/63:18-A4665/64:6) In

2011, Covidien launched its Sonicision brand, a competing ultrasonic surgical

instrument. (A3520; A3639/17:25-A3642/20:14, A3643/30:12-A3646/33:6;

A4661/57:1-16)

1 Ultrasonic instruments use a blade vibrating at very high frequencies ofapproximately 55,000 times per second to cut and coagulate tissue. (A2481/¶31;A2545/¶38)


8

II. THE PATENTS-IN-SUIT

The patents-in-suit reflect some of Ethicon’s pioneering work in the field of

ultrasonic surgical instruments.

A. The ’501 Patent

Prior art devices typically used low clamping forces, corresponding to low

clamping pressures, to cut and seal blood vessels. (A0177/1:27-52) Conventional

wisdom was that using higher clamping forces would lead to a degradation in

coagulation performance (i.e., the seal on the end of the coagulated blood vessel

would be weaker and more susceptible to bursting open). (Id.)

Defying conventional wisdom, Ethicon engineers discovered that the use of

higher clamping forces, corresponding to higher clamping pressures, actually

resulted in superior performance. (A0177/2:23-54) The ’501 Patent claims

Ethicon’s novel method of using the higher clamping forces/pressures and devices

capable of operating at such forces/pressures. (A0179-A0180)

Claim 17 is a representative claim. Italics have been added to indicate the

portions of the claim that the district court held were indefinite:

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 andtissue pad define a clamping surface area so that the applied clamp


9

force does not exceed a clamping pressure of 210 psi at theclamping surface area; and

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

(A0180/7:15-26)

The specification provides guidance sufficient to allow a person of skill in

the art to determine the forces and pressures (e.g., “clamping pressure . . . at the

clamping surface area” and the “average . . . clamping pressure”) recited in the

asserted claims. In particular, the specification states:

Ultrasonic surgical instruments are known which include ultrasonicsurgical shears having an ultrasonic surgical blade, a clamping armoperable to open and close toward the blade . . . and a device forexerting a 1.5 pound clamping force on the clamping arm whichcreates a clamping pressure of 45 psi (pounds per square inch) on ablood vessel which is positioned between the clamping surface area ofthe tissue pad and the blade. It is noted that the clamping surface areais the area where the blade and the tissue pad are in close proximitywhen the clamping arm is in a closed position.

* * *The ultrasonic surgical shears also includes a device for exerting aclamping force on the clamping arm creating an average clampingpressure between and including 60 psi and 210 psi on tissuepositioned between the tissue pad and the blade.

Applicants experimentally found that applying an ultrasonic surgicalshears coaptation pressure ranging from 60 psi to 210 psi(corresponding to a fully-engaged clamping surface area of 0.033square inches and a clamping force ranging from 2 to 7 pounds) on4.5 mm to 5 mm diameter blood vessels resulted in successful blood-vessel sealing . . . .


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* * *It is noted that pressure is force per unit area . . . . The pressuresdiscussed herein are pressures seen by tissue when the entire clampingsurface area is in contact with the tissue. As previously mentioned, aclamping surface area is the area where the blade and the tissue padare in close proximity when the clamping arm is in a closed position.

(A0177/1:27-38, A0177/2:10-14, A0177/2:32-37; A0178/4:17-27; A4424-

A4427 (emphasis added))

B. The ’275 Patent

When ultrasonic cutting devices are operated, energy is generated at the

transducer and transmitted to the blade by a transmission rod. The transmission of

energy generates ultrasonic vibrations that travel in many directions around the

rod. Only some of the vibrations are desirable, specifically, axial or longitudinal

vibrations (i.e., vibrations that move directly forward and backward along the

transmission rod toward the surgical blade). (A0162/1:17-25) Vibrations moving

in other directions lead to non-optimal performance and potential damage to the

device. (A0162/1:17-30; A0166/9:60-64)


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Prior to the ’275 Patent, various methods were used to reduce undesirable

vibrations from the transmission rod, including the use of dampening fluids or O-

rings placed on the transmission rod. (A0162/1:31-59) The prior art methods had

limitations and drawbacks, including generating too much heat and being

inconvenient or impractical. (Id.)

The ’275 Patent improves on the prior art by using a dampening member

that “loosely contacts” a portion of the transmission rod. This allows the desirable

vibrations to move to the blade while reducing the undesired vibrations.

(A0162/2:1-60) Claim 1 is the sole asserted independent claim. Italics have been

added to indicate the limitations that the district court held were not present in the

accused device:

1. An ultrasonic surgical device comprising:

a transducer assembly adapted to vibrate at an ultrasonic frequencyin response to electrical energy;


12

a mounting device having a first end and a second end, themounting device adapted to receive ultrasonic vibration from thetransducer assembly and to transmit the ultrasonic vibration fromthe first end to the second end of the mounting device, the first endof the mounting device coupled to the transducer assembly;

a transmission rod having a first end and a second end, thetransmission rod adapted to receive ultrasonic vibration from themounting device and to transmit the ultrasonic vibration from thefirst end to the second end of the transmission rod;

a damping member surrounding at least a portion of thetransmission rod, the damping member configured to looselycontact the transmission rod over a portion of the transmission rod,the damping member adapted to absorb undesired vibrations alongthe transmission rod without the use of a fluid; and

an end effector having a first end and a second end, the end effectoradapted to receive the ultrasonic vibration from the transmissionrod and to transmit the ultrasonic vibration from the first end to thesecond end of the end effector, the second end of the end effectorbeing disposed near an antinode and the first end of the end effectorcoupled to the second end of the transmission rod.

(A0169/16:50-A0170/17:10)

C. The Design Patents

In 2005, Ethicon redesigned its flagship HARMONIC ACE product. The

design team set out to improve upon the ergonomics of the predecessor ACE

device and to create a “new signature look” for Ethicon’s HARMONIC line of

products. (A4567/42:7-10) As the project’s lead industrial designer described it,

the team sought to create a design that would “reposition the whole [HARMONIC]

brand” and create a “brand look” that was “compelling” and “unique.”


13

(A4567/42:5-19; see also A4576/69:5-8; A4582/93:14-16 (“[W]e spent a lot of

time on really trying to come up with a beautiful device.”))

The new design, like the old one, had to include three elements: (i) a means

to open and close the jaws of the device; (ii) a means to activate ultrasonic energy;

and (iii) a means to rotate the device’s blade and clamp arm. The team considered

numerous different design approaches to these three elements and to the device as

a whole. (A5023-A5029) The end result of a two-year long process was the

HARMONIC ACE-E line of products. The ACE-E features a trigger shaped like a

shepherd’s hook or an inverted “U” to open and close the device, immediately

beneath a rounded activation button, which itself is beneath a rotation knob with

six rounded flutes. All three of these elements are placed in a line at the distal end

of the device’s housing.

As shown in the images below, and as further discussed below (infra pp. 52-

53), prior to the invention of the Design Patents, the clamping arm of almost all


14

ultrasonic surgical devices was controlled by a thumb-ring or a loop-shaped trigger.

(A5573/¶20, A5575/¶¶28-30; A4656-A4657; A4662/61:8-24; A5008-A5009;

A5361-A5363)

Ethicon sought design patent protection for its unique designs. Recognizing

that Ethicon’s designs were original, non-obvious, and ornamental, the United

States Patent Trademark Office (“USPTO”) issued the Design Patents. A figure

from the ’804 Patent, which is representative of each of the Design Patents, is

shown below:


15

(A0211)

The solid lines in the drawing represent the claimed elements while the dotted lines

are unclaimed elements. As shown in the drawing, the ’804 Patent claims the

trigger handle, activation button, and rotation knob.2

III. THE ACCUSED SONICISION DEVICE

In 2011, Covidien introduced the accused Sonicision ultrasonic energy

device.

2 The three other Design Patents use the same drawing, just with a differentcombination of claimed elements. The ’801 Patent claims the trigger only(A0181-A0188); the ’802 Patent claims the trigger and rotation knob (A0189-A0196); and the ’803 Patent claims the trigger and activation button (A0197-A0205).


16

Relevant for purposes of the appeal of summary judgment of non-

infringement of the ‘275 Patent, Sonicision has a transmission rod (or waveguide)

for transmitting ultrasonic vibrations to the surgical blade. (A1985-A1986; A1999-

A2000; A2173/49:18-A2174/50:8; A3544-A3545; A3560; A3595-A3602) That

rod has four raised nodes along its length and is surrounded by a clear (Teflon)

damping sheath or sleeve, all shown below. (A1985-A1986; A3560; A3595-

A3602; A3649/49:3-13) The sheath is not tightly fitted to any portion of the

transmission rod. (A3561; A3595-A3601; A3604)


17

The difference in diameter between the sleeve and the non-raised nodal

portions of the transmission rod is quite small (0.015 inches), and both the sleeve

and transmission rod are flexible. (A3560-A3561; A3599-A3602) The sleeve

makes contact with both the raised nodes and points on the transmission rod other

than the raised nodes. (A3595; A3599-A3604; A3617-A3618)

Relevant for purposes of the appeal of summary judgment of non-

infringement of the Design Patents, Covidien designed Sonicision to have a “U”-

shaped trigger, activation button, and rotation knob like the patented design rather

than the prior art designs shown above.


18

’804 Patent Sonicision

IV. THE DISTRICT COURT’S GRANT OF SUMMARY JUDGMENT

After the close of discovery, Covidien moved for summary judgment on

various issues. Ethicon opposed the motions by presenting detailed evidence,

including fact and expert witness testimony, which demonstrated that there are

disputed issues of material fact. (See, e.g., A3595-A3606; A3617-A3618; A3649-

A3651; A3659; A3684-A3688; A4394; A4356; A4395-A4396; A4807-A4818;

A5570-A5576)

The district court did not address much of this evidence. Instead, the district

court’s opinions on summary judgment are virtually word-for-word copies of

Covidien’s opening summary judgment briefs,3 with little or no discussion of the

evidence that Ethicon presented in opposing summary judgment. (Compare

3 As to the ’275 Patent, the district court’s opinion also copied Covidien’s replybrief. (Compare A0043-A0045, A0046-A0050 with A5585-A5587, A5589-A5593)


19

A0099-A0109 with A2462-A2471 (’501 Patent); compare A0041-A0043, A0045-

A0046, A0050-A0051 with A1988-A1990, A1990-A1991, A1991-A1992 (’275

Patent); and compare A0126-A0131, A0131-A0143 with A2812-A2816, A2818-

A2830 (Design Patents))

SUMMARY OF ARGUMENT

Rather than identify triable issues of fact, the district court used Covidien’s

summary judgment motions to resolve disputed issues of fact and conflicting

expert opinions in Covidien’s favor. The district court’s opinions largely ignore

Ethicon’s evidence.

As described below, Ethicon’s argument and supporting expert opinion on

indefiniteness, at a minimum, create a disputed issue of fact as to whether a person

of ordinary skill would have understood how to determine whether the clamping

arm was providing the force/pressure required by the claims of the ’501 Patent.

For this reason, the district court’s holding of indefiniteness should be reversed.

The district court also erred in its claim construction of claim 1 of the ’275

Patent by improperly importing a claim limitation. Even under the district court’s

erroneous claim construction, Ethicon provided sufficient evidence of infringement

to warrant a trial on the merits.

Finally, the district court erred in its approach both to invalidity and

infringement on the Design Patents. On a summary judgment record containing


20

conflicting expert opinions and ample evidence that there were equally effective

alternative design options, the district court nonetheless found that Ethicon’s

Design Patents were “dictated by function.” This error infected both its invalidity

and infringement analysis.

STANDARD OF REVIEW

This Court reviews 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 court should only grant summary judgment “if the movant shows that

there is no genuine dispute as to any material fact and the movant is entitled to

judgment as a matter of law.” FED. R. CIV. P. 56(a). In considering a summary

judgment motion, the court must “view the factual evidence and draw all

reasonable inferences in favor of the nonmoving party.” Banks v. Wolfe Cnty. Bd.

of Educ., 330 F. 3d 888, 892 (6th Cir. 2003) (citations omitted); Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). The court’s role on summary

judgment is “not . . . weigh[ing] the evidence and determin[ing] the truth of the

matter, but … determin[ing] whether there is a genuine issue for trial.” Anderson,

477 U.S. at 249; see also Med. Inst. Of Minn. v. Nat’l Ass’n of Trade & Technical

Schools, 817 F.2d 1310, 1315 (8th Cir. 1987) (“A judge does not sit as a trier of


21

fact when deciding a motion for summary judgment even if the case is scheduled

to be heard without a jury.”).

This Court reviews claim construction de novo. Lighting Ballast Control

LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276-66 (Fed. Cir. 2014) (en

banc).

ARGUMENT

The district court largely copied Covidien’s opening briefs without further

analysis.4 As a result, it failed to address much of the evidence that Ethicon

presented in response. As discussed below, the evidence that the district court

ignored creates disputed issues of material fact—particularly when viewed in a

light most favorable to the non-movant, Ethicon.

4 This Circuit and others have questioned this practice. See, e.g., LindemannMaschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457-1458(Fed. Cir. 1984) (reversing district court’s factual findings as clearly erroneouswhere the findings adopted by the district court were proposed by a party beforetrial, warning that “an apparent absence of personal attention [by the districtcourt] need not be disregarded” and “the language in an opinion . . . may indicatethat numerous harmful errors of law produced an erroneous conclusion”); Brightv. Westmoreland Co., 380 F.3d 729, 732 (3d Cir. 2004) (“When a court adopts aparty’s proposed opinion as its own, [it] vitiates the vital purposes served byjudicial opinions.”); DiLeo v. Ernst & Young, 901 F.2d 624, 626 (7th Cir. 1990)(“Judicial adoption of an entire brief . . . withholds information about whatarguments, in particular, the court found persuasive, and why it rejected contraryviews. Unvarnished incorporation of a brief is a practice we hope to see nomore.”).


22

I. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF INDEFINITENESS ON THE ’501 PATENT

The district court’s grant of summary judgment of invalidity of the ’501

Patent is error under the Supreme Court’s recent decision in Nautilus, Inc. v. Biosig

Instruments, Inc., 572 U.S. ___, 2014 U.S. LEXIS 3818 (June 2, 2014). Under

Nautilus, “the definiteness inquiry trains on the understanding of a skilled artisan at

the time of the patent application, not that of a court viewing matters post hoc.”

2014 U.S. LEXIS 3818, at *23. Applying the standard that the Supreme Court

adopted in Nautilus, summary judgment of indefiniteness is improper unless the

undisputed evidence—viewed with “all reasonable inferences [drawn] in favor of

the nonmoving party,” Banks, 330 F. 3d at 892—establishes that “[the] claims, read

in light of the specification delineating the patent, and the prosecution history, fail

to inform, with reasonable certainty, those skilled in the art about the scope of the

invention.” Nautilus, 2014 U.S. LEXIS 3818, at *6. As the Court concluded, “the

certainty which the law requires in patents is not greater than is reasonable, having

regard to their subject matter.” Id. at *22.

Under Nautilus, the understanding of those skilled in the art, in view of the

claims and the specification, is central to the indefiniteness inquiry. Id. at *23.

Here, the evidence from experts on that subject was very much in dispute.

Each claim of the ’501 Patent requires the method/device to operate within a

range of clamping forces/pressures. (A0179-A0180) The district court held that


23

the claims were indefinite because there is: (1) “ambiguity of . . . [the answer to]

the question of where along the length of the clamping arm the force measurements

should be made” (A0101) and, (2) ambiguity of the proper “distance between the

clamp and blade” when the force measurement is taken (A0103). The district court

found that, depending on how these questions are answered, the measurements will

“yield[] significantly different results.” (A0102)

The district court’s finding of “ambiguity” ignores the language in the

specification, the prior art, and the opinion of Ethicon’s expert on how a skilled

artisan would understand the scope of the claims of the ’501 Patent at the relevant

time period. Quoting from Covidien’s opening summary judgment brief, the

district court stated that there was “no disclosed method of measurement [of

clamping forces/pressures] in the patent and no guidance as to whether the value

determined was applicable to the patent claims.” (A0099) This is incorrect. The

specification provides the guidance that the district court said was missing. A

skilled artisan reading the specification and claims would understand that

measurements are to be taken: (1) when the clamp arm and blade are in a closed

position, and (2) in a manner that reflects the average pressure or force of the

clamping surface area, such as the midpoint of the clamping arm.

The specification expressly states that the force/pressure is measured when

the clamping arm is in a closed position:


24

The pressures discussed herein are pressures seen by tissue when theentire clamping surface area is in contact with the tissue. Aspreviously mentioned, a clamping surface area is the area where theblade and the tissue pad are in close proximity when the clampingarm is in a closed position.

(A0178/4:23-27 (emphasis added))

Ethicon’s engineering expert, Mark Schafer, Ph.D., testified that a skilled

artisan, reading the intrinsic record, would understand that the measurements under

the ’501 Patent are to be taken when the clamp arm and blade are in a closed

position. (A4281-A4282; A4394/¶¶145-46; A4395-A4396/¶149; A4400/¶158) Dr.

Schafer also testified that a skilled artisan would understand how to measure the

force/pressure in order to calculate the average pressure or force of the clamping

surface area,5 by using the midpoint of the clamping arm:

The claim and descriptions tell one of skill in the art that the pressureof interest is the average pressure applied across the clamping surfacearea when the clamping arm is in its closed position. A recognizedmethod for determining average force is to measure the clampingforce at the middle of the clamp arm (e.g., Whipple, Col. 13:7-12).Average pressure is determined by dividing average force by theclamping surface area. (’501 Patent, Col. 4:17-18).

(A4427/¶¶247-48) In his opinion as to how one of skill in the art would

understand the claims, Dr. Schafer relied on the references to “average”

pressure and “closed position” in the patent. He also relied on the Whipple

Patent cited by Dr. Schafer refers to U.S. Patent No. 5,947,984 (“’984

5 Pressure is force divided by area. (A0178/4:17)


25

Patent”), prior art to the ’501 Patent, which discloses the use of the midpoint

of the clamping arm for measuring force/pressure. (A4427/¶247) Dr.

Schafer, relying on the ’984 Patent and the laws of physics, opined that:

[O]ne of skill in the art knows that the force measurement is generallylinear with distance along the lever arm, thus taking the force at themidpoint of the active portion of the clamping arm would berepresentative of the average forces delivered by the clamping arm.Thus, it makes common sense to take the force measurement andcalculate pressure based on measurements at the midpoint.

(A4356/¶102)

In response, Covidien’s expert argued that there were numerous ways

to measure clamping force/pressure and that these “different ways” would

lead to varying results. But as Dr. Schafer explained:

I do not dispute that there are a number of different ways to measureclamping force in general, but the ’501 [P]atent is directed towards aspecific inquiry of finding average clamping pressure at the clampingsurface area when the clamp jaw is in the closed position. Most of themethodologies that he identifies are not relevant to that inquiry. Forexample, measuring force with the clamp jaw open at an angle (¶¶494, 496, 497, 499, 500) provides a clamping force, but does not leadto the average pressure as required under the patent. One of skill inthe art would also understand th[at] taking a measurement at the tip ofthe clamp arm does not provide the average clamping pressure (¶ 495,Covidien’s method).

* * *

[T]he specific words of the claims and specification make clear thatthe average pressure is the average pressure seen at the surface areawhen the clamp arm is closed.

* * *


26

The midpoint of the clamping arm is a point that has been recognizedby those of skill in the art as an appropriate place to measure force todetermine average clamping pressure. . . . [T]he use of the midpointwill provide information about the average of the pressures seenacross the clamping surface area.

* * *

[Covidien’s expert Dr.] Durfee’s tests, which show variable results,are based on parameters which are outside of the bounds of the patent,which focuses specifically on average clamping pressures with theclamp arm fully closed.

(A4427/¶¶248-49, A4431/¶261, A4432/¶264)

The district court improperly resolved disputes on these issues between the

two experts in Covidien’s favor rather than Ethicon’s, and in doing so ignored

much of Ethicon’s evidence. For example, the district court completely ignored

Dr. Schafer’s reference to the ’984 Patent as being reflective of what a skilled

artisan would understand about determining the average. The omission of any

discussion of the ’984 Patent indicates the district court’s failure to evaluate

definiteness from the perspective of a skilled artisan fully informed of all relevant

art within the field. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d

1565, 1576 (Fed. Cir. 1986) (“Whether a claim is invalid . . . for indefiniteness

requires a determination whether those skilled in the art would understand what is

claimed.”); see also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The


27

person of ordinary skill in the art is a hypothetical person who is presumed to know

the relevant prior art.”).

In addressing Dr. Schafer’s opinion regarding the use of the midpoint, the

district court stated:

[W]hen asked to point to where in the ’501 patent this “midpointmeasurement” appeared – Plaintiffs’ expert, Dr. Schafer had noanswer. This attempt to interject a measurement at the midpoint in theclaims when no location is disclosed in the patent is improper. SeeHoneywell, 341 F.3d at 1340-41 (rejecting expert’s use of a singlemethod when “the intrinsic evidence cannot be construed to eliminateall other known methods” applicable to obtaining the claimedmeasurements).

(A0106 (some citations omitted))

But this ignores Ethicon’s evidence that a skilled artisan would understand,

based on the teaching of the prior art such as the ’984 Patent, where to measure

clamp pressure. The indefiniteness inquiry is not limited to what is specifically

disclosed in the specification, but encompasses the knowledge of the skilled artisan

as well. See Nautilus, 2014 U.S. LEXIS 3818, at *6.

The district court’s reliance on Honeywell International Inc. v. ITC, 341 F.3d

1332, 1341 (Fed. Cir. 2003), also is misplaced. In Honeywell, which did not

involve a dispute of material facts,6 this Court held that a patent must specify the

6 Honeywell is premised on undisputed facts. Honeywell, 341 F.3d at 1339 (“The[lower court made] a finding of fact that the choice of sample preparation methodis critical to discerning whether a particular product is made by a process that


28

appropriate standard or method of measurement if—without such instructions in

the patent—a skilled artisan would otherwise be unable discern the proper

methodology for practicing a claimed invention. Honeywell, 341 F.3d at 1340-43.

Importantly, this Court does not require invalidation of a patent simply because a

patent fails to fully delineate a method of measurement. The omission of details

about how to implement the method will invalidate the claim only if a skilled

artisan could not infer those details from industry standards or professional

judgment.7

Nautilus recognized how fundamental the understanding of the skilled

artisan is in assessing definiteness. Here, Dr. Schafer provided a detailed, reasoned

opinion grounded in the intrinsic record and the common knowledge of a skilled

artisan. The fact that Covidien and its expert disagreed with Dr. Schafer’s opinion

is a “conflict in [expert] declarations [which] created a genuine issue of material

infringes the ’976 patent claims. Honeywell does not challenge that finding onappeal.”); id. at 1336 (“No one challenges those findings on appeal.”).

7 This Court has repeatedly reversed district courts that rely on Honeywell toinvalidate patents without considering whether a person of ordinary skill in the artcan discern how to take measurements specified in a claim. See Wellman, Inc. v.Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed. Cir. 2011) (reversing a ruling ofindefiniteness where it determined that “industry guidance” would have indicatedto a person of ordinary skill how to conduct measurements specified in thepatent); Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1374(Fed. Cir. 2011) (upholding the validity of a claim even though the patent did notspecify quantitative limits because a person of ordinary skill “would possessadequate understanding to manipulate these variables” to practice the claimedinvention).


29

fact that made summary judgment inappropriate.” Metro. Life Ins. Co. v. Bancorp

Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008); see also Crown Packaging

Tech., Inc. v. Ball Metal Bev. Container Corp., 635 F.3d 1373, 1384 (Fed. Cir.

2011) (“Where there is a material dispute as to the credibility and weight that

should be afforded to conflicting expert reports, summary judgment is usually

inappropriate.”).

In sum, the district court ignored the disputed issues of material fact and

failed to draw reasonable inferences in Ethicon’s favor. See Anderson, 477 U.S. at

255. As this Court has recognized, all “close questions of indefiniteness . . . are

properly resolved in favor of the patentee.” Ergo Licensing, LLC v. CareFusion

Inc., 673 F.3d 1361, 1367 (Fed. Cir. 2012) (internal quotation marks omitted). For

these reasons, the holding of indefiniteness should be reversed.

II. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF NON-INFRINGEMENT ON THE ’275PATENT

The district court held that Sonicision does not infringe the sole asserted

independent claim of the ’275 Patent because it failed to meet the limitation that

“the damping member [is] configured to loosely contact the transmission rod over

a portion of the transmission rod.” (A0169/16:64-A0170/17:2 (emphasis added))

The district court’s non-infringement finding was based on an erroneous claim

construction. Even under the erroneous construction, summary judgment was


30

improper in light of disputed issues of material fact. The district court also found

no infringement because Sonicision did not meet the limitation of having a

“damping member adapted to absorb undesired vibrations along the transmission

rod without the use of a fluid.” (A0045, A0051) The existence of disputed issues

of material facts makes this finding erroneous as well.

A. The District Court Erred In Its Construction of“Configured to Loosely Contact” the Transmission Rod

The district court erroneously imported a limitation into the construction of

“configured to loosely contact” the transmission rod. “It is a ‘bedrock principle’ of

patent law that ‘the claims of a patent define the invention to which the patentee is

entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.

Cir. 2005) (en banc) (citation omitted). This Court “will only interpret a claim

term more narrowly than its ordinary meaning under two circumstances: ‘1) when

a patentee sets out a definition and acts as his own lexicographer, or 2) when the

patentee disavows the full scope of a claim either in the specification or during

prosecution.’” Aventis Pharma SA v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir.

2012) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365

(Fed. Cir. 2012)); see also HIL-ROM v. Stryker, ___ F.3d ___, 2014 U.S. App.

LEXIS 12105, at *4 (Fed. Cir. June 27, 2014).

Instead of adopting a construction of “configured to loosely contact” that is

consistent with its ordinary meaning—such as Ethicon proposed: “[c]ontacting or


31

capable of contacting portions of the transmission rod, but not tightly fitted”

(A1625-A1626)—the district court read in an extraneous requirement. Accepting

Covidien’s construction, the district court construed “configured to loosely

contact” to mean “structured to have contact other than at fixed support points, but

not tightly fitted.” (A0014-A0015 (emphasis added)) This requirement excludes

portions of the transmission rod that are in contact with the sheath. However, this

is not part of the ordinary meaning of the phrase “configured to loosely contact,”

nor is such a limitation supported by any redefinition or disclaimer by the two

patentees.

The specification distinguishes between loose contact of the invention in the

’275 Patent and the prior art’s use of silicon rings attached to the transmission rod

at the nodes (locations on the transmission rod which the district court refers to as

“fixed support” points). (A0166/10:7-17) What the district court failed to

recognize is that the prior art silicon rings are distinguished in the ’275 Patent

specification based on the type of contact involved (the rings were tightly fitted or

attached) rather than where on the transmission rod the contact occurs. The

following quotes make this clear: Compare A0162/1:31-40 (“Isolation mounts,

such as O-rings, may be mounted around the periphery of the acoustic assembly at

positions of minimal axial ultrasonic activity (i.e. nodes) . . . . The shaft . . . has . .

silicone rings disposed near nodes of the shaft . . .”) with A0166/9:58-60 (“The


32

damping sheath 160 is preferably in light contact with the transmission rod 86 to

absorb unwanted ultrasonic energy from the transmission rod 86.”); see also

A0166/10:7-13 (“The damping sheath 160 is more effective than using silicone

rubber rings located only at nodes of longitudinal vibration because the damping

sheath 160 can dampen transverse motion occurring near multiple antinodes of the

unwanted vibration which are located randomly along the length of the

transmission rod 86 relative to the nodes and antinodes of the desired longitudinal

vibration.”))

The intrinsic record simply does not limit where the “loose contact” can

occur. The district court’s construction confuses the concept of type of the contact

(attached/tight versus loose) with the location of the contact (fixed support points).

Absent this imported claim limitation, it is undisputed that Sonicision’s

sleeve is “configured to loosely contact the transmission rod.” It contacts the

transmission rod and is not tightly fitted. (A1988; A3561/¶¶73-78; A3595/¶57-

A3602/¶61, A3604/¶67) Covidien admitted and the district court found that the

“sleeve is structured to have contact with the waveguide . . . at the nodal ribs.”

(A0043; A1988; A5586)

B. Even Under Its Construction, the District Court Erred InGranting Summary Judgment of Non-Infringement

Even under the district court’s incorrect claim construction, there are

genuine issues of fact that preclude summary judgment as to whether Sonicision’s


33

sleeve is “structured to have contact other than at fixed support points, but not

tightly fitted.”

Ethicon’s expert Dr. Schafer opined that Sonicision’s sleeve is “structured to

have contact other than at fixed support points, but not tightly fitted,” as required

by the district court’s construction. (A3600-A3602; A3604/¶67) Dr. Schafer

relied on, among other things, two sets of high-resolution CT scans. In his

opinion, both sets showed loose contact between Sonicision’s sleeve and

transmission rod at both the raised nodal points (the “fixed support points”) and at

points “other than the fixed support points.” (A3562-A3563; A3602/¶61-

A3603/¶65; A3617-A3618; A3684/¶5-A3687/¶12)

Dr. Schafer explained in his report that the first set of CT images showed

that Sonicision’s sleeve “made contact with the transmission rod at several places

on the transmission rod, including at points . . . where the transmission rod was a

nominal diameter”—that is, at points other than the fixed support points. (A3603;

A3617-A3618) As to the second set of CT scans he performed, Dr. Schafer

explained that “[t]hese scans confirm the contact [he] saw and reported in [his]

initial report.” (A3687/¶12)

Covidien’s expert, Dr. Durfee, corroborated Dr. Schafer’s finding of contact

in CT image 9(e), one of the images in Dr. Schafer’s first set of scans, admitting

that “the sheath touches in one location” other than a fixed support point.


34

(A3671/¶107; see also A3618; A3526-A3527; A3562) Dr. Durfee tried to explain

away this infringing contact, arguing that, in his opinion, it resulted from a

wrinkled sleeve, “a nonconforming component that resulted from misassembly or

mishandling.” (A3671-A3672) Yet Dr. Durfee admitted in his deposition that he

had no evidence supporting his “wrinkle” theory. He never discussed it with any

of Covidien’s engineers, never gathered any information concerning Covidien’s

manufacturing quality control procedures, and never gathered any data concerning

the frequency with which Sonicision devices are produced with “wrinkles.”

(A3630/81:13-A3631/82:11)

Dr. Durfee also took CT scans. In his opinion, they do not show the

requisite contact. But, Dr. Schafer disagreed, testifying that “some of Dr. Durfee’s

images show contact.” (A3687/¶11) This is a classic “battle of the experts”

making summary judgment improper. Hilgraeve Corp. v. McAfee Assocs., Inc.,

224 F.3d 1349, 1352-53 (Fed. Cir. 2000) (vacating grant of summary judgment of

no infringement when “conflicting allegations of experts le[ft] material factual

questions unanswered”); see also Metro. Life, 527 F.3d at 1338-39; Crown

Packaging, 635 F.3d at 1384.

The district court ignored Dr. Durfee’s admission that one of the scans

showed the requisite contact and failed to consider the second set of scans from Dr.

Schafer, stating without explanation that they were not “material to the Court’s


35

resolution of the relevant dispositive motions.” (A6146) To the contrary, the

scans were highly material evidence that provided additional visual proof of the

contact between the sleeve and transmission rod.

The district court also relied on Covidien’s self-serving assertion that the

sleeve in Sonicision was “specifically designed to avoid contact” at locations other

than the fixed support points. (A0042; A0044) Therefore, the district court found

it was not “structured” to be in loose contact with the transmission rod.

What Covidien supposedly intended to do has no bearing on the actual

structure and performance of its accused device. See Fla. Prepaid Postsecondary

Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 645 (1999) (“Actions

predicated on direct patent infringement . . . do not require any showing of intent to

infringe . . . .”). The question is, as configured, does the sleeve contact the

transmission rod. Ethicon submitted credible expert testimony that the structure of

the sleeve resulted in the required contact.

As Ethicon demonstrated, the Sonicision is designed with a flexible sleeve

into which a flexible, vibrating transmission rod is placed and the clearance

between the two is very small (0.015 inches). (A3529; A3561/¶¶72-78; A3599-

A3602/¶61, A3604/¶67) As Ethicon’s expert explained, given the structure of

Sonicision, the requisite contact is not just possible, but inevitable. (Id.) Indeed,

the requisite contact was found in every Sonicision that Ethicon tested. (A3526-


36

A3527; A3562-A3563; A3602-A3604; A3617-A3618; A3684/¶5-A3687/¶12)

Based on this record, summary judgment should not have been granted.

C. The District Court Erred In Finding That Sonicision’sSleeve Is Not “Adapted to Absorb Undesired Vibrations”

The district court also erred in finding that Sonicision’s sleeve is not

“adapted to absorb undesired vibrations” as required by claim 1 of the ’275 Patent.

Ethicon presented substantial evidence that the sleeve in Sonicision is adapted to

absorb undesired vibrations.

1. Covidien Admitted That Sonicison’s Sleeve WasDesigned To Prevent Metal-to-Metal Contact, a Formof Undesired Vibrations

Covidien’s own witnesses confirmed that Sonicision’s transmission rod

experiences undesired vibrations, which in the absence of the sleeve would result

in metal-to-metal contact. According to Patrick Dumbauld, a Covidien engineer,

the Teflon sleeve is “designed to contact” the waveguide—or transmission rod—in

order to “prevent the waveguide from touching the inner diameter of the inner

tube.” (A3649/49:9-16) Metal-to-metal contact occurs when the transmission rod

vibrates into the inner tube. (A3531; A3564/¶¶93-94; A3604/¶69-A3606/¶73;

A3649/49:9-A3651/51:24; A3659/42:6-11) As Mr. Dumbauld explained, this is

because “the waveguide vibrates and it’s made of titanium, and the inner tube is

made of steel,” the sleeve is necessary to “reduce the probability of any squealing

associated with those two touching each other.” (A3649/49:17-25 (emphasis


37

added)) This explanation was confirmed by Robert Stoddard, another Covidien

engineer, who testified that the purpose of the sleeve is “[p]rimarily to prevent

contact of the nodal ribs directly with the inner tube to prevent squealing or

rubbing of those two parts where it became an audible -- an audible nuisance to the

user.” (A3659/42:6-11; see also A3650/50:18-A3651/51:14 (confirming that

squealing results from the metal-to-metal contact caused by the waveguide

vibrating into the inner tube))

Covidien also admitted that the express purpose of the sleeve in Sonicision

is to “act as a buffer that prevents direct metal-to-metal contact between the

waveguide’s [transmission rod] raised nodal ribs and the surrounding inner tube.”

(A5586; A2006/¶57; A2172/42:6-11) This is an admission that the sleeve is

adapted to absorb undesired vibrations.

Echoing Covidien’s witnesses, Dr. Schafer confirmed that, absent the sheath,

undesired vibrations would cause metal-to-metal contact: “[m]etal to metal contact

between the vibrating transmission rod and the stationary inner tube would be

caused by the transmission rod vibrating in an undesired way (i.e., vibrating into

the inner tube).” (A3606; see also A3564/¶73) From this, Dr. Schafer concluded

that “Covidien’s use of the damping sheath absorbs these unwanted vibrations.”

(A3606)


38

The district court erred in completely ignoring Ethicon’s evidence that

showed the Sonicision’s transmission rod produced undesired vibrations.

2. Covidien’s “Droplet” Tests Demonstrated UndesiredVibrations

In an effort to prove non-infringement, Covidien performed tests in an effort

to show the absence of any undesired vibrations. (A1991; A2004/¶50; A2167-

A2168) Droplets of water or glycerin were placed on Sonicision’s transmission

rod while it vibrated. (A2167-A2168) According to Covidien’s expert, the theory

behind the tests was that if the droplet did not splatter off of the transmission rod,

then Sonicision did not experience undesired vibrations. (Id.) If the droplet did

splatter, then Sonicision did experience undesired vibrations. (Id.)

Covidien’s expert claimed that none of these tests showed signs of undesired

vibrations. (Id.) Ethicon’s expert, Dr. Schafer disagreed. Dr. Schafer noted that

Covidien’s expert had overlooked a portion of one of the videos that clearly

showed the test fluid splattering off of the transmission rod. (A3565/¶102;

A3688/¶16) Dr. Schafer observed that the videos of Dr. Durfee’s droplet tests

“show that there are undesired vibrations in Sonicision” since they “show[] the test

fluid flying directly off of the transmission rod.” (A3688/¶16) Thus, as Dr.

Schafer opined, “[t]his is evidence of the existence of undesired vibrations in

Sonicision.” (Id.) But Dr. Schafer did not stop there. He repeated Dr. Durfee’s


39

droplet tests, and again “observed the test fluid flying off tangentially from the

transmission rod.” (A3688/¶17)

Here, as elsewhere, the district court resolved a basic fact dispute in

Covidien’s favor when it stated that “Defendants’ water droplet testing[]

demonstrates that Sonicision does not experience significant unwanted transverse

vibrations to be absorbed.” (A0050) The district court ignored Dr. Schafer’s

testimony regarding Covidien’s tests and also ignored the results of Dr. Schafer’s

own droplet tests. This evidence creates issues of material fact making summary

judgment inappropriate. See Hilgraeve, 224 F.3d at 1352-53; Metro. Life, 527

F.3d at 1338-39; Crown Packaging, 635 F.3d at 1384.

III. THE DISTRICT COURT ERRED IN GRANTING SUMMARYJUDGMENT OF INVALIDITY AND NON-INFRINGEMENTON THE DESIGN PATENTS

The district court also erred in granting summary judgment that the Design

Patents are invalid and not infringed. Essentially, the district court confused the

fact that the designs have functions (a requirement for design patentability) as

meaning that they are dictated by function (and are therefore invalid). See High

Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301, 1316 (Fed. Cir. 2013)

(“[T]he fact that the article of manufacture serves a function is a prerequisite of

design patentability, not a defeat thereof.” (citation omitted)) (reversing a judgment

of invalidity). This error infected both the validity and infringement analysis.


40

In addition, the district court’s infringement analysis improperly applied the

“ordinary observer” test as articulated by Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc), by neglecting to compare the patented

and accused designs in the context of the prior art. As described below, for both

validity and infringement, the district court ignored Ethicon’s evidence and

improperly resolved disputed fact issues.

A. The District Court Erred In Granting Summary Judgmentof Invalidity

A design patent may be granted to “[w]hoever invents any new, original and

ornamental design for an article of manufacture.” 35 U.S.C. § 171. To be

protectable, “the design must not be governed solely by function, i.e., that this is

not the only possible form of the article that could perform its function.” Rosco,

Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002) (quoting Seiko Epson

Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999)). A design

patent is invalid if the design is “‘dictated by’ the utilitarian purpose of the article.”

High Point, 730 F.3d at 1315; see also Hupp v. Siroflex of Am., Inc., 122 F.3d

1456, 1460 (Fed. Cir. 1997) (“A design or shape that is entirely functional, without

ornamental or decorative aspect, does not meet the statutory criteria of a design

patent.”).


41

“[V]arious factors may help determine whether a claimed design, as a

whole, is ‘dictated by’ functional considerations.” High Point, 730 F.3d at 1315.

Relevant factors include:

[1] whether the protected design represents the best design,[2] whether alternative designs would adversely affect theutility of the specified article; [3] whether there are anyconcomitant utility patents; [4] whether the advertising toutsparticular features of the design as having specific utility; [5]and whether there are any elements in the design or overallappearance clearly not dictated by function.

Id. (quoting PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1366 (Fed. Cir.

2006), in turn quoting Berry Sterling Corp. v. Pescro Plastics, Inc., 122 F.3d 1452,

1456 (Fed. Cir. 1997)).

A paramount consideration is whether alternative designs exist that would

function as well as the patented design. “[I]f other designs could produce the same

or similar functional capabilities, the design of the article in question is likely

ornamental, not functional.” Rosco, 304 F.3d at 1378.

As described below, Ethicon submitted ample evidence that the patented

designs were not dictated by function.

1. Whether the Patented Designs Are Dictated byFunction Is a Disputed Issue of Fact

In granting Covidien summary judgment of invalidity, the district court

ignored Ethicon’s evidence that alternative designs would work as well as the

Design Patents—evidence that the Design Patents are not dictated by function.


42

Ethicon’s expert, Alan Ball, a practicing industrial designer with experience

designing hand-held medical devices, opined that “there are many different designs

that would function just as well” as the patented designs. (A4807-A4808; A4812-

A4813; A4817; see also A4809-A4812; A4814-A4816; A4818) In fact, Mr. Ball

opined that he was “confident that either [he] or [Covidien’s expert] Mr. Kemnitzer

could design a better trigger for a handheld surgical device with improved

functionality and an entirely different appearance than the asserted design.”

(A4810 (emphasis added))

For example, Mr. Ball opined that the following designs would work better

than Ethicon’s patented trigger design by providing a surer grip and more surface

area against which to apply force in a distal direction:

(A4808, A4811-A4812)

Mr. Ball also identified the following prior art designs for hand-held surgical

device triggers, which function just as well as the claimed designs:


43

(A4809, A4811)

There are also many other alternative designs for hand-held surgical devices

featured in the prior art, some of which feature a “U”-shaped trigger of the type the

district court found functional. For example:

(A4808, A4814, A4828-A4829/¶70.a)

The lead inventor of the Design Patents, Dan Price, agreed that there are

alternative designs that have functional advantages over the patented designs. He

stated that “some of the design concepts [Ethicon] did not choose work better in

certain respects than the concepts [Ethicon] chose.” (A5573) Specifically, Mr.


44

Price identified the perceived or actual advantages of other designs related to the

shape of the trigger (A5573-A5574), the size and location of the rotation knob

(A5574-A5575), and the nature of the activation button (A5575).

Even Mr. Kemnitzer, Covidien’s expert, pointed out that “there’s always

options to make changes in the way something looks” (A5185/92:19-21), admitting

that “it’s possible to make -- to design another handle that would work, that would

work well, would function well” yet “look different” (A5214/199:21-

A5215/200:25), and in fact that there are “a number of examples” of different

looking triggers having the same functional aspects as the patented design

(A5209/182:17-A5210/183:12).8

Whether a design is entirely functional and lacking any ornamental or

decorative aspect typically is a question of fact. PHG Techs., 469 F.3d at 1365.

The issue is not suitable for resolution on summary judgment where, as here, there

are disputed fact issues as to “functionality” when viewing the evidence in the light

most favorable to Ethicon. Anderson, 477 U.S. at 255.

Ignoring the alternative designs identified by Ethicon’s expert, the district

court instead compared the various features covered by the Design Patents (the

8 Market research showed that some consumers thought alternate designs workedbetter than the patented designs. (A5496) For instance, Covidien’s pre-marketprototype testing indicated that some users did not like the U-shaped trigger andpreferred a loop trigger. (A4896, A4911; A4925)


45

trigger, rotation knob, activation button) to a single alternative (each found in a

prior Ethicon device), and then concluded that the asserted designs worked better.

(A0127-A0128)

But the mere fact that the asserted designs function better than a particular

device does not prove that the patented designs are dictated by functional

considerations. Rosco, 304 F.3d at 1378 (“The mere fact that the invention

claimed in the design patent exhibited a superior field of view over a single

predecessor mirror . . . does not establish that the design was ‘dictated by’

functional considerations . . . .”).

By ignoring the evidence that alternative designs could achieve the same

function, the district court committed an error that this Court has cautioned against:

confusing the fact that a design has a function with the idea that the design itself is

dictated by its function. High Point, 730 F.3d at 1316; Hupp, 122 F.3d at 1460

(“[T]he fact that the article of manufacture serves a function is a prerequisite of

design patentability, not a defeat thereof. The function of the article itself must not

be confused with ‘functionality’ of the design of the article.”). Although the

Design Patents show a design for a useful object—for example, a trigger that can

be used to open and close the jaws of a handheld ultrasonic surgical device—“a

distinction exists between the functionality of an article or features thereof and the

functionality of the particular design of such article or features thereof that perform


46

a function.” Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1563

(Fed. Cir. 1988).

As Ethicon’s evidence and alternative designs demonstrated (see supra pp.

40-43), even though the components shown in the Design Patents have functions,

this does not mean that they could not be designed to look different and yet have

the same functionality. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,

1123 (Fed. Cir. 1993) (the fact that elements of a design perform functions “does

not mean that the specific design of each element, and the combination of these

elements into the patented design, is dictated by primarily functional

considerations”).

Moreover, Covidien’s reliance on the functionality of a few components of

the design in advertising does not render the entire design incapable of design

patent protection. What matters is the overall appearance. See PHG Techs., 469

F.3d at 1366 (“‘[T]he determination of whether the patented design is dictated by

the function of the article of manufacture must ultimately rest on an analysis of its

overall appearance.’” (quoting Berry, 122 F.3d at 1455)). Ethicon’s advertising

emphasizes the aesthetics of the patented designs through multiple large, close-up,

high-resolution color photographs of the device. (A3192-A3204) Referring to

functional advantages of certain elements of the product does not demonstrate that

the overall design is dictated by function.


47

The district court’s finding that “each and every aspect claimed in the

Design Patents is clearly dictated by function” (A0131) ignores Ethicon’s

evidence. For example, Ethicon demonstrated that the use of curves in the design

of the trigger is not dictated by function. As Mr. Price testified, many of the

curved forms on the trigger were chosen because they lent a more “graceful look”

to the design, giving it “a more aesthetic, artistic gracefulness.” (A4603/271:22-23)

Moreover, he acknowledged that other approaches are possible without sacrificing

ergonomics. (A4603/271:24-A4604/272:13 (“[M]y feeling was that a very, you

know, curvy device fits better in your hand and it has more of a graceful look to it,

it has a more aesthetic, artistic gracefulness quality to it. But there’s other

designers that would take a different approach. And you can have some very nice

designs that are, you know, a lot more linear. And you can . . . make that

ergonomically good.”); A4611/279:20-A4612/280:18 (noting that many of the

curves were added to the design to create a “unity” of design, “more of a friendly,

welcoming kind of overall feel,” and a “visual impression of the aesthetics [that] is

inviting”)) In sum, conflicting evidence on whether the designs in question are

dictated solely by function should not have been resolved on summary judgment.

2. The District Court Erred In Its Application of theOther Factors Identified In Berry

The district court also erred in its analysis of the other factors identified in

Berry, 122 F.3d at 1456. For example, the district court concluded that the Design


48

Patents “embody the optimal design” for an ultrasonic surgical product. (A1027)

But Covidien’s own expert conceded there is no “best design” for a product such

as this. (A5172/33:13-A5173/34:2 (“[O]ne of the misunderstood concepts of

ergonomics is that there is one solution that is ideal . . . .”); A5177/38:15-

A5178/39:2 (“I don’t think there’s an ultimate design for anything . . . .”);

A5213/186:2-23; A5223/276:10-22; see also A4806-A4807; A4999/273:18-

A5000/274:13)

The fact that Ethicon preferred the patented designs over other designs it

tested does not make the chosen design objectively the “best design” or make the

alternative designs identified by Ethicon’s expert irrelevant. Ethicon selected the

designs reflected in the Design Patents not because no other design could work as

well, but rather because Ethicon concluded that surgeons may prefer the selected

designs, visually and ergonomically. (A4596/214:17-A4597/215:25; A5573-

A5574/¶¶19-22)

This does not make other design alternatives irrelevant nor does it make the

design selected the “best.” As noted above, Ethicon’s expert testified that the

alternative designs he identified would not adversely affect the utility of the device.

In his view, the alternative designs would have performed better than the patented

designs. (See supra Section III.A.1.; A4808, A4811-A4812; see also A5574/¶24)

Rather than grapple with this evidence, the district court simply concluded that the


49

Design Patents are more functional than Ethicon’s predecessor design. (A0127-

A0128) This Court addressed a nearly identical scenario in Rosco and reversed the

district court’s finding of invalidity. 304 F.3d at 1378 (holding that a design is not

dictated by function merely because it has functional advantages over “a single

predecessor”).

The district court also relied on the fact that Ethicon sought utility patents on

its devices. But the existence of a pair of utility patent applications does not make

the Design Patents “entirely functional.” (A1028) In fact, it is common for a

product to be covered by both a utility patent and a design patent. See Avia, 853

F.2d at 1563 (“[A] distinction exists between the functionality of an article or

features thereof and the functionality of the particular design of such article or

features thereof that perform a function. Were that not true, it would not be

possible to obtain a design patent on a utilitarian article of manufacture, or to

obtain both design and utility patents on the same article.”) (citations omitted); see

also Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1297 (Fed. Cir. 2010)

(noting utility and design patent protection for same article).

An invention can be protected by both utility and design patents so long as

its usefulness can be achieved via different looking designs. The alternative

designs identified by Ethicon’s expert show that different designs could achieve

the same functionality. Moreover, the claims of the utility patent applications do


50

not describe the particular proportions or specific design of the elements claimed in

the design patents. There are many different looking designs that would fit the

language of the utility applications that the district court cited. (A3018/¶124

(describing “one embodiment” of the claimed invention; A3019/¶128 (same);

A3020/¶131 (same))

B. The District Court Erred In Granting Summary JudgmentOf Non-Infringement of the Design Patents

1. The District Court Erred In “Factoring Out”Elements of the Design Patents Based OnFunctionality

The district court’s errors, discussed above, regarding the “functionality” of

the Design Patents also infected its infringement analysis. Having found the

“shape and placement” of the trigger, knob, and button (essentially, the entirety of

the patent claims) functional, the district court “factored out” these elements of the

claimed design for infringement purposes.

This was an error. Akin to the invalidity analysis, elements should not be

read out of the claim for infringement analysis unless those design elements are

dictated by some functional requirement. In Richardson v. Stanley Works, 597

F.3d 1288 (Fed. Cir. 2010), this Court made clear that it is only the portions of a

design patent’s drawings that are dictated by function that can be excluded in an

infringement analysis. The Richardson court described the “factored out” elements

of the patented tool design as “driven purely by utility,” “dictated by their


51

functional purpose,” and “purely functional.” Richardson, 597 F.3d at 1294.

Furthermore, Richardson approvingly cited L.A. Gear, the seminal case for the

proposition that just because an element of a design serves a useful function does

not mean that it is ineligible for design patent protection. Id. at 1294.

The district court, however, applied a dramatically different standard by

“factoring out” any features of the patent that were “informed by” or “based on

functional considerations.” (A0133 (emphasis added)) That standard has no basis

in this Court’s precedents. See Nordock, Inc. v. Sys., Inc., 927 F. Supp. 2d 577,

604-05 (E.D. Wis. 2013) (“An aspect of a design patent is non-ornamental only if

the design is dictated by its functionality (‘de jure functional’) and there are not

alternative designs that could perform the same function.”); Apple, Inc. v.

Samsung Elecs. Co., 11 Civ 1846, 2011 U.S. Dist. LEXIS 139049, at *31 (N.D.

Cal. Dec. 2, 2011) (“Richardson instructs the district court to identify the aspects

of the design that are ‘dictated by’ function . . . .”); Good Sportsman Mktg. LLC v.

Li & Fung Ltd., 07 Civ 395, 2010 U.S. Dist. LEXIS 65458, at *10 (E.D. Tex. June

29, 2010) (“While the identified components may have functions, they need not be

excluded simply because they perform functions.”).

As described above (supra pp. 40-43), Ethicon showed that alternative

designs could meet the functional needs of the user. This same evidence creates an

issue of material fact as to infringement. The elements of the Design Patents


52

identified by the district court are not dictated by function and therefore should be

considered in analyzing whether the accused devices infringe. The judgment of

non-infringement should be reversed.

2. The District Court Erred In Failing to Consider thePrior Art In Its Infringement Analysis

Infringement of a design patent exists where “‘in the eye of an ordinary

observer, giving such attention as a purchaser usually gives, [the] two designs are

substantially the same.’” Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524,

526 (Fed. Cir. 2012) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)). In

applying this test, “‘the background prior art, provides . . . a frame of reference and

therefore often is useful in the process of comparison.’” Id. (quoting Egyptian

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008) (en banc)).

Considering whether the patented and accused designs are substantially the

same should have been done in the context of the prior art with which an ordinary

observer would reasonably be familiar. See Egyptian Goddess, 543 F.3d 665. The

district court’s failure to do so is error and requires reversal of the non-

infringement ruling.

In Egyptian Goddess, this Court, sitting en banc, explained that

consideration of the prior art is necessary to the “ordinary observer” test because

“if the accused design has copied a particular feature of the claimed design that

departs conspicuously from the prior art, the accused design is naturally more


53

likely to be regarded as deceptively similar to the claimed design, and thus

infringing.” Id. at 677. As this Court explained, the prior art provides a useful

“frame of reference” for the infringement analysis. Id. at 676-77; see also Pac.

Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 701 (Fed. Cir.

2014) (stating that infringement analysis in design patent cases focuses on the

perspective of one “familiar with the prior art”).

The district court held that the patented and accused designs at issue here are

so “plainly dissimilar” that the court need not consider the “frame of reference”

provided by the prior art. This was error. The designs (shown below) are not so

manifestly different to justify ignoring the prior art.

’804 Patent Sonicision

Using the prior art as context would be particularly important in this case.

As discussed above (supra pp. 12-13), before the invention of the design that led to

the Design Patents, the clamping arm of almost every ultrasonic surgical device


54

was controlled by a thumb-ring or a loop-shaped trigger. (A5573/¶20,

A5575/¶¶28-30; A4656-A4657; A4662/61:8-24; A5008-A5009; A5361-A5363)

For example:

The prior art here shows how closely Covidien sought to mirror the patented

design and distinguish Sonicision from the prior art.

It is exactly in cases like this, where the patented design was unique in the

field until the accused product launched, that the “frame of reference” provided by

the prior art is so crucial. Under these circumstances, infringement is more likely

because “the accused design has copied a particular feature of the claimed design

that departs conspicuously from the prior art.” Egyptian Goddess, 543 F.3d at 677.


55

In Revision Military, the district court took the same erroneous approach that

the district court followed here. In that case, as here, the district court “did not

consider the prior art context in which the ordinary observer test is applied,”

because, in its view, the accused product and asserted design were too dissimilar to

require it to view the designs in the context of the prior art. Revision Military, 700

F.3d at 527. This Court reversed and remanded the case to the district court for

reconsideration of the infringement question.9 Id. The same result is appropriate

here.

The district court also erred in concluding that a surgeon is not an ordinary

observer for purposes of infringement because surgeons are “not involved in

purchasing negotiations, and [are] not expending any money.” (A0134)10 This

was error. One need not be the person who pays for the accused product to be an

“ordinary observer” for an infringement analysis: one must merely be “sufficiently

interested in” the item and have “the capability of making a reasonably discerning

9 Egyptian Goddess is not confined to cases where there are no perceptibledifferences in the protected and the accused design. In such instances, resort toprior art would be unnecessary, because substantial similarity would be soabundantly clear.

10 The district court never actually identified who the ordinary observer was. It justnoted that a number of entities were involved in the purchasing process, stating:“While the surgeon may have some input to a hospital into which devices he orshe prefers, the surgeon is not involved in purchasing negotiations, and is notexpending any money. As it is the hospital or supply company that is ultimatelyputting out the money for these devices, they will heavily scrutinize the details ofthe purchase process.” (A0134-A0135)


56

decision when observing the accused item’s design whether the accused item is

substantially the same as the item claimed in the design patent.” Arminak &

Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007). In

fact, Covidien’s proffered expert agreed that surgeons qualify here as ordinary

observers. (A5216/268:17-18)

Once again, the district court improperly resolved disputed fact issues on

summary judgment. The grant of summary judgment of infringement of the

Design Patents should be reversed.


57

CONCLUSION

For all of the above reasons, this Court should reverse the orders granting

summary judgment for the patents-in-suit.

July 21, 2014

Respectfully submitted,

/s/ William F. Cavanaugh, Jr.William F. Cavanaugh, Jr.Chad J. PetermanR. James Madigan IIIHelen P. O’ReillyJeremy A. WeinbergPATTERSON BELKNAP WEBB & TYLER LLP

1133 Avenue of the AmericasNew York, New York 10036Tel. 212-336-2000Fax [email protected]@[email protected]@[email protected]



58

CERTIFICATE OF SERVICE

I hereby certify that on July 21, 2014, I caused the foregoing BRIEF FOR

PLAINTIFFS-APPELLANTS to be electronically filed with the Clerk of the

Court using the CM/ECF system, which will send notification of such filing to the

registered attorney(s) of record that the document has been filed and is available

for viewing and downloading.

In addition, two copies of the brief will be sent via express mail on the same

date as above to the following:

Drew M. Wintringham, III, Esq.DLA Piper LLP (US)1251 Avenue of the AmericasNew York, New York [email protected]

Attorneys for Defendants-Appellees

July 21, 2014

By: /s/ Helen P. O’ReillyHelen P. O’Reilly


59

CERTIFICATE OF COMPLIANCE

This brief complies with the type-volume limitation of FED. R. APP. P.

32(a)(7)(B). The brief contains 11,499 words, as calculated by the word count of

the word processing system used in preparing it, excluding the parts of the brief

exempted by FED. R. APP. P. 32(a)(7)(B)(iii) and FED. CIR. R. 32(b).

This brief complies with the typeface requirements of FED. R. APP. P.

32(a)(5) and the type style requirements of FED. R. APP. P. 32(a)(6). The brief has

been prepared in Microsoft Word 2010 in Times New Roman 14 point font.

July 21, 2014

/s/ William F. Cavanaugh, Jr.William F. Cavanaugh, Jr.


EAST\86892369.1

2014-1370

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRC UIT

ETHICON ENDO-SURGERY, INC and ETHICON ENDO-SURGERY, LLC., Plaintiffs-Appellants,

v.

COVIDIEN, INC. and COVIDIEN LP, Defendants-Appellees.

Appeal from the United States District Court for the Southern District of Ohio

in No. 11-cv-00871, Judge Timothy S. Black.

RESPONSE BRIEF FOR DEFENDANTS-APPELLEES Drew M. Wintringham, III Francis W. Ryan Stanley J. Panikowski Melissa A. Reinckens Matthew N. Ganas DLA Piper LLP (US) 1251 Avenue of the Americas New York, NY 10020-1104 Telephone: (212) 335-4520 Facsimile: (917) 778-8520 Attorneys for Defendants-Appellees Covidien, Inc. and Covidien LP

EAST\86892369.1


ETHICON ENDO-SURGERY, INC. and ETHICON ENDO-SURGERY, LLC v. COVIDIEN, INC. and COVIDIEN LP

No. 14-1370

Counsel for Defendants-Appellees certifies the following: 1. The full name of every party or amicus represented by me is: COVIDIEN, INC. and COVIDIEN LP 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: N/A 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: Covidien PLC (Covidien, Inc. and Covidien LP) 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are:

DLA Piper LLP (US): Drew M. Wintringham, Francis W. Ryan, Mark Rueh (deceased), Stanley J. Panikowski, Darius C. Gambino, Edward H. Sikorski, Erica Pascal, Melissa Reinckens, Matthew Ganas, and Joanna Sykes-Saavedra of DLA Piper LLP (US); and

James Francis McCarthy, III and Robert Alexander Pitcarin, Jr. of Katz Teller Brant & Hild

Dated: November 18, 2014 /s/ Drew M. Wintringham Drew M. Wintringham

TABLE OF CONTENTS

Page

- i -

STATEMENT OF RELATED CASES .................................................................... 1

I. INTRODUCTION .......................................................................................... 2

II. STATEMENT OF THE ISSUES ................................................................... 4

III. STATEMENT OF FACTS ............................................................................. 5

A. The Patents on Appeal .......................................................................... 5

1. The ’501 Clamping Force and Pressure Patent .......................... 5

2. The ’275 Unwanted Vibration Damping Patent ........................ 8

3. The Design Patents................................................................... 12

B. The Sonicision Surgical Instrument ................................................... 14

IV. SUMMARY OF THE ARGUMENT ........................................................... 17

V. STANDARD OF REVIEW .......................................................................... 19

VI. ARGUMENT ................................................................................................ 21

A. The District Court Correctly Granted Summary Judgment of Invalidity Based on Indefiniteness of the ’501 Patent ....................... 21

1. The Patent Does Not Disclose the Use of Any Method of Measuring Clamping Force and Pressure that Would Inform a Skilled Artisan of the Boundaries of the Claims ...... 22

2. Ethicon’s Conclusory and Unsubstantiated Expert Testimony Does Not Create a Disputed Issue of Material Fact ........................................................................................... 25

B. The District Court Correctly Granted Summary Judgment of Noninfringement of the ’275 Patent ................................................... 30

1. The Sonicision Sleeve Does Not Practice the “Configured to Loosely Contact” Claim Limitation ............... 30

2. The Sonicision Sleeve Is Not “Adapted to Absorb Undesired Vibrations” ............................................................. 40

C. The District Court Correctly Granted Summary Judgment of Invalidity of the Design Patents Based on Functionality ................... 47

TABLE OF CONTENTS (continued)

Page

- ii -

1. The District Court Adequately Considered Alternative Designs in Its Analysis ............................................................. 48

2. The Undisputed Evidence Shows The Claimed Design Is the Best Design and Alternative Designs Would Adversely Affect Utility .......................................................... 50

3. The Remaining Berry Sterling Factors Also Show Functionality as a Matter of Law ............................................. 53

D. The District Court Correctly Granted Summary Judgment of Noninfringement on the Design Patents ............................................ 57

1. The District Court Correctly Factored Out the Functional Aspects of the Claimed Design ................................................ 57

2. The District Court’s Alternative Analysis, Which Considered All Aspects of the Claimed Design, Also Supports the Summary Judgment of Noninfringement ........... 59

3. The District Court Did Not Need to Consider the Prior Art in Ruling on the Infringement Claim Because the Claimed Design and Accused Device Are Plainly Dissimilar ................................................................................. 65

4. The District Court Correctly Noted the Sophistication of the “Ordinary Observer” Who Purchases Surgical Instruments ............................................................................... 68

VII. CONCLUSION ............................................................................................. 69


Page

- iii -

CASES

Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) .......................................................................... 31

Am. Calcar, Inc. v. Am. Honda Motor Co., Inc., 651 F.3d 1318 (Fed. Cir. 2011) .......................................................................... 31

Anderson v. Kimberly-Clark Corp., 570 Fed. App’x. 927 (Fed. Cir. 2014) ................................................................ 66

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ................................................................................ 19, 20, 39

Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) .......................................................................... 68

Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) .................................................................... 46, 47

Avia Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557 (Fed. Cir. 1988) .......................................................................... 55

Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997) ...................................................................passim

Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132 (Fed. Cir. 2003) .......................................................................... 31

Braun v. Ann Arbor Charter Twp., 519 F.3d 564 (6th Cir. 2008) .............................................................................. 19

Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 55

Dynacore Holdings Corp. v. U.S. Phillips Corp., 363 F.3d 1263 (Fed. Cir. 2004) .................................................................... 43, 45

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) .....................................................................passim

TABLE OF AUTHORITIES (continued)

Page

- iv -

Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549 (Fed. Cir. 1985) .......................................................................... 20

Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001) .......................................................................... 40

Gorham Co. v. White, 81 U.S. 511 (1871) ........................................................................................ 60, 65

High Point Design LLC v. Buyer’s Direct Inc., 730 F.3d 1301 (Fed. Cir. 2013) .............................................................. 48, 52, 58

Honeywell Int’l. Inc. v. Int’l Trade Comm’n, 341 F.3d 1332 (Fed. Cir. 2003) .................................................................... 23, 24

In re Becton, Dickinson and Co., 675 F.3d 1368 (Fed. Cir. 2012) .......................................................................... 55

Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001) .......................................................................... 26

Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) .......................................................................... 28

Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005) ...................................................................passim

Krippelz v. Ford Motor Co., 667 F.3d 1261 (Fed. Cir. 2012) .............................................................. 25, 27, 28

Lighting Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 744 F.3d 1272 (Fed. Cir. 2014) (en banc) .......................................................... 20

McLean v. 988011 Ontario, Ltd., 224 F.3d 797 (6th Cir. 2000) .............................................................................. 28

Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000) .......................................................................... 43


Page

- v -

MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 19

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ........................................................................................ 21

Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) .......................................................................... 57

PHG Tech. v. St. John Companies, 469 F.3d 1361 (Fed. Cir. 2006) .................................................................... 47, 53

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 31

Revision Military, Inc. v. Balboa Mfg. Co., 700 F.3d 524 (Fed. Cir. 2012) ...................................................................... 66, 67

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) .......................................................................... 57

Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373 (Fed. Cir. 2002) .......................................................................... 51

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) .......................................................................... 34

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1372 (Fed. Cir. 2008) .......................................................... 24, 25

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854 .......................................................................................................... 20

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) .............................................................................................. 56

Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) .......................................................................... 38


Page

- vi -

Unidynamics Corp. v. Automatic Prods Int’l Ltd., 157 F.3d 1311 (Fed. Cir. 1998) .................................................................... 57, 67

Walker Digital, LLC v. Microsoft Corp., 484 F. App’x 496 (Fed. Cir. 2012) ..................................................................... 31

Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343 (Fed. Cir. 2009) .......................................................................... 20

Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355 (Fed. Cir. 2011) .......................................................................... 24

STATUTES AND RULES

35 U.S.C. § 171 ........................................................................................................ 47

Fed. R. Civ. P. 56 ..................................................................................................... 19

- 1 -


No appeal in or from this case was previously before this or any other

appellate court. Counsel for Defendants-Appellees knows of no case pending in

this or any other court that will directly affect or be directly affected by this

Court’s decision in this appeal.

- 2 -

I. INTRODUCTION

Ethicon launched a barrage of various patents against Covidien’s novel and

successful Sonicision surgical instrument. But the undisputed facts showed that

none of these patents covers the Sonicision device, and several were ruled invalid

as a matter of law. Ethicon has given up on three of the originally-asserted patents

entirely. It now presses on appeal various issues relating to two utility patents and

a group of design patents.

Ethicon mischaracterizes this case as one where the district favored one

version of the facts over another. In reality, the district court favored the

undisputed material facts over Ethicon’s legally insufficient attempts to

manufacture a competing view, including with conclusory expert testimony. The

judgment should be affirmed in its entirety.

The ’501 Patent

The district court ruled that one of the utility patents, U.S. Patent No.

8,182,501 (“the ’501 patent”), was both invalid as indefinite and not infringed.

Abandoning any appeal of the noninfringement judgment, Ethicon challenges only

the invalidity ruling. But the asserted claims are invalid as indefinite because the

patent fails to identify any method for measuring the “clamping force” and

“clamping pressure” that are at the heart of the claims. Ethicon’s own witnesses

and documents showed, without dispute: (1) there are various ways to measure

- 3 -

clamping force and pressure; (2) the results will vary significantly depending on

the particular method used; (3) the patent did not disclose the use of any of these

measurement methods, much less a particular one; and (4) there was no known

industry standard for the measurement of clamping force and pressure.

The ’501 patent thus does not inform a skilled artisan of the claim scope

with reasonable certainty. Because the patent fails this basic test for allowing the

public to discern its boundaries, the district court correctly ruled the asserted

claims are indefinite as a matter of law.

The ’275 Patent

The district court also ruled that no reasonable fact-finder could find

infringement of U.S. Patent No. 5,989,275 (“the ’275 patent”). First, the district

court correctly construed the “configured to loosely contact” term in light of the

claim language and specification. In doing so, the court properly rejected

Ethicon’s attempt to divorce that term from the claim language and specification.

Second, the district court correctly ruled that the undisputed facts showed Ethicon

could not prevail on infringement. Two independent grounds support this ruling:

the accused Sonicision device is neither “configured to loosely contact the

transmission rod over a portion of the transmission rod” nor “adapted to absorb

undesired vibrations along the transmission rod without the use of fluid.”

- 4 -

The Design Patents

The district court also ruled that, as a matter of law, U.S. Des. Pat. Nos.

D661, 801 (“the ’801 Patent”), D661,802 (“the ’802 Patent”), D661,803 (“the ’803

Patent”) and D661,804 (the ’804 Patent”) (collectively, “the Design Patents”) are

invalid as functional and not infringed. Regarding invalidity, the district court

correctly determined that the claimed design was dictated by function and hence

ineligible for patent protection. Regarding noninfringement, the district court

properly recognized that no reasonable fact-finder could find Covidien’s design

substantially similar to the claimed design given the many plain dissimilarities

between them. The district court correctly rejected Ethicon’s attempt to expand the

coverage of the Design Patents far beyond the drawings that limit their scope.

II. STATEMENT OF THE ISSUES

1. Did the district court correctly rule the asserted claims of the ’501

patent are invalid as indefinite as a matter of law because a skilled artisan cannot

be reasonably certain of the boundaries of the “clamping force” and “clamping

pressure” claim terms?

2. Did the district court correctly grant summary judgment of

noninfringement of the ’275 patent because the undisputed evidence shows

Covidien’s accused devices do not practice the properly construed claims?

- 5 -

3. Did the district court correctly grant summary judgment of invalidity

of the Design Patents because the claimed features are dictated by function?

4. Did the district court correctly grant summary judgment of

noninfringement of the Design Patents because Covidien’s accused designs are

plainly dissimilar from Ethicon’s claimed designs?

III. STATEMENT OF FACTS

Ethicon asserted numerous patents against Covidien’s Sonicision device.

(A226-55.) The parties agreed that any trial of the case would be a bench trial.

(A226-55.) Ethicon dropped one of those patents after claim construction and

dismissed another patent after discovery. (A1770; A1892-99; A257-82; A1603;

A1612; A301-14.)

The district court then granted Covidien’s motions for summary judgment of

noninfringement, invalidity, or both on all of the remaining patent infringement

claims. (A25-51; A52-109; A110-143; A6068-94; A144-52; A6095-116.) Ethicon

appealed only some of the district court’s rulings. In doing so, Ethicon also

abandoned further proceedings regarding another patent. Only the patents that

remain on appeal are discussed below.

A. The Patents on Appeal

1. The ’501 Clamping Force and Pressure Patent

Ethicon asserted infringement of 17 claims of the ’501 patent. (A4259-306;

A4261; A2049-50.) The ’501 patent describes ultrasonic surgical shears for

- 6 -

cutting and sealing a blood vessel. (A4261-62 ¶¶6-7; A2509-17; A2511.) The

shears have a movable clamp arm and blade at the distal end. (A4261-62 ¶¶6-7;

A2509; A2511.) An example of the clamp and blade (together referred to as “the

jaw”) of the ’501 ultrasonic device is shown below.

(A2511/Fig. 2.)

The ’501 patent claims particular numeric ranges of “clamping force” and

“clamping pressure” applied by the clamp arm to tissue. (A2516-17.) The claimed

instrument is activated ultrasonically to cut and coagulate tissue placed in the jaw.

(A2509/Abstract; A2514/1:40-46, 2:4-5.) Coagulation (or sealing) occurs as the

surgeon squeezes on the handle of the device to close the clamp toward the blade

and against the tissue. (A2607-12.) As the surgeon continues to squeeze the

- 7 -

handle, the force exerted by the clamp arm increases. (A4275-76 ¶¶43-44; A2543;

A2574-77; A2687-89.)

The force exerted by the clamp is not evenly distributed across the clamp

arm. (A2697-98.) The distal end experiences less force and the proximal end

(near the pivot point of the clamp) experiences greater force. (A4286-87 ¶¶70-71;

A2695-703; A2697-98; A2675-93; A2679.) Accordingly, the pressure (i.e., force

divided by surface area (A2515/4:17)) is also different depending on where along

the jaw it is measured. (A4277 ¶¶46-47; A2678; A2697.)

Despite claiming specific numeric ranges for clamp force,1 the ’501 patent

does not disclose how to measure clamp force or determine whether a device exerts

the recited force. Yet there are many methods to measure clamp force. Sarah

Noschang, an inventor of the patent and employee at Ethicon, testified to at least

four different measurement methods that the company utilized internally to

measure clamp force. (A4279 ¶¶49-50; A2676-77.) None of these different

methods is disclosed in the ’501 patent. (A2509-17; A4282 ¶57; A2684; A100-

01.) Nor is there any evidence that they were publicly available.

Ms. Noschang testified that different methods of measuring clamp force do

not provide the same result. (A4279-81 ¶¶51-54; A2680; A2685-87; A2689-91.)

1 Notwithstanding Ethicon’s assertion that its engineers “discovered” that higher clamping forces and pressures could improve performance, the claimed force/pressure ranges overlap with values disclosed in the prior art. (See A723-50; A744/8:13-15.)

- 8 -

When asked which method applied to the ’501 patent, she did not know. (A2684.)

Ethicon’s expert testified that, without knowing specifically how the force

measurement is taken, it is improper to rely on a cited value of clamp force.

(A4278 ¶48; A2706-07.)

2. The ’275 Unwanted Vibration Damping Patent

Ethicon asserted independent claim 1 and dependent claim 3 of the ’275

patent, titled “Damping Ultrasonic Transmission Components.” (A3536-A3559;

A3538-39 ¶¶7-8; A2015; A2049-50; A2066-67.) The ultrasonic surgical

instrument described in the ’275 patent converts electrical energy into mechanical

motion. (A3537 ¶¶2-4; A2023/1:12-17; A2024/3:51-65; A2025/6:53-55.) This

conversion produces high-frequency longitudinal waves of ultrasonic energy that

propagate down the length of the instrument’s transmission rod (or waveguide) to

the end effector (or blade) at the distal end. (A2023/1:12-17; A2024/3:51-65;

A2025/6:53-55.) The longitudinal waves of ultrasonic energy result in axial (i.e.,

longitudinal) vibrational motion of the blade. (A2024/3:51-65; A3537 ¶39;

A2023/1:23-25.)

During surgery, the rapidly vibrating blade is placed in contact with the

tissue of the patient. (A2024/3:51-65; A2025/6:53-55; A3538 ¶5; A2024/4:9-11.)

Ultrasonic energy from the blade causes cutting and sealing of the tissue.

(A2024/3:65-4:11.)

- 9 -

The asserted ’275 patent claims relate to an ultrasonic surgical instrument

comprising a damping member or sheath that loosely surrounds at least a portion of

the transmission rod to dampen or “absorb undesired vibrations.” (A3539 ¶¶10-11;

A2030-31/Claim 1; A2027/9:34-45; A3542 ¶20; A3548-49 ¶¶40-43; A2027/9:58-

62; A2023/2:1-5.) The specification characterizes these undesired vibrations as

“unwanted transverse vibrations” (i.e., non-longitudinal vibrations). (A2027/9:60-

62.) Sheaths were used to dampen such unwanted vibrations in ultrasonic surgical

instruments before the ’275 patent. (A3540 ¶13; A2023/1:46-55.) The ’275 patent

purports to claim a specific configuration that supposedly provides certain

advantages over prior art systems. (A2023/1:46-55; A3540 ¶14; A2027/10:7-17.)

Claim 1 requires that the damping member be “configured to loosely contact

the transmission rod over a portion of the transmission rod” and “adapted to absorb

undesired vibrations along the transmission rod without the use of fluid.” (A3541

¶17; A3547 ¶32; A2030-31/16:49-17:2.) Figure 5 shows the damping sheath (160)

relative to the transmission rod (86):

- 10 -

(A3559 ¶66; A2019/Fig. 5 (colored labeling added).)

The ’275 patent’s written description explains how the damping sheath

interacts with the transmission rod, through loose contact, to supposedly absorb

unwanted transverse vibrations:

…the damping sheath 160 of the surgical instrument 150 loosely surrounds at least a portion of the transmission rod 86. The damping sheath may be positioned around the transmission rod 86 to dampen or limit transverse side-to-side vibration of the transmission rod 86 during operation.

* * *

The damping sheath 160 is preferably in light contact with the transmission rod 86 to absorb unwanted ultrasonic energy from the transmission rod. The damping sheath 160 reduces the amplitude of non-axial vibrations of the transmission rod 86, such as, unwanted transverse vibrations….

(A2027/9:34-45, 58-64.)

The ’275 patent distinguishes undesired transverse vibrations, which the

damping sheath is designed to absorb, from desired longitudinal vibrations.

(A3548-50 ¶¶36-45; A2023/1:20-25, 53-55; A2027/9:36-39, 58-62, 9:65-10:1,

10:7-13; A2023/2:1-5; A3555 ¶59; A2308-310.) Longitudinal ultrasonic vibration

is desired because it causes the high-speed axial (forward and backward) motion of

the transmission rod and blade required for the blade to cut and seal tissue as

intended. (A2025/6:53-55; A2024/4:9-11; A3547 ¶35; A2053; A2023/1:23-25,

53-55.) In contrast, transverse vibrations occur perpendicular to the longitudinal

- 11 -

axis of desired motion and can disrupt the device’s operation. (A3547 ¶34; A2053;

A2023/1:22-25; A2027/9:60-62.)

Thus, the ’275 patent’s damping sheath is designed to minimize or dampen

the undesired transverse vibrations that occur along the transmission rod of the

claimed instrument and disrupt effective operation of the device. (A2027/9:36-39,

58-62, 9:65-10:1, 10:7-13; A2023/2:1-5.) By contrast, the damping sheath is

constructed to avoid interruption of the desired longitudinal vibrations.

(A2027/9:65-10:1, 10:7-13; A2023/2:1-5; A2308-10.)

The ’275 patent also distinguishes the loose contact between the damping

sheath and transmission rod required by claim 1 from physical support or

attachment of the damping sheath to the transmission rod. (A15; A3542-43 ¶¶21-

22; A2027/9:38-41; A2028/11:8-26.) The ’275 patent disclosure teaches physical

support or attachment at “nodal points” of longitudinal vibration. (A2027/9:38-41;

A2028/11:8-26.) The patent defines a node as “[a] minimum or zero crossing in

the vibratory motion standing wave…where axial motion is usually minimal….”

(A3543 ¶¶23-24; A2025/5:57-60; A2043.) The specification explains it is

preferable to physically support the damping sheath at nodes of the transmission

rod to avoid unnecessary interruption of desired longitudinal vibration and axial

motion of the transmission rod. (A2028/11:8-26.)

- 12 -

3. The Design Patents

All of the asserted Design Patents are titled “User Interface For A Surgical

Instrument.” (A181-214.) All provide a specific design for a hand-held surgical

device that Ethicon used for its Harmonic ACE products. (A181-214.)

Figure 1 of the ’804 design patent is reproduced below. (See A211.) The

three elements claimed in the ’804 patent (in solid lines) are: (1) a U-shaped

trigger with a short front portion and longer rear portion (the “U-Shaped Trigger”),

(2) a rounded activation button disposed directly above the U-shaped trigger (the

“Rounded Button”), and (3) a fluted torque knob disposed above both the rounded

activation button and the U-shaped trigger (the “Torque Knob”). (A211-14.)

The other three Design Patents claim subsets of these elements. (A181-205.)

Ethicon filed two utility patent applications, both titled “Ergonomic Surgical

Instruments,” on the same device claimed in the Design Patents: (1) U.S. Ser. No.

- 13 -

12/245,158, filed October 3, 2008; and (2) U.S. Ser. No. 13/426,232, filed March

21, 2012. (A4532 ¶¶4-5; A2934-3037; A2039-49; A4533 ¶7; A3089-190.) Just

like the Design Patents, the utility patent applications relate to the configuration of

a hand-held surgical device. These utility patent applications specifically disclose

the functional aspects of the U-Shaped Trigger, Rounded Button, and Torque Knob

features claimed in the Design Patents. (A2934-3037; A3089-3190; A3018-19;

A3021.) These utility patent applications also have claims directed to the specific

designs claimed in the Design Patents. (A2934-3037 ¶¶0008-18, 0111-0113, 0116,

0118, 0124-26, 0128, 0131-32, 135, 0138-39, Claims 1, 8, & 35; A3038-3049;

A3088-3190 Claims 1, 2, 5, & 16.)

Ethicon believed the Harmonic ACE was an optimal design and that

alternative designs would have adversely impacted performance. Ethicon

specifically touted the utility of features claimed in the Design Patents. (A4533-34

¶8; A3192-204; A3194; A3200.) Ethicon created marketing materials that

specifically mentioned the functional benefits of the U-Shaped Trigger, Rounded

Button and Torque Knob. (A4534 ¶9; A3206.) Ethicon’s witnesses also testified

to the functional benefits of the features claimed in the Design Patents. (A3051-52;

A3058-61; A3081; A3086.)

- 14 -

B. The Sonicision Surgical Instrument

Covidien’s Sonicision device is the world’s first cordless, hand-held

ultrasonic surgical instrument. (A383-89.) The battery-operated generator and

transducer supply ultrasonic energy to the waveguide and blade to cut and

coagulate tissue. (A384.) While ultrasonic energy is activated, the user fires the

“trigger” on the handle to close the clamp, thereby applying pressure to tissue

placed in the jaw of the device to facilitate coagulation. (A384; A1603; A1619;

A2611.)

On summary judgment, the district court ruled that the Sonicision does not

infringe the ’501 patent because it does not meet two means-plus-function

limitations relating to certain structures for applying and limiting clamping force

and pressure. (A87-99.) As noted, Ethicon no longer contends the ’501 patent

covers the Sonicision device.

Regarding the ’275 patent, Ethicon contends that the Sonicision’s sleeve

component – used to avoid metal-to-metal contact within the device but not to

dampen unwanted vibrations – constitutes the damping member of claim 1. The

Soncision sleeve is placed between the transmission rod (i.e., waveguide) and inner

tube of the device.

- 15 -

(A2072 (color labeling added); A2070-74; A3544-45 ¶28; A3540 ¶12; A2051.)

There is no dispute that there is a clearance between the sleeve and waveguide.

(Ethicon’s Opening Brief (“EB”) 35; A3541 ¶16; A2061 ¶60.) There is also no

dispute that the sleeve is specifically designed to contact the waveguide at its

raised “nodal ribs.” (A3546 ¶¶29, 31; A2062 ¶64; A2165 ¶106.)

By design, the nodal ribs have an increased diameter compared to the

remainder of the waveguide. (A3544 ¶27; A2061 ¶60; A2165 ¶106.) Thus, the

clearance between the sleeve and waveguide is greatest at locations on the

waveguide other than the nodal ribs, thereby avoiding contact other than at these

nodes. (See A2061 ¶60.) The nodal ribs are also placed at fixed locations along

the waveguide’s nodes of longitudinal vibration. (A2165 ¶106; A2061 ¶60.)

Because the nodal ribs are raised and placed at the fixed nodes, which experience

minimal longitudinal vibration (A2025/5:57-60; A3544 ¶¶25-26; A2034; A2042-

43; A2061 ¶60), they represent ideal locations to physically support the sleeve

while avoiding damping of desired longitudinal vibration along the waveguide.

(A2028/11:8-26; A2165 ¶106.)

- 16 -

The Sonicision is also designed to avoid unwanted transverse vibrations in

the first place. (A3552 ¶¶51-52; A2173-74.) It is undisputed that transverse

vibrations result from asymmetry within the device. (A3552-53 ¶53; A2053 ¶43.)

Accordingly, the Sonicision’s waveguide and blade are designed to be straight and

symmetrical, thereby avoiding these vibrations. (A2173-74; A2053 ¶43.) The

Sonicision is further designed to resonate only at its longitudinal mode, which also

avoids unwanted transverse vibrations. (A2174.)

Because the Sonicision’s waveguide does not experience unwanted

transverse vibrations, the Sonicision sleeve does not serve any dampening purpose.

In fact, Covidien’s internal design documents identify dampening the waveguide as

a “failure mode” of the sleeve component. (A3553-54 ¶¶54-56; A2177-78;

A2196.) Rather than perform any dampening function, Sonicision’s sleeve is

designed to prevent a “squealing” sound that occurs when a waveguide’s nodal ribs

incidentally contact the surrounding metal inner tube during longitudinal

vibrations. (A2196; A2172.)

Finally, as shown below and in Section VI.D.2, the Sonicision device is

designed very differently from Ethicon’s claimed designs. (A136-143.) For

example, unlike the football-shaped rounded activation button claimed in Figure 2,

the Sonicision device has an activation button that is rectangular in shape and flat

across the front and sides. The ’804 patent’s torque knob is flat across the front

- 17 -

with circular recesses, in contrast to the round, solid front of the Sonicision knob.

The proximal and distal portions of the Sonicision’s trigger are parallel to each

other, as opposed to the ’804 patent’s trigger, where the proximal portion curves

toward the device while the distal portion curves away from it. These and many

other dissimilarities are discussed in detail in Section VI.D.2.

IV. SUMMARY OF THE ARGUMENT

The district court correctly granted summary judgment. The law and

undisputed material facts defeat Ethicon’s challenges to the judgment on appeal.

First, the district court correctly ruled that the asserted claims of the ’501

patent are invalid as indefinite. The claims recite certain value ranges for

“clamping force” and “clamping pressure,” but the patent nowhere describes what

method is used to measure whether an accused device meets those limitations. Nor

was it publicly known in the art which method should be used. The undisputed

- 18 -

evidence showed that Ethicon used at least four different methods for measuring

clamping force and pressure, and each of these methods yielded significantly

different results. The patent does not disclose which, if any, of these measurement

methods should be employed.

The conclusory testimony of Ethicon’s expert, who plucked a method out of

thin air unanchored from the patent’s disclosure, cannot create a genuine issue of

disputed fact. And even his preferred method leaves unanswered critical questions

about the scope of the claims. As a result, the ’501 patent fails to serve the most

basic notice function of patents. A skilled artisan has no way to discern the

boundaries of the claims, and a competitor has no way of evaluating whether a

product meets those claim limitations. Accordingly, the district court correctly

ruled the asserted claims invalid on summary judgment.

Second, the district court correctly granted summary judgment of

noninfringement on the ’275 patent. On claim construction, the district court

correctly rejected Ethicon’s attempt to divorce the claim language from its context

and the specification. The district court then correctly ruled that no reasonable

fact-finder could find the accused Sonicision device practiced either of two

independent claim elements, much less both of them. Summary judgment was

therefore appropriate.

- 19 -

Third, the district court correctly granted summary judgment of invalidity of

the Design Patents. Ethicon’s own testimony and documents showed, as a matter

of law, that the claimed design is dictated by function, and thus is primarily

functional rather than primarily ornamental. Under this Court’s precedent, the

Design Patents are therefore invalid.

Fourth, the district court correctly granted summary judgment of

noninfringement of the Design Patents. Whether the functional elements are

disregarded or considered – the district court performed both analyses – the

claimed and accused designs are so plainly dissimilar that summary judgment was

warranted under this Court’s precedent. Moreover, the correct outcome is the

same regardless of whether the prior art is considered for context.

The judgment thus should be affirmed in its entirety.

V. STANDARD OF REVIEW

This Court reviews the district court’s grant of summary judgment de novo.

MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1330-31 (Fed. Cir.

2014) (citing Braun v. Ann Arbor Charter Twp., 519 F.3d 564, 569 (6th Cir.

2008)). Summary judgment is appropriate when “there is no genuine dispute as to

any material fact and the movant is entitled to judgment as a matter of law.” Fed.

R. Civ. P. 56. Factual issues must be “genuine” to make summary judgment

inappropriate. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A

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genuine issue exists only “if the evidence is such that a reasonable jury could

return a verdict for the non-moving party.” Wavetronix LLC v. EIS Elec.

Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009) (citing Anderson, 477 U.S.

at 248). Thus, “the mere existence of some alleged factual dispute between the

parties will not defeat an otherwise properly supported motion for summary

judgment.” Anderson, 477 U.S. at 247-48. “Evidence that is ‘merely colorable,’

or is ‘not significantly probative,’ will not prevent summary judgment.” Invitrogen

Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1076 (Fed. Cir. 2005) (quoting

Anderson, 477 U.S. at 249-50).2

Claim construction is an issue of law reviewed de novo. See Lighting

Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 744 F.3d 1272, 1276-77 (Fed.

Cir. 2014) (en banc).3

2 Ethicon criticizes the district court for incorporating portions of Covidien’s summary judgment briefs into its opinions. However, “[t]his [C]ourt reviews judgments, not opinions.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556 (Fed. Cir. 1985). There is no indication that the court failed to consider Ethicon’s evidence, and it ruled in Ethicon’s favor on several issues. (A110; A120-26; A6068; A6081-94.) 3 On October 15, 2014, the U.S. Supreme Court heard argument in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854, which addresses the standard of review for claim construction and considers deference to the district court. The district court’s claim construction passes muster whether reviewed de novo or deferentially.

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VI. ARGUMENT

A. The District Court Correctly Granted Summary Judgment of Invalidity Based on Indefiniteness of the ’501 Patent

The district court correctly ruled that all asserted claims of the ’501 patent

are invalid as indefinite as a matter of law. In its ruling, the court imposed on

Covidien the heavy burden of showing that the claims are “insolubly ambiguous”

and correctly determined that Covidien had met that burden on summary judgment.

(A108.) This conclusion is rooted in undisputed facts relating to the patent’s

disclosures (and lack thereof). Ethicon’s unsubstantiated expert testimony cannot

alter those facts. In short, the claims are indefinite because they require certain

ranges of “clamping force” or “clamping pressure” with no accompanying

disclosure of what measurement method is used to define the claim scope. (A99-

108.) And the undisputed facts show that the choice of a measurement method is

crucial because different methods – none of which is even disclosed in the patent –

yield different results.

Several months after the district court’s ruling, the Supreme Court issued its

Nautilus decision rejecting the more stringent “insolubly ambiguous” standard and

entrenching the more challenger-friendly “reasonable certainty” standard. See

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (holding

that claims are indefinite when “the patent, and the prosecution history, fail to

inform, with reasonable certainty, those skilled in the art about the scope of the

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invention”). Accordingly, the district court’s decision is even more clearly correct

today than it was at the time.

1. The Patent Does Not Disclose the Use of Any Method of Measuring Clamping Force and Pressure that Would Inform a Skilled Artisan of the Boundaries of the Claims

It is undisputed that different methods of measuring clamping force and

pressure yield widely divergent results. Ethicon’s own witnesses and documents

showed that when different methods of measuring clamping force and pressure

were applied to the same device, they produced significantly different results. For

example, ’501 patent co-inventor Noschang testified that Ethicon used four

different methods for measuring clamping force and pressure and that each of these

methods gave different results. (A4279-81 ¶¶50-54; A2677; A2680; A2685-87;

A2689-91; A4291-92 ¶80; A2710-13.) These methods differed in several respects.

They differed as to where along the length of the clamping jaw the measurements

were taken. (A4280-81 ¶53; A2689-90; A4287-88 ¶73; A2724; A2736.) They

would also differ dependent on the spacing of the clamp and blade (A4280-81

¶53; A2689-90; A2710-13; A4292-93 ¶¶81-82; A2682-83) and the material that

was placed in the clamping jaw (A2701). It is also undisputed that none of these

four Ethicon-proprietary methods was disclosed in the patent or represented a

known industry standard. (A100-01; A4282 ¶57; A2682-87; A2692; A4294-95

¶88; A2519-41; A2522.)

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In fact, the patent did not specify any method for measuring clamping force

and clamping pressure to achieve the claimed ranges. Ethicon’s expert admitted

that “the only way to generate force and pressure data that can be directly

compared with the limits proscribed [sic] in the ’501 patent is to conduct the

measurements in the same manner as described in the patent.” (A4281 ¶55; A2706

¶158.) But the patent does not disclose, for example, where along the jaw the

clamping force and pressure should be measured. Nor does the patent state what

thickness and type of tissue should be used for the measurements. Ethicon

presented no evidence of an industry standard for measuring clamping force and

pressure, and its witnesses admitted that none existed. (See A2677; A2682-87;

A2522; A100-01.) Nor can Ethicon’s reference to a “fully engaged” clamping

surface (EB9) provide the necessary guidance. Ethicon’s expert testified that even

when the entire clamping surface is in contact with tissue, that tissue can be thick,

thin, stiff or compressible, and the clamping force and pressure measurements will

differ depending on these variables. (A2699-701; A4295-96 ¶¶89-92; A2524-27.)

The ’501 patent thus fails to give a skilled artisan the necessary guidance to

ascertain the scope of the claims and determine whether a surgical instrument falls

within them.

This case is very similar to Honeywell, where different testing conditions of

yarn did “not produce identical or even essentially identical results” and thus the

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claimed melting point ranges were ruled indefinite. See Honeywell Int’l. Inc. v.

Int’l Trade Comm’n, 341 F.3d 1332, 1341 (Fed. Cir. 2003). As in Honeywell, the

results of any attempt to measure clamping pressure “necessarily fall within or

outside the claim scope depending on the [measurement] method chosen,” and the

patent does not teach the use of any particular method. Id. Hence, “[c]ompetitors

trying to practice the invention or to design around it would be unable to discern

the bounds of the invention.” Id. at 1341.

Like Honeywell, it is undisputed that different measurement methods yield

different results, and the choice of a particular method is crucial to deciding

infringement. At summary judgment, Ethicon asserted that infringement could be

determined for a device only “when measured under the same conditions and in the

same way from test to test.” (A4248; A4281 ¶55; A2607.) Yet as explained

above, the ’501 patent does not define these conditions.

The cases on which Ethicon relies are readily distinguished. The asserted

patent in Wellman relied on an industry standard to provide the method of

measurement. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed.

Cir. 2011). Here, by contrast, Ethicon admitted no such standard existed in the art

for the ’501 patent’s measurements. (A2677; A2682-87; A2522; A100-01.) And

in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., the Court relied on “a well-

defined standard as disclosed by the asserted patents” that was “tied to highly

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specific measurements of four very specific chemical compounds” in finding the

claims definite. 537 F.3d 1357, 1372 (Fed. Cir. 2008). Here, by contrast, the ’501

patent does not provide a “well-defined standard” or “highly specific

measurement.” The ’501 patent instead discloses nothing that would enable a

skilled artisan to discern the boundaries of the claims.

2. Ethicon’s Conclusory and Unsubstantiated Expert Testimony Does Not Create a Disputed Issue of Material Fact

Ethicon’s reliance on unsupported expert opinions cannot create a genuine

issue of material fact to preclude summary judgment. See Invitrogen Corp. v.

Clontech Labs., Inc., 429 F.3d 1052, 1081, (Fed. Cir. 2005) (“A party does not

manufacture more than a merely colorable dispute simply by submitting an expert

declaration asserting that something is black when the moving party’s expert says

it is white; there must be some foundation or basis for the opinion.”); Krippelz v.

Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012) (“conclusory testimony of

an expert witness, however, cannot create an issue of fact if none otherwise

exists”). Specifically, Ethicon argues that the specification’s general references to

“average” pressure and “closed position” provide enough guidance to answer the

questions surrounding the choice of a particular measurement method to define the

scope of the claims. But the patent simply provides no adequate disclosure to

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inform a skilled artisan of the claim boundaries, and Ethicon’s conclusory expert

testimony cannot make something out of nothing.

a. Ethicon’s Expert’s Assertions About “Average” Pressure Do Not Give a Skilled Artisan Reasonable Certainty About the Claim Scope

For the majority of the claims at issue, Ethicon’s arguments based on

“average” are irrelevant. Only 5 of the 17 asserted claims refer to an “average”

clamping force or clamping pressure (claims 1, 2, 13, 17, and 18); the other 12

asserted claims do not include this term. Ethicon provides no basis for injecting

the concept of “average” into the claims that do not recite this term. See

Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir.

2001) (“In construing claims, the analytical focus must begin and remain centered

on the language of the claims themselves, ….”). At claim construction, Ethicon

distinguished the claims that contained “average” clamping pressures and forces

from those that did not, and urged the inclusion of “average” only in the former set.

(A21.) The district court adopted Ethicon’s constructions (A24) and Ethicon

cannot challenge them now.

For claims that do recite “average,” Ethicon does not point to anything in the

patent that indicates how or where this average is to be measured to produce

reasonable certainty about the claim scope. Ethicon contends that measuring at the

midpoint of the clamp provides an average. But no evidence supports this

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argument. Rather, Ethicon offers only the conclusory assertion of its expert, Dr.

Schafer. (EB24-26.) That is not enough to avoid summary judgment. See

Invitrogen, 429 F.3d at 1080-81 (no dispute of fact created where expert failed to

cite a factual basis for his opinion); Krippelz, 667 F.3d at 1269.

It is undisputed that the ’501 patent does not even refer to the midpoint of

the clamp or state that measuring at the clamp’s midpoint provides an average

clamping force or pressure. (A2552; A2692.) It is also undisputed that no industry

standard existed for measuring at the midpoint. (A2677; A2682-87; A2522; A100-

01.) Dr. Schafer’s conclusory assertions equating measuring at the midpoint with

determining average clamping force cannot overcome these undisputed facts.

Worse than just conclusory, Dr. Schafer also admitted his assertion was

wrong. Dr. Schafer testified in his deposition that this paragraph of his report was

factually incorrect and the midpoint measurement was not equivalent to the

average clamping force. (A5973.)

Ethicon’s only other argument importing a midpoint measurement into the

patent relies on U.S. Patent No. 5,947,984 (“the ’984 patent”). But the ’984 patent

is not related to the ’501 patent, nor is it cited anywhere in the ’501 patent or its

prosecution history. Further, Ethicon’s expert admitted that the ’984 patent never

defines measuring at the midpoint as providing the average clamping force or

pressure. (A5972.) Moreover, Ethicon identified no evidence that one of ordinary

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skill in the art would rely on the ’984 patent for a measuring method, rather than

any of the other methods available in the art. Interval Licensing LLC v. AOL, Inc.,

766 F.3d 1364, 1370 (Fed. Cir. 2014) (“Although absolute or mathematical

precision is not required, it is not enough, as some of the language in our prior

cases may have suggested, to identify some standard for measuring the scope of

the phrase.”).

In sum, Ethicon’s “average”/“midpoint” arguments were based solely on

unsupported expert opinion. This is insufficient to create a dispute of material fact

and avoid summary judgment. See McLean v. 988011 Ontario, Ltd., 224 F.3d 797,

800-01 (6th Cir. 2000) (“[A]n expert’s opinion must be supported by ‘more than

subjective belief and unsupported speculation’ and should be supported by ‘good

grounds,’ based on what is known.” (citations omitted)); see also Invitrogen, 429

F.3d at 1080-81; Krippelz, 667 F.3d at 1269.

b. Ethicon’s Expert’s Assertions About “Closed Position” Also Do Not Give a Skilled Artisan Reasonable Certainty About the Claim Scope.

Ethicon’s reliance on “closed position” for providing the “where” and “how”

to measure clamping force and pressure is similarly flawed. The ’501 patent does

not refer to clamping force or clamping pressure as being measured with the clamp

in a closed position against the blade. The only reference in the patent to “closed

position” refers to the clamping surface area, not to clamping force or pressure.

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(A2515/4:27-29.) Moreover, even if the “closed position” was referenced in

relation to clamping force or pressure, this would still leave unanswered many

methodological questions that are critical to determining the claim scope and

whether an accused instrument falls within it. These questions include: (1) how

much tissue separates the clamp and blade; (2) what type of tissue separates the

clamp and blade; and (3) the compressibility of the tissue that separates the clamp

and blade. Ethicon’s fact witnesses and its expert admitted that the amount and

characteristics of the tissue placed in the jaw alter the clamping force and pressure

measurements. (A4289 ¶¶77-78; A2699-701.) The patent does not provide any

guidance as to the thickness, type, and compressibility of the tissue to be used for

this measurement. Accordingly, as with Ethicon’s “average”/“midpoint”

arguments, the district court correctly ruled that Ethicon’s “closed position”

arguments do not overcome the indefiniteness of the claimed clamping force and

pressure ranges.

In sum, the undisputed factual record established the high level of

uncertainty surrounding the claimed clamping force and pressure ranges. In the

face of this record, Ethicon’s conclusory and unsupported expert testimony did not

create a material factual dispute. The district court therefore properly granted

summary judgment of indefiniteness.

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B. The District Court Correctly Granted Summary Judgment of Noninfringement of the ’275 Patent

The district court properly concluded that the undisputed material facts

warranted summary judgment of noninfringement of the ’275 patent. Two

independent grounds support this conclusion.

First, undisputed facts warrant summary judgment for Covidien on the term

“configured to loosely contact.” The district court correctly construed this term to

mean: “structured to have contact other than at fixed support points, but not tightly

fitted.” (A14-15.) Under this construction, the uncontroverted documents and

witness testimony demonstrate that the sleeve component in the accused Sonision

device is not configured to loosely contact the transmission rod. Ethicon’s

conclusory expert testimony cannot overcome these undisputed facts.

Second, the undisputed facts warrant summary judgment for Covidien on the

term “adapted to absorb undesired vibrations.” There was no claim construction

dispute on this term, and there was no evidence that could support a finding that

the Sonicision meets this limitation.

1. The Sonicision Sleeve Does Not Practice the “Configured to Loosely Contact” Claim Limitation

a. The District Court Correctly Construed the “Configured to Loosely Contact” Claim Term

In correctly construing the “configured to loosely contact” claim term, the

district court complied with its obligation to “read the claims ‘in view of the

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specification, of which they are a part.’” Am. Calcar, Inc. v. Am. Honda Motor

Co., Inc., 651 F.3d 1318, 1336 (Fed. Cir. 2011) (quoting Phillips v. AWH Corp.,

415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)). “[T]he specification is always

highly relevant to the claim construction analysis. Usually, it is dispositive; it is

the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at

1315 (quotations omitted). While “care should be taken not to read limitations

from the specification into the claims,” Walker Digital, LLC v. Microsoft Corp.,

484 F. App’x 496, 497 (Fed. Cir. 2012), “the claims cannot ‘enlarge what is

patented beyond what the inventor has described as the invention.’” Abbott Labs.

v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (quoting Biogen, Inc. v.

Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003)). Accordingly, courts

“may reach a narrower construction, limited to the embodiment(s) disclosed in the

specification, when the claims themselves, the specification, or the prosecution

history clearly indicate that the invention encompasses no more than that confined

structure or method.” Id. at 1288.

Claim 1 recites an ultrasonic surgical device comprising, among other

things, a “damping member configured to loosely contact the transmission rod over

a portion of the transmission rod.” (A2030-31/Claim 1.) The district court

construed this term to mean “structured to have contact other than at fixed support

points, but not tightly fitted.” Reading the claim term in isolation, Ethicon

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contends that the loose contact between the damping sheath and transmission rod

can occur anywhere along the transmission rod. This is the only aspect of the

district court’s construction that Ethicon challenges on appeal. (EB30-32.)

The specification, however, does not support Ethicon’s expansive reading of

claim 1. Instead, the specification makes clear that the requisite loose contact

occurs along the transmission rod at locations other than where the damping sheath

is physically attached or supported on the transmission rod. (A2027/9:33-45,

10:50-55; A2028/11:8-26, 45-59.) The written description clarifies that the

damping member is physically attached to the transmission rod at fixed locations,

preferrably nodal points of longitudinal vibration (i.e., “nodes”). (A2027/9:33-42.)

The ’275 patent defines a “node” as “[a] minimum or zero crossing in the vibratory

motion standing wave,” “where axial motion is usually minimal and radial motion

is usually small.” (A20025/5:57-60.) The ’275 patent describes nodes as the

preferred location to physically support the damping sheath on the transmission

rod: “The damping sheath 160 is only attached to the transmission rod at the nodal

points thereby preventing the sheath from otherwise adhering to the outer surface

of the transmission rod 86.” (A2027/9:42-45.) The specification also describes the

claimed damping sheath as attached to the transmission rod at fixed locations, via

“compliant members” preferrably placed at or near longitudinal nodes.

(A2028/11:8-25; A2020/Fig. 6.)

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(A2020/Fig. 6 (coloring and labeling added).)

The ’275 patent specification makes clear that the physical attachment or

coupling of the damping sheath to the transmission rod (which occurs at fixed

locations along the transmission rod) is distinct from the loose contact recited in

claim 1 (which occurs “over a portion of the transmission rod” for the purpose of

dampening unwanted transverse vibrations):

damping sheath 160 of the surgical instrument 150 loosely surrounds at least a portion of the transmission rod 86. The damping sheath 160 may be positioned around the transmission rod 86 to dampen or limit transverse side-to-side vibration of the transmission rod 86 during operation. The damping sheath 160 preferably surrounds part of the third section 86c of the transmission rod 86 and is coupled or attached to the transmission rod 86 near one or more nodes.

(A2027/9:33-42 (emphasis added); see also A2028/11:45-59 (“Referring now to

FIG. 7, . . . Each sleeve of the damping sheath 260 is captured longitudinally

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between the compliant members 280 so that the damping sheath 260 is maintained

loosely in place around the transmission rod 286.”).)

Thus, the ’275 patent’s written description and disclosed embodiments

consistently teach that: (1) the claimed damping member must be physically

supported on the transmission rod at fixed locations; and (2) such physical

attachment of the damping member to the transmission rod is distinct from the

loose contact “over a portion of the transmission rod” that claim 1 requires. The

district court was obligated to construe the claim term in light of this disclosure.

See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,

1341 (Fed. Cir. 2001) (“Where the specification makes clear that the invention

does not include a particular feature, that feature is deemed to be outside the reach

of the claims of the patent, even though the language of the claims, read without

reference to the specification, might be considered broad enough to encompass the

feature in question.”). Accordingly, the district court correctly construed

“configured to loosely contact” to mean “structured to have contact other than at

fixed support points, but not tightly fitted.” (A14-15.)

In contrast, Ethicon’s proposed construction below – “contacting or capable

of contacting portions of the transmission rod, but not tightly fitted” – is

inconsistent with the intrinsic evidence discussed above. Ethicon’s construction

improperly fails to distinguish the loose contact of claim 1 from the physical

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attachment of the damping sheath to the transmission rod at fixed locations. In

addition, Ethicon’s focus on the distinction between the claimed “loose contact”

and the prior art’s use of silicon O-rings at nodes of the transmission rod is

misguided. (EB31.) This argument overlooks that the specification itself

distinguishes between the claimed “loose contact” and the damping sheath’s

physical attachment at the nodes. (A2027/9:38-41.) Finally, even if Ethicon were

right in contending that the recited “loose contact” can be at the fixed support

points (EB32), it has provided no evidence that the Sonicision device “loosely”

contacts the waveguide at these fixed support points.

Although Ethicon does not challenge the “structured to have contact” aspect

of the district court’s construction on appeal, Ethicon’s proposed construction

below also was overly broad because it would encompass structures where the

damping sheath need only be “capable of” loosely contacting the transmission rod.

The claim language itself defeats Ethicon’s construction: the damping sheath must

be “configured to loosely contact” the transmission rod, and not merely be capable

of loosely contacting it. In addition, the specification only discloses embodiments

of claim 1 that require actual loose contact. (See, e.g., A2027/9:34-36 (“the

damping sheath 160 of the surgical instrument 150 loosely surrounds at least a

portion of the transmission rod 86”), 10:50-55 (“The slit 164 of the damping sheath

160 allows the damping sheath 160 to be assembled over the transmission rod 86

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from either end. Without the slit 164, the sheath may not fit over the larger cross-

sectional diameters of the transmission rod 86 and the damping sheath 160 may not

be able to loosely contact the transmission rod 86.”); A2028/11:53-55 (“Each

sleeve of the damping sheath 260 is captured longitudinally between the compliant

members 280 so that the damping sheath 260 is maintained loosely in place around

the transmission rod 286.”).) The district court’s construction of “configured to

loosely contact” was therefore correct in its entirety.

b. The Sonicision Sleeve is Not “Configured to Loosely Contact” the Transmission Rod Other Than at Fixed Support Points

(1) There is No Evidence that the Sleeve is “Configured to” Contact Portions of the Waveguide Besides the Nodal Ribs

Applying the district court’s correct claim construction, there is no

infringement as a matter of law because there is no evidence that the Sonicision

sleeve is “structured to” loosely contact the waveguide at points other than the

nodal ribs.4 Indeed, Ethicon’s expert opined that contact between the sleeve and

waveguide’s nodal ribs is irrelevant to the infringement analysis because the nodal

ribs serve as fixed support points for the sleeve. (A3546 ¶30; A2045-46 (“[I]t was

not my point to show contact at the rib. That’s not what the patent requires in

terms of lose [sic] contact. It has to have contact other than fixed locations.”).) It

4 Nor has Ethicon provided any evidence of “loose contact” at the nodal ribs.

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is undisputed that the Sonicision is structured to have a clearance between the

sleeve and waveguide. (A2061 ¶60; A3676-82.) There is also no dispute that the

nodal ribs, which physically support the sleeve, have an increased diameter in

comparison to the rest of the waveguide. (A2061 ¶60; A3676-78.) Accordingly,

the clearance between the sleeve and waveguide is greatest at portions of the

waveguide between the nodal ribs. (A2061 ¶60.) Covidien’s internal documents

and the testimony of its engineers show that, as a result of this design, the

Sonisicion sleeve is structured to avoid contacting portions of the waveguide other

than the nodal ribs. (A2177; A2196; A2070-72; A2172.) Ethicon failed to raise a

genuine dispute on this critical issue.

Covidien’s research and development documents reveal that the sleeve and

waveguide are specifically designed to avoid contact other than at the nodal ribs

because such contact could result in the sleeve dampening desired, longitudinal

vibrations. (A3553-52 ¶¶54-55; A2177; A2196.) If the sleeve were structured to

contact portions of the waveguide other than these points, the sleeve would

unnecessarily absorb longitudinal vibrations along the waveguide that are essential

to the effective operation of the device. (A2196; A2172; A2028/11:8-26.) Indeed,

dampening the waveguide is identified as a “failure mode” of the sleeve

component. (A2196.) Covidien’s internal design documents and the testimony of

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its engineer, Robert Stoddard, further confirm that the Sonicision is constructed so

that the sleeve contacts only the nodal ribs on the waveguide. (A2196; A2172.)

Ethicon misses the point in contending that design considerations with

respect to the sleeve’s contact points are irrelevant because intent is not an element

of direct infringement. The claim language itself requires the damping sheath’s

design to have a particular purpose and function. See Typhoon Touch Techs., Inc.

v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011) (“No error of law or fact has

been shown in the district court’s construction of the ‘memory for storing’ term as

requiring that the memory function is present in the device in that the device is

structured to store at least one data collection application.”). The issue is thus

whether the accused devices were in fact “configured” to loosely contact the

transmission rods at points other than the nodal ribs. Even if some evidence were

to suggest that the Sonicision sleeve is capable of contacting or incidentally

contacts the waveguide other than at fixed support points, Ethicon failed to raise

any genuine issue of fact as to whether it is actually “configured to” do so.

(2) The Record Shows No Contact Between the Sonicision Sleeve and the Waveguide at Any Location Between the Nodal Ribs

The undisputed evidence that the sleeve and waveguide are structured to

avoid contact between the nodal ribs is enough to support the summary judgment

of noninfringement. Ethicon failed to offer evidence—as opposed to attorney

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argument and conclusory expert opinion—that could show the claimed “loose

contact” between the sleeve and portions of the waveguide between the nodal ribs.

(A3555-59 ¶¶60-65.)

Ethicon’s expert, Dr. Schafer, asserted that CT scan images offered with his

expert report show contact between the sleeve and waveguide at locations other

than the nodal ribs. (A3617-18.) Dr. Schafer’s CT scans are the only purported

evidence of alleged contact between the sleeve and waveguide at these required

locations. But these images are insufficient to raise a genuine dispute that would

preclude summary judgment. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d

1052, 1076 (Fed. Cir. 2005) (“Evidence that is ‘merely colorable,’ or is ‘not

significantly probative,’ will not prevent summary judgment.” (quoting Anderson,

477 U.S. at 249-50)). At best for Ethicon, these images confirm that there is

contact between the sleeve and waveguide at the raised nodal ribs (which is

undisputed). At locations other than the nodal ribs, however, these images show an

air gap between the sleeve and waveguide. (A3617-18; A2165-66 ¶107.)

Covidien’s expert, Dr. Durfee, performed similar CT scans of the device, which

confirm that the nodal ribs are the only portions of the Sonicision waveguide that

the sleeve contacts. (A2166-67.)

While Ethicon makes much of Covidien’s expert’s recognition that one of

Dr. Schafer’s CT scans may reflect contact of the sleeve and waveguide between

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the nodal ribs, any contact was due to a nonconforming “wrinkle” in the sleeve

component of that particular instrument. (A2165-66 ¶107.) It is undisputed that

the Soncision’s design specifications require a reduced diameter in the waveguide

and that this results in an increased clearance between the sleeve and waveguide

between the nodal ribs. (A2061 ¶60; A3676-82.) This clearance avoids contact

between the sleeve and waveguide at locations between the nodal ribs, and any

instrument demonstrating otherwise does not conform to device requirements.

Considering Ethicon’s ultimate burden to prove infringement at trial, no reasonable

fact-finder could conclude from this single image of an apparently nonconforming

device that the sleeve is structured to “loosely contact” portions of the waveguide

between the nodal ribs. See Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir.

2001) (“An infringement issue is properly decided upon summary judgment when

no reasonable jury could find that every limitation recited in the properly construed

claim either is or is not found in the accused device.”).

2. The Sonicision Sleeve Is Not “Adapted to Absorb Undesired Vibrations”

Summary judgment was also appropriate for the additional and independent

reason that there is no evidence that the sleeve is “adapted to absorb undesired

vibrations along the transmission rod.” In fact, because there is no proof that the

undesired vibrations of claim 1 even exist in the Sonicision device, there can be no

finding that the sleeve is “adapted to absorb” them.

- 41 -

a. There is No Evidence that the Sonicision Experiences Undesired Transverse Vibration

Despite bearing the ultimate burden, Ethicon did not offer any evidence that

the Sonicision device experiences the type of “undesired vibrations” described in

the patent or identify where such vibrations might occur along its waveguide.

(A2023/2:30-35; A2027/9:34:38; A3551 ¶49; A2044; A3555-59 ¶¶60-65.) The

’275 patent makes clear that the undesired vibrations of claim 1 are “unwanted

transverse vibrations,” rather than any form of desired longitudinal vibration.

(A2023/1:20-25; A2027/9:33-39, 60-62, 10:9-13; A3458 ¶36.) Likewise,

Ethicon’s expert characterized transverse vibrations as non-longitudinal and

“undesirable in ultrasonic cutting systems.” (A3547 ¶33-35; A2053 ¶43.) Yet

Ethicon failed to offer any proof that transverse vibrations occur in the Sonicision

device. (A2044.) The record actually reveals that, by design, the Soncision device

avoids such transverse vibrations altogether. (A2173-74.)

It is not Covidien’s burden to prove the absence of transverse vibrations.

Nevertheless, Covidien performed water and glycerin droplet tests in an effort to

detect the existence of transverse vibrations along the Sonicision waveguide

between the nodal ribs. (A3552 ¶50; A2167-68.) These tests demonstrated the

lack of transverse vibrations, because the water and glycerin droplets did not

splatter when coming into contact with the vibrating waveguide. (A2167-68.)

- 42 -

In response to Covidien’s testing evidence, Ethicon cites to one video that

purportedly shows “test fluid splattering off of the transmission rod.” (EB38.) But

this video does not depict a commercial Sonicision device. Instead, it shows

testing on an instrument that lacks a key internal support component, the distal O-

ring seal. (A2168 ¶118; A2071-72.) This distal O-ring secures the waveguide in

place within the inner and outer tubes. (A2168 ¶117-18; A2071-72.) All sold

instruments have this O-ring in place, with the waveguide housed within the inner

and outer tubes. (A2071-72.) Demonstration of undesired vibrations in an

instrument that lacks essential support mechanisms, rather than a fully-assembled

commercial device, cannot be considered evidence of transverse vibrations in

Sonicision devices that Covidien markets. Indeed, all other droplet tests Covidien

performed on a Sonicision device with the distal seal demonstrate a lack of

transverse vibration (A2167-68), and neither Ethicon nor Dr. Schafer pointed to a

single commercial Sonicision instrument that demonstrates transverse vibrations.

Moreover, Ethicon failed to provide any testing or experiments of its own to

show the existence of transverse vibrations in the Sonicision device, even though

Dr. Schafer admitted he had the experience, wherewithal, and means to do so.

(A3550-51 ¶¶46-49; A2035-38; A2044.) Dr. Schafer testified that he had

experience with measuring transverse ultrasonic vibrations (A2035-36) and that he

was familiar with multiple methods of measuring them in ultrasonic surgical

- 43 -

instruments (A2036-37). He further admitted that he had access to the necessary

equipment in his laboratory. (A2038.) Yet, throughout discovery, Dr. Schafer

never tested a Sonicision device for the presence of transverse vibrations. (A2044.)

According to Dr. Schafer, he “did not feel that [he] needed to” test for the

appearance of any transverse vibrations, because claim 1 “doesn’t require that

there be transverse motion of the transmission rod.” (A2044.) His assertion that

the Sonicision experiences undesired vibrations is thus unsupported by any

underlying testing or experimentation. (A2063-64 ¶¶69-70.)

Further, Dr. Schafer’s mere statement, after his deposition, that alleged

droplet tests he conducted show transverse vibrations fails to raise a genuine issue

of material fact. See Dynacore Holdings Corp. v. U.S. Phillips Corp., 363 F.3d

1263, 1278 (Fed. Cir. 2004) (“It is well settled that an expert’s unsupported

conclusion on the ultimate issue of infringement is insufficient to raise a genuine

issue of material fact, and that a party may not avoid that rule simply by framing

the expert’s conclusion as an assertion that a particular critical claim limitation is

found in the accused device.”); see also Moore U.S.A., Inc. v. Standard Register

Co., 229 F.3d 1091, 1112 (Fed. Cir. 2000) (“A party may not overcome a grant of

summary judgment by merely offering conclusory statements.”). Not only were

these purported tests identified for the first time after the close of discovery, Dr.

- 44 -

Schafer also never provided any evidence or data to corroborate such testing.

(A3683; A3688-89 ¶17.)

Additional undisputed facts reveal that the Sonicision is designed to avoid

generating any transverse vibrations. Ethicon concedes that asymmetry results in

the occurrence of transverse vibrations. (A2053 ¶43). However, the Sonicision

waveguide and blade are designed to be symmetrical, thereby avoiding unwanted

transverse vibration. (A3552 ¶¶51-52; A2173-74.) In addition, the Sonicision is

designed electrically to resonate only at its longitudinal mode, which also avoids

unwanted transverse vibrations. (A2173-74.) Covidien’s engineer, Robert

Stoddard, testified that the Sonicision does not experience any problems with

transverse vibrations due to its design. (A2173-74.)

Ethicon also contends that because the Sonicision sleeve is positioned to

avoid metal-to-metal contact between the waveguide and surrounding inner tube,

the Sonicision sleeve is “adapted to absorb undesired vibrations.” (EB36-37.)

There is no dispute that the sleeve is supported by the waveguide’s nodal ribs to

prevent a “squealing” noise that results from metal-to-metal contact between the

waveguide and its surrounding inner tube. (A2196; A2172.) However, Ethicon

and its expert assume, without any factual support, that such contact is the result of

the undesired (i.e., transverse) vibrations disclosed in the patent (EB36-37), rather

than the desired longitudinal vibrations that indisputably cause axial (back-and-

- 45 -

forth) motion of the waveguide. This assumption is insufficient to overcome

summary judgment.

In fact, Covidien’s engineer, Mr. Stoddard, testified that potential metal-to-

metal contact between the waveguide’s nodal ribs and the inner tube is caused by

desired longitudinal vibration (which the claimed damping member is not

supposed to absorb). (A2172; A2023/1:53-55, 2:1-7; A2027/10:7-13; A2309.)

Notwithstanding its ultimate burden, Ethicon offered no factual support to the

contrary. Dr. Schafer’s unsupported and conclusory assertion that potential metal-

to-metal contact is caused by the waveguide vibrating “in an undesired way”

(EB37) is insufficient to raise a genuine factual dispute. See Dynacore, 363 F.3d at

1278.

Finally, the portion of Mr. Stoddard’s testimony that Ethicon cites does not

support its contention that the sleeve is adapted to absorb undesired vibrations.

(EB38.) Mr. Stoddard testified that the purpose of the sleeve is to prevent contact

between the nodal ribs and the inner tube. (A2172.) The nodal ribs are raised in

order to maintain concentricity in the device and ensure that if contact occurs

between the waveguide and inner tube, that such contact occurs at nodal points

where longitudinal vibration in minimal. Mr. Stoddard explained that the sleeve

“would prevent loss of energy if the nodal rib came in contact with the inner tube.”

(A2172.) Mr. Stoddard’s testimony thus reveals that the sleeve avoids the loss of

- 46 -

desired longitudinal vibration, and has nothing to do with dampening of undesired

transverse vibrations.

Because the Sonicision does not experience problems with “unwanted

transverse vibrations,” contact between the sleeve and waveguide would not result

in the absorption of undesired vibrations, as required by claim 1. Rather, such

contact could have the adverse effect of absorbing desired, longitudinal vibrations

essential to the proper functioning of the device. That is why dampening the

waveguide is identified as a “failure mode” of the sleeve component. (A2196.)

b. Even if Unwanted Transverse Vibrations May Occur, the Sonicision Sleeve is Not “Adapted to” Absorb Them

In any event, the Sonicision’s sleeve is not “adapted to absorb undesired

vibrations.” This Court has construed “adapted to” to mean “designed to” or

“configured to” – rather than “merely capable of” – when, as here, the patent

claims and specification describe a particular objective to be accomplished. See

Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.

2012) (“Amended claim 23 refers to the arms and magnetic members as ‘adapted

to extend across respective side portions’ of a primary frame. In that context, the

phrase ‘adapted to’ is most naturally understood to mean that the arms and

magnetic members are designed or configured to accomplish the specified

objective, not simply that they can be made to serve that purpose.”).

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Here, the ’275 patent’s asserted claims and specification describe a

particular objective that the claimed damping sheath is designed to accomplish:

absorbing undesired vibrations. (A3548-50 ¶¶40-45.) As such, the Sonicision

sleeve must be designed or configured to absorb undesired vibrations in order to

meet this claim element. See Aspex Eyewear, 672 F.3d at 1349. But there is no

evidence to suggest that the sleeve is designed or configured to absorb undesired

vibrations. The Sonicision sleeve is instead designed to avoid metal-to-metal

contact between the waveguide and inner tube and specifically dimensioned to

avoid contact other than at the nodal support points, where vibration is at a

minimum. (A2172; A3675-82; A2196.) The summary judgment was correct.

C. The District Court Correctly Granted Summary Judgment of Invalidity of the Design Patents Based on Functionality

The district court correctly ruled that, as a matter of law, the Design Patents

are invalid as functional. The district court properly began its invalidity analysis

by distinguishing the functional aspects of the claimed designs from their

ornamental aspects. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680

(Fed. Cir. 2008) (“Where a design contains both functional and non-functional

elements, the scope of the claim must be construed in order to identify the non-

functional aspects of the design as shown in the patent.”). The district court then

correctly ruled that the claimed design is “primarily functional” and thus ineligible

for patent protection. (A130-31.) See 35 U.S.C. § 171; PHG Tech. v. St. John

- 48 -

Companies, 469 F.3d 1361, 1366 (Fed. Cir. 2006) (“If [a] patented design is

primarily functional rather than ornamental, the patent is invalid.”).

The court based its ruling on its analysis of the functionality factors set forth

by this Court in Berry Sterling: (1) whether the protected design represents the

best design; (2) whether alternative designs would adversely affect the utility of the

specified article; (3) whether there are any concomitant utility patents; (4) whether

the advertising touts particular features of the design as having specific utility; and

(5) whether there are any elements in the design or an overall appearance clearly

not dictated by function. (A126-31.) See Berry Sterling Corp. v. Pescor Plastics,

Inc., 122 F.3d 1452, 1455-56 (Fed. Cir. 1997); High Point Design LLC v. Buyer’s

Direct Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013). The district court correctly

concluded that the uncontroverted evidence on each factor established that the

claimed designs are “dictated by function,” and hence the Design Patents are

invalid. (A131.)

1. The District Court Adequately Considered Alternative Designs in Its Analysis

Ethicon’s principal argument on appeal is the incorrect assertion that the

district court failed to adequately consider alternative designs. (EB41-46.) For

example, Ethicon repeatedly contends that the district court only considered a

single alternative design (of a “predecessor” device), but there is no basis in the

record for Ethicon’s contention. The record contained at least nine of Ethicon’s

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own designs as possible alternatives. (A5006; A5023-27.) The district court

accounted for these alternative designs in its analysis. For example, in its analysis

of the “best design” factor, the district court observed that “Plaintiffs’ own

inventors agreed that ‘of all the different alternative designs’ considered for

[Ethicon’s] Harmonic ACE, the claimed design was ‘the best design ergonomically

that could have been chosen.’” (A127; A3051; A3053-54.) The court also

addressed the feedback that Ethicon had received from surgeons concerning

Ethicon’s alternative designs. (A127; A4536 ¶14 and A3214-20.)

The district court further addressed alternative designs in its discussion of

the “adverse utility of alternative designs” factor. For example, the court noted

that “[f]urther proof of functionality was provided by [Ethicon’s] own inventors,

who testified that alternative designs would not have worked as well as the design

embodied by the asserted Design Patents.” (A127; A3051-87; A3053-54; A3058-

61; A3086.) The court again considered the feedback Ethicon had received from

surgeons concerning the alternative designs. (A127-28.) The record therefore

contradicts Ethicon’s principal effort to undermine the district court’s invalidity

ruling.

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2. The Undisputed Evidence Shows The Claimed Design Is the Best Design and Alternative Designs Would Adversely Affect Utility

In considering the alternative designs, the district court properly concluded

that no other design provided all the functional benefits of the claimed design. The

undisputed evidence showed both that the claimed design was the best design

(Berry Sterling factor #1) and that the alternative designs would adversely affect

utility (Berry Sterling factor #2).

In particular, Ethicon’s own inventors testified that “of all the different

alternative designs” considered for Ethicon’s own product, the claimed design was

“the best design ergonomically that could have been chosen.” (A3051; A3053-54.)

Surgeons also “preferred [what Ethicon contends is the claimed design] the most

overall.” (A3214-20; A3218; A4536 ¶14.) Ethicon’s witnesses also testified that

the Design Patents’ open trigger design was surgeons’ “preferred design” and that

reverting to a closed trigger design “would be a mistake, would not be as good.”

(A3058-59.) Ethicon’s lead inventor further stated that “the forward position is the

preferred” placement of the Torque Knob used to control rotation. (A3060.) And

Ethicon confirmed through interviews with surgeons that rotation was “of

significant importance” to surgeons and a “deciding factor” for surgeons in

choosing among different configurations of the device. (A4538 ¶18; A3246-47.)

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The evidence further showed that surgeons prefer that ultrasonic hand-held

surgical devices have an open trigger for easy access and activation buttons and

knobs that are intuitive and easy to reach in a variety of positions. (A4536 ¶14;

A3214-20.) All of the feedback that Ethicon solicited from surgeons during its

extensive testing of its Harmonic ACE products centered around the ergonomics of

the designs; Ethicon never asked the surgeons which designs they thought “looked

nicer” or were more pleasing aesthetically. (A5006; A5023-27.)

Ethicon’s attempt to run from the testimony of its own witnesses should be

rejected. For example, Ethicon incorrectly cites the testimony of Covidien’s

industrial design expert when he is discussing the design of a different device – a

needleless injection system – in an attempt to argue there is no such thing as a

“best design.” (EB48; A5172-73.) But Ethicon’s own inventors repeatedly

testified that the claimed design was “best” or “preferred most” by surgeons.

(A3051; A3053-54; A3058-A3061; A3081; A3086; A5006-38.)

Ethicon’s attempt to analogize this case to prior decisions overturning

invalidity rulings also fails. For example, in Rosco (EB49), this Court reversed an

invalidity ruling where the evidence showed that alternative designs (for a school

bus mirror) performed the same functions as the claimed design. Rosco, Inc. v.

Mirror Lite Co., 304 F.3d 1373, 1379 (Fed. Cir. 2002). Conversely, the undisputed

evidence here shows that the alternative designs are not functionally equivalent to

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the claimed design. And in High Point (EB45), this Court reversed a functionality

ruling because the district court had refused to consider evidence offered by the

plaintiff under three of the Berry Sterling factors. 730 F.3d at 1316-17.

Specifically, the district court had ignored evidence that alternative designs existed

in various catalogs, that no utility patents covered the claimed design, and that the

claimed design included certain ornamental aspects which did not perform any

function at all. Id. Here, by contrast, the district court considered the undisputed

evidence on all five Berry Sterling factors.

To the extent Ethicon suggests that the existence of alternative designs by

itself negates functionality, this suggestion contradicts precedent. This Court has

held that “[t]he failure of [a district] court to give dispositive effect to the existence

of alternative designs in its validity analysis is not error.” See Berry Sterling, 122

F.3d at 1456.

Ethicon also wrongly contends that the consideration of alternative designs

is “paramount” among the Berry Sterling factors. (EB41.) This Court instead has

observed that “[t]he presence of alternative designs may or may not assist in

determining whether the challenged design can overcome a functionality

challenge.” Berry Sterling, 122 F.3d at 1456. Here, the district court considered

all of the alternative designs proffered by Ethicon and properly concluded that the

undisputed evidence showed none of them “worked equally as well” as the claimed

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design. See PHG, 469 F.3d at 1367 (“Our case law makes clear that a full inquiry

with respect to alleged alternative designs includes a determination as to whether

the alleged ‘alternative designs would adversely affect the utility of the specified

article,’ such that they are not truly ‘alternatives’ within the meaning of our case

law.”).

Finally, Ethicon’s contention that the district court confused the concept of

functionality with the question whether the object of the claimed design has a

function is wrong. The district court properly focused the inquiry on whether the

claimed designs are “dictated by function.” (A131.) See PHG, 469 F.3d at 1366

(“The design of a useful article is deemed to be functional when the appearance of

the claimed design is dictated by the use or purpose of the article.” (citations and

internal quotations omitted)). Ethicon has identified no error in the district court’s

articulation or application of this Court’s precedent.

3. The Remaining Berry Sterling Factors Also Show Functionality as a Matter of Law

Ethicon likewise has not identified any error in the district court’s

application of the other three Berry Sterling factors.

On factor #3, the district court correctly ruled that “[t]he existence of two

utility patents further demonstrates that . . . the Design Patents are all entirely

functional.” (A128.) The evidence showed that surgeons want certain features in

ultrasonic hand-held surgical devices, such as an “open” trigger for easy access,

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and activation buttons and knobs which are intuitive and easy to reach in a variety

of positions. (A4536 ¶14; A3214-20.) The court observed that the claims of the

utility applications were directed to structures and features “identical” to the

structures and features claimed in the Design Patents. (A129; A2934-3037;

A3089-3190.) The court also noted that various “unequivocal statements” about

the ergonomic benefits of the designs by the Ethicon inventors in the utility patents

“provide additional proof that the claimed design is primarily functional as a

whole.” (A130; A3018-19; A3021.)

Ignoring the district court’s actual analysis, Ethicon attributes to the court

the straw-man view that Ethicon could not seek utility and design patent protection

for the same device. The district court correctly followed this Court’s instruction

to consider “whether there are any concomitant utility patents.” Berry Sterling,

122 F.3d at 1456. In doing so, the district court correctly observed that the utility

patents emphasized the purported functional advantages of the same features for

which Ethicon sought design patent protection. (A128-30.)

In the utility patent applications, Ethicon specifically called attention to the

functional benefits of the features claimed in the Design Patents and crafted claims

in an effort to cover the same features shown in the Design Patents. (A2934-3037

¶¶0008-18, 0111-0113, 0116, 0118, 0124-26, 0128, 0131-32, 135, 0138-39, Claims

1, 8, & 35; A3038-3049; A3088-3190 Claims 1, 2, 5, & 16.) Ethicon also

- 55 -

repeatedly used the term “ergonomic” – a functional characteristic – in the utility

patent applications to describe the same design it asserts to be aesthetic in the

Design Patents.

Ethicon’s citation to Avia and Crocs for the general proposition that there

are instances where the same article can enjoy utility and design patent protection

thus does not help its case. Neither case contains any substantive discussion of

when dual coverage is allowed and both are factually distinct. In Avia, unlike here,

there were not even any utility patents covering the sneakers in question. Avia

Grp. Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1562-63 (Fed. Cir. 1988).

And in Crocs, also unlike here, the functionality of the design patent vis-à-vis the

utility patent was not an issue on appeal. Crocs, Inc. v. Int’l Trade Comm’n, 598

F.3d 1294, 1302-1306 (Fed. Cir. 2010).

The utility patent applications are strong evidence of functionality because

Ethicon sought design patent protection for the same features for which Ethicon

sought utility patent protection. Ethicon highlighted the functionality of these very

features in the utility patent applications. Ethicon’s problem is that it tried to

secure design protection for the functional aspects of the device, not simply that it

tried to secure both design and utility patent protection for the same device. See,

e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 1375 (Fed. Cir. 2012) (utility

patent/trade dress; “[T]he existence of a utility patent disclosing the utilitarian

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advantages of the design” showed it was functional.); TrafFix Devices, Inc. v.

Marketing Displays, Inc., 532 U.S. 23, 31 (2001) (utility patent/trade dress;

“[D]isclosure of a feature in the claims of a utility patent constitutes strong

evidence of functionality.”).

On factor #4, the district court correctly ruled that the undisputed evidence

shows Ethicon’s advertising touted the utility of the claimed design. The district

court observed that Ethicon’s “Feeling is Believing” advertisements were intended

to draw attention to the ergonomic benefits of the claimed designs, using phrases

like “open design,” “easy access” and “optimum fit and comfort.” (A130; A3192-

3204.) Ethicon did not and could not meaningfully dispute this evidence.

On factor #5, the district court correctly ruled that the undisputed evidence

shows that the claimed designs have no elements that are entirely aesthetic. The

district court ruled that “each and every aspect claimed in the Design Patents [was]

clearly dictated by function.” (A131.) Ethicon’s witnesses established this point:

they could not identify any element in the Design Patents which was primarily

aesthetic, as opposed to being primarily functional. (A3051-52; A3063-64; A4536

¶14.)

Applying all the Berry Sterling factors to the claimed design as a whole, the

district court’s summary judgment of invalidity based on functionality of the

claimed designs should be affirmed.

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D. The District Court Correctly Granted Summary Judgment of Noninfringement on the Design Patents

The district court correctly ruled that, as a matter of law, the Sonicision

device does not infringe the Design Patents. This Court has made clear that

“design patents have almost no scope beyond the drawings.” Unidynamics Corp.

v. Automatic Prods Int’l Ltd., 157 F.3d 1311, 1323 (Fed. Cir. 1998). For this

reason, and because the material facts are often undisputed, summary judgment of

noninfringement is commonplace in design patent cases. See, e.g., Egyptian

Goddess, 543 F.3d at 678; Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396

(Fed. Cir. 1997). Here, the material facts are undisputed. These facts show that

the accused Sonicision device is plainly dissimilar to the claimed design.

Accordingly, the summary judgment should be affirmed.

1. The District Court Correctly Factored Out the Functional Aspects of the Claimed Design

Contrary to Ethicon’s argument, the district court properly factored out the

elements of the claimed designs dictated by function before comparing it to the

Sonicision device. (A131-33.) This Court’s decision in Richardson requires the

decision-maker to “factor out” those elements of a design patent which are clearly

dictated by function before performing an ordinary observer analysis. Richardson

v. Stanley Works, Inc., 597 F.3d 1288, 1293-95 (Fed. Cir. 2010). That is exactly

what the district court did here. Specifically, it removed the U-Shaped Trigger,

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Torque Knob and Rounded Button elements from the design before comparing the

design to the Sonicision device because it determined that “every aspect claimed in

the Design Patents is clearly dictated by function.” (A131-33.) Upon removing

these elements, the District Court correctly observed there was “nothing left to

compare to the Sonicision,” and hence there could be no infringement. (A133.)

Ethicon wrongly accuses the district court of applying a lower standard for

functionality because the court occasionally used the phrases “informed by” and

“based on” functional considerations. (EB50-51.) The district court

unambiguously ruled that “all of the features claimed in the Design Patents were

dictated by functional considerations.” (A130.) In fact, the district court used the

term “dictated” in connection with functionality at least 10 times in its opinion.

This is not a case like High Point, where the district court erroneously based its

decision on whether just the “primary features” of a claimed design performed

functions. High Point, 730 F.3d at 1316. The district court here properly focused

on all the features claimed in the Design Patents and correctly ruled that those

features, both individually and as a whole, were “dictated by function.” (A131-

33.)

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2. The District Court’s Alternative Analysis, Which Considered All Aspects of the Claimed Design, Also Supports the Summary Judgment of Noninfringement

The district court also conducted an extensive, alternative analysis that

considered all aspects of claimed design (regardless of functionality) in comparing

it to the accused Sonicision device. (A135-143.) This alternative analysis – which

Ethicon hardly challenges in its appeal brief – is correct because the undisputed

evidence shows the plain dissimilarity between the claimed design and Sonicision

device. Accordingly, even if the district court’s ruling on functionality were set

aside, the noninfringement judgment still should be affirmed.

As the district court correctly observed, “the Sonicision does not practice

any of the alleged ornamental design features of the Design Patents as the designs

simply do not look alike except for the fact that both are hand-held surgical devices

with open trigger handles.” (A135.) A comparison of the patent drawings with

pictures of the Sonicision device shows that these devices are plainly dissimilar.

(A136-42.) Most obviously, the claimed design has an overall contoured shape

and design scheme while the Sonicision device has an overall linear shape and

design scheme. (A135-36.)

This comparison alone establishes that the claimed design and Sonicision

device are “sufficiently distinct” to warrant summary judgment of

noninfringement. Egyptian Goddess, 543 F.3d at 678. No reasonable fact-finder

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could find that an ordinary observer “would be deceived by the similarity between

the claimed and accused designs, ‘inducing him to purchase one supposing it to be

the other.’” Id. (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871).

The district court then correctly identified numerous dissimilarities between

the claimed design elements asserted by Ethicon and the features of the Sonicision

device. (A136-143.) The court used side-by-side comparisons of the claimed

design and accused device to illustrate these many differences. (A138-142;

A3229-43.) Below is a summary of the differences between Ethicon’s asserted

design elements and the Sonicision device considered by the court (the relevant

graphics follow each summary):

Ethicon’s Claimed Design Covidien’s Sonicision Device

U-Shaped Trigger

Contoured throughout Linear throughout

Distal portion curves away from device and proximal portion curves toward device

Forward (distal) portion is parallel to rear (proximal) portion

Continuously curved portion connects distal and proximal portions

Linear and downwardly angled portion connects distal and proximal portions

Width of distal portion is equal to or greater than proximal portion

Width of distal portion is substantially less than width of proximal portion

Proximal portion extends below bottom of device handle

Proximal portion ends above bottom of device handle

Proximal portion (front view) is curved Proximal portion (front view) is straight

Proximal portion (front view) tapers along its length, becoming narrower with inward curve at bottom

Proximal portion (front view) remains consistent in width throughout

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Continuously curved portion connecting distal and proximal portions (bottom view) is narrowed in center and widest at ends

Linear and downwardly angled portion connecting distal and proximal portions (bottom view) is widest at end closest to proximal portion and narrowest at end closest to distal portion

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Rounded Activation Button

Football-shaped overall Rectangular overall

Curved across its front Flat front face and flat side faces

Placed directly above upper portion of trigger

Placed behind upper portion of trigger

In contact with upper portion of trigger Separated from upper portion of trigger

Appears to wrap around sides of device Does not appear to wrap around the device

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Torque Knob

Flat front face Rounded across the front

Has curve from the front that peaks before curving inward again

Curve tapers evenly from front

Widest portion is approximately one-third of overall distance from back of knob to front

Widest portion is at its base

Front face has large circular recess at center that reveals elements inside the knob

Smooth across front face with no circular recess

- 64 -

Finally, Ethicon’s lead designer, when asked where the elements shown in

the Design Patents existed in the Sonicision device, responded: “They’re not the

same. I mean, they’re different devices.” (A3051; A3065; A3069; A3076-79;

A4537-38 ¶17.)

Considering all these differences in light of the limited scope of design

patent protection, this is an easy case for summary judgment. These “plainly

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dissimilar” designs are “sufficiently distinct” that no reasonable fact-finder could

find that an ordinary observer would be deceived into thinking one was the other.

Egyptian Goddess, 543 F.3d at 678; Gorham, 81 U.S. at 528. Accordingly, the

judgment of noninfringement should be affirmed.

3. The District Court Did Not Need to Consider the Prior Art in Ruling on the Infringement Claim Because the Claimed Design and Accused Device Are Plainly Dissimilar

Ethicon also wrongly claims the district court erred by not considering the

“frame of reference” provided by the prior art. (EB53.) As shown above, the

designs are so plainly dissimilar that the district court did not need to consider the

prior art in recognizing those differences. The district court’s approach is entirely

consistent with this Court’s teachings in Egyptian Goddess: “In some instances,

the claimed design and the accused design will be sufficiently distinct that it will

be clear without more that the patentee has not met its burden of proving the two

designs would appear ‘substantially the same’ to the ordinary observer, as required

by Gorham.” 543 F.3d at 678. The Court further explained, “In other instances,

when the claimed and accused designs are not plainly dissimilar, resolution of the

question whether the ordinary observer would consider the two designs to be

substantially the same will benefit from a comparison of the claimed and accused

designs with the prior art.” Id. Because the claimed and accused designs are

- 66 -

plainly dissimilar in this case, the district court properly granted summary

judgment without any need to compare those designs to the prior art.

Moreover, Ethicon had the burden to show that the Sonicision device was

“not plainly dissimilar” to the claimed design to potentially bring the prior art into

play. Egyptian Goddess, 543 F.3d at 678-79. As shown in subsection D.2 above,

Ethicon did not and could not carry that burden. Accordingly, an examination of

the prior art was unnecessary. See Egyptian Goddess, 543 F.3d at 678. In fact, this

Court recently affirmed the dismissal of a complaint for design patent infringement

at the pleading stage because a side-by-side comparison of the design patent

images and the images of the accused products showed that they were “plainly

dissimilar.” Anderson v. Kimberly-Clark Corp., 570 Fed. App’x. 927, 929 (Fed.

Cir. 2014).

Ethicon also incorrectly argues that the Revision Military case compels this

Court to consider the prior art before deciding the issue of infringement. (EB55.)

That case involved a reversal and remand for a district court’s application of the

improper standard for determining injunctive relief. Revision Military, Inc. v.

Balboa Mfg. Co., 700 F.3d 524 (Fed. Cir. 2012). This Court suggested in dicta

that, based on the overall similarity between the design drawings and alleged

infringing product, the district court might want to consider the prior art on

remand. Id. at 527 (“The district court did not consider the prior art . . . ‘[b]ecause

- 67 -

[it felt that] this is not a particularly close case,’ [but] the record suggests

otherwise.”). As shown above, however, this case is not a close one.

Finally, Ethicon has failed to show the outcome could be different even if

the district court were required to consider the prior art. For one thing, this Court

pointed out in Egyptian Goddess that “[t]he accused infringer is the party with the

motivation to point out close prior art.” Id. at 679 (emphasis added). In fact,

Covidien presented to the district court noninfringement evidence and arguments

based on the prior art. (A2830; A5625; A5628.) Moreover, the only relevance

Ethicon ascribes to the prior art is its contention that “the clamping arm of almost

every ultrasonic surgical device was controlled by a thumb-ring or loop-shaped

trigger.” (EB53-54; A5006; A5023-27.) Not only is Ethicon’s statement wrong –

its own brief touts prior-art devices “which feature a ‘U’-shaped trigger of the type

the district court found functional” (EB43) – but Ethicon essentially asserts that the

Sonicision device’s mere use of an open trigger instead of a “thumb-ring or loop-

shaped trigger” can avoid summary judgment. Ethicon’s improper attempt to

monopolize any use of an open trigger flies in the face of the very limited scope of

design patent protection and should be rejected. See Unidynamics, 157 F.3d at

1323 (“[D]esign patents have almost no scope beyond the drawings.”).

- 68 -

4. The District Court Correctly Noted the Sophistication of the “Ordinary Observer” Who Purchases Surgical Instruments

Finally, Ethicon wrongly challenges the district court’s ruling that the

“ordinary observer” here was the “hospital or medical device supplier” who

actually purchases the devices, and not the surgeon who uses them. (EB55.) The

court correctly recognized that, while a surgeon “may have some input to a

hospital into which devices he or she prefers,” the actual purchaser of the devices

was the relevant ordinary observer here. (A134; A3223.)

The case cited by Ethicon actually supports Covidien’s position. In

Arminak, this Court affirmed a lower court finding that “the industrial purchaser or

contract buyer” was the ordinary observer for design patents covering components

used in making spray triggers, even though the spray bottles were eventually sold

to ordinary consumers at retail. Arminak & Assocs. v. Saint-Gobain Calmar, Inc.,

501 F.3d 1314, 1323 (Fed. Cir. 2007). This Court held that “commercial or

industrial buyers” can be ordinary observers. Id. at 1322. The district court’s

ruling here that the “ordinary observer” for expensive surgical devices is the

“hospital or medical device supplier” is entirely consistent with Arminak. The

hospitals and medical device suppliers here are equivalent to the “industrial

purchasers” there, with surgeons being more akin to a retail consumer who might

offer opinions as to which device they prefer.

- 69 -

Finally, Ethicon fails to show how the correct outcome could differ even if

surgeons – who themselves are more sophisticated with respect to these devices

than the general public – were considered the “ordinary observer.” Ethicon has not

shown any legal error in the district court’s analysis, much less one that could have

determined the outcome here.

VII. CONCLUSION

The district court correctly applied the law to the undisputed material facts.

The judgment should be affirmed in its entirety.

Dated: November 18, 2014 Respectfully submitted, /s/ Drew M. Wintringham Drew M. Wintringham DLA Piper LLP (US) 1251 Avenue of the Americas New York, NY 10020-1104 Telephone: (212) 335-4520 Facsimile: (917) 778-8520 Attorney for Defendants-Appellees Covidien, Inc. and Covidien LP


I am employed in the County of San Diego, State of California. I am over

the age of 18 and not a party to the within cause. I am a legal secretary with DLA

Piper LLP (US), whose business address is 401 B Street, Suite 1700, San Diego,

CA 92101, and am filing and serving the following on behalf of Drew M.

Wintringham:

RESPONSE BRIEF FOR DEFENDANTS-APPELLEES

I hereby certify that I electronically filed the foregoing with the Clerk of the

Court for the United States Court of Appeals for the Federal Circuit by using the

appellate CM/ECF system on November 18, 2014 .

Participants in the case who are registered CM/ECF users will be served by

the appellate CM/ECF system.

Dated: November 18, 2014

- 70 -

- 71 -


This brief complies with the type-volume limitation of Fed. R. App. P.



exempted by Fed. R. App. P. 32(a)(7)(B)(iii) and Fed Cir. R. 32(b).

This brief complies with the typeface requirements of Fed. R. App. P.

32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6). The brief has


Dated: November 18, 2014 /s/ Drew M. Wintringham Drew M. Wintringham

2014-1370

IN THE

United States Court of AppealsFOR THE FEDERAL CIRCUIT

ETHICON ENDO-SURGERY, INC. and ETHICON ENDO-SURGERY, LLC,

Plaintiffs-Appellants,

—v.—

COVIDIEN, INC. and COVIDIEN LP,

Defendants-Appellees.

ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION IN CASE NO. 11-CV-871

JUDGE TIMOTHY S. BLACK

REPLY BRIEF FOR PLAINTIFFS-APPELLANTS

d

WILLIAM F. CAVANAUGH, JR.

CHAD J. PETERMAN

R. JAMES MADIGAN III

HELEN P. O’REILLY

JEREMY A. WEINBERG

PATTERSON BELKNAP WEBB & TYLER LLP

1133 Avenue of the Americas

New York, New York 10036

(212) 336-2000



Counsel for Plaintiffs-Appellants Ethicon Endo-Surgery, Inc. and Ethicon

Endo-Surgery, LLC certify the following:

1. The full name of every party or amicus represented by me:

Ethicon Endo-Surgery, Inc. and Ethicon Endo-Surgery, LLC

2. The name of the real party in interest (if the party named in the caption is not

the real party in interest) represented by me is:

Not Applicable.

3. All parent corporations and any publicly held companies that own 10 percent

or more of the stock of the party or amicus curiae represented by me are:

Johnson and Johnson; Ethicon, Inc.; Ethicon, LLC; Ethicon PRHoldings

4. The name of all law firms and the partners or associates that appeared for the

party or amicus now represented by me in the trial court or agency or are

expected to appear in this court are:

William F. Cavanaugh, Jr., Chad J. Peterman, R. James Madigan III,Helen P. O’Reilly, Jeremy A. WeinbergPATTERSON BELKNAP WEBB & TYLER LLP

Charles D. HoffmanHOFFMANN MARSHALL STRONG LLP

David Edward SchmitFROST BROWN & TODD, LLC

i

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ................................................................................... iii

STATEMENT OF RELATED CASES....................................................................vi

STATEMENT OF JURISDICTION.........................................................................vi

INTRODUCTION .....................................................................................................1

I. THE ’501 PATENT: THE DISTRICT COURT ERRED IN GRANTINGSUMMARY JUDGMENT OF INDEFINITENESS.......................................1

A. Closed Position......................................................................................2

B. Average Force/Pressure.........................................................................4

II. THE ’275 PATENT: THE DISTRICT COURT ERRED IN GRANTINGSUMMARY JUDGMENT OF NON-INFRINGEMENT...............................7

A. The District Court Erred in Its Construction of “Configured toLoosely Contact”...................................................................................7

B. The District Court Erred in Finding that Sonicision’s Sleeve Is Not“Configured to Loosely Contact the Transmission Rod” ...................12

C. The District Court Erred in Finding that Sonicision’s Sleeve Is Not“Adapted To Absorb Undesired Vibrations” ......................................14

III. THE DESIGN PATENTS: THE DISTRICT COURT ERRED INGRANTING SUMMARY JUDGMENT OF INVALIDITY AND NON-INFRINGEMENT .........................................................................................17

A. Validity................................................................................................17

1. The District Court Erred in Ignoring Alternative DesignsThat Would Work as Well as the Patented Designs .................18

2. The District Court Erred in Addressing Other ConcomitantUtility Patent Applications........................................................21

ii

3. The District Court Erroneously Ignored AestheticConsiderations...........................................................................22

B. Infringement ........................................................................................25

1. The District Court’s Errors in Assessing FunctionalityInfected its Infringement Analysis............................................25

2. The District Court Also Erred in Not EvaluatingInfringement in the Context of the Prior Art ............................25

CONCLUSION........................................................................................................32

iii


Page(s)

Cases

Amini Innovation Corp. v. Anthony Cal., Inc.,439 F.3d 1365 (Fed. Cir. 2006) ..........................................................................29

Anderson v. Kimberly-Clark Corp.,570 F. App’x 927 (Fed. Cir. 2014) ...............................................................30, 31

Apple Inc. v. Motorola, Inc.,757 F.3d 1286 (Fed. Cir. 2014) ..........................................................................13

Aventis Pharma SA v. Hospina, Inc.,675 F.3d 1324 (Fed. Cir. 2012) ..........................................................................10

Avia Grp. Int’l Inc. v. L.A. Gear Cal. Inc.,853 F.2d 1557 (Fed. Cir. 1988) ..........................................................................22

Berry Sterling v. Pescro Plastics, Inc.,122 F.3d 1452 (Fed. Cir. 1997) ..............................................................18, 19, 21

Best Lock Corp. v. Ilco Unican Corp.,94 F.3d 1563 (Fed Cir. 1996) .......................................................................18, 19

Braintree Labs., Inc. v. Novel Labs., Inc.,749 F.3d 1349 (Fed. Cir. 2014) ............................................................................8

Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294 (Fed. Cir. 2010) ....................................................................20, 29

Crown Packaging Tech., Inc. v. Ball Metal Beverage ContainerCorp.,635 F.3d 1373 (Fed. Cir. 2011) ........................................................................4, 6

Dealertrack, Inc. v. Huber,674 F.3d 1315 (Fed. Cir. 2012) ............................................................................8

DSW, Inc. v. Shoe Pavilion, Inc.,537 F.3d 1342 (Fed. Cir. 2008) ............................................................................9

iv

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) (en banc) ..........................................26, 27, 31, 32

Enzo Biochem, Inc. v. Applera Corp.,599 F.3d 1325 (Fed. Cir. 2010) ............................................................................8

EPOS Techs. Ltd. v. Pegasus Techs. Ltd.,766 F.3d 1338 (Fed. Cir. 2014) ....................................................................12, 16

Freeny v. Apple, Inc.,No. 2:13-CV-00361-WCB, 2014 U.S. Dist. Lexis 120446 (E.D.Tex. Aug. 28, 2014) ..............................................................................................4

Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,162 F.3d 1113 (Fed. Cir. 1998) ..........................................................................29

Hill-Rom Servs. v. Stryker Corp.,755 F.3d 1367 (Fed. Cir. 2014) ............................................................................9

Hupp v. Siroflex of Am., Inc.,122 F.3d 1456 (Fed. Cir. 1997) ....................................................................20, 24

L.A. Gear v. Thom McAn Shoe Co.,988 F.2d 1117 (Fed Cir. 1993) ...............................................................19, 20, 22

LG Elecs. v. Bizcom Elecs., Inc.,453 F.3d 1364 (Fed. Cir. 2006) ..........................................................................10

Liebel-Flarsheim Co. v. Medrad, Inc.,358 F.3d 898 (Fed. Cir. 2004) ..............................................................................8

Metro. Life Ins. Co. v. Bancorp Servs., L.L.C.,527 F.3d 1330 (Fed. Cir. 2008) ........................................................................4, 6

Nautilus, Inc. v. Biosig Instruments, Inc.,134 S. Ct. 2120 (2014)..................................................................................1, 4, 5

Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,806 F.2d 1565 (Fed. Cir. 1986) ............................................................................5

Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,739 F.3d 694 (Fed. Cir. 2014) ............................................................................29

v

PHG Techs., LLC v. St. John Cos., Inc.,469 F.3d 1361 (Fed. Cir. 2006) ..............................................................17, 18, 21

Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) ............................................................................9

Plantronics, Inc. v. Aliph, Inc.,724 F.3d 1343 (Fed. Cir. 2013) ..........................................................................10

Revision Military, Inc. v. Balboa Mfr. Co.,700 F.3d 524 (Fed. Cir. 2012) ..........................................................26, 30, 31, 32

Rosco, Inc. v. Mirror Lite Co.,304 F.3d 1373 (Fed. Cir. 2002) ........................................................17, 19, 20, 21

Starhome GmbH v. AT&T Mobility LLC,743 F.3d 849 (Fed. Cir. 2014) ............................................................................10

Teleflex, Inc. v. Ficosa N. Am. Corp.,299 F.3d 1313 (Fed. Cir. 2002) ............................................................................8

Williamson v. Citrix Online, LLC,770 F.3d 1371 (Fed. Cir. 2014) ..........................................................................11

Statutes

28 U.S.C. § 1295(a)(1)..............................................................................................vi

28 U.S.C. § 1331.......................................................................................................vi

28 U.S.C. § 1338(a) ..................................................................................................vi

Other Authorities

FED. CIR. R. 47.5 .......................................................................................................vi

FED. R. APP. P. 4(a)(1)(A).........................................................................................vi

vi


Pursuant to Federal Circuit Rule 47.5, counsel for Plaintiffs-Appellants

states there are no related cases to this case and there are no other cases that will be

directly affected by the Court’s decision in this case.

STATEMENT OF JURISDICTION

The district court had jurisdiction in this action pursuant to 28 U.S.C.

§§ 1331 and 1338(a). The Notice of Appeal from the Final Judgment entered on

March 4, 2014 was timely filed on March 19, 2014 in accordance with FED. R.

APP. P. 4(a)(1)(A). This Court has appellate jurisdiction under 28 U.S.C.

§ 1295(a)(1).

INTRODUCTION

In its opening brief, Ethicon demonstrated that the district court erred in

granting summary judgment that: (1) the ’501 patent is invalid as indefinite; (2) the

Sonicision device does not infringe the ’275 patent; and (3) the Design Patents are

invalid and not infringed by Sonicision.

In its response, Covidien presents its own position on disputed fact issues

and credits its experts’ opinions over those of Ethicon’s experts. When both sides’

evidence is considered—and not just Covidien’s—disputed issues of material fact

made it improper to grant summary judgment.

I. THE ’501 PATENT: THE DISTRICT COURT ERRED INGRANTING SUMMARY JUDGMENT OF INDEFINITENESS

To warrant summary judgment of indefiniteness under Nautilus, Inc. v.

Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), Covidien needed to show that the

undisputed evidence, viewed with all reasonable inferences drawn in Ethicon’s

favor, clearly and convincingly establishes that “[the] claims, read in light of the

specification delineating the [’501] patent, and the prosecution history, fail to

inform, with reasonable certainty, those skilled in the art about the scope of the

invention.” Id. at 2124. Covidien failed to meet that heavy burden. (Eth.Br. 22-

29)1

1 As used herein, “Eth.Br. ___” refers to Ethicon’s Appeal Brief (Dkt. No. 24).“Cov.Br. ___” refers to Covidien’s Response Brief (Dkt. No. 39).

2

In granting summary judgment of indefiniteness, the district court resolved

disputed fact issues in Covidien’s favor, and largely ignored the opinions of

Ethicon’s expert, Dr. Schafer. Covidien continues this improper approach. It

argues that disputed facts were undisputed and discounts as conclusory all expert

evidence that is inconsistent with its position.

The district court’s decision rests on an incorrect determination that

undisputed evidence establishes that, from the viewpoint of one skilled in the art,

there was “no disclosed method of measurement [of clamping forces/pressures] in

the patent and no guidance as to whether the value determined was applicable to

the patent claims.” (A0099) Covidien defends this determination by arguing that

the “necessary guidance” is lacking and that there are different methods for making

measurements available which lead to different results. (Cov.Br. 22-23) These

arguments ignore language in the specification and expert testimony demonstrating

that, based on the patent’s disclosure, a skilled artisan would perform the claimed

force/pressure measurements (1) with the clamp and blade in a closed position and

(2) in a manner that reflects the average pressure or force of the clamping surface

area, such as the midpoint of the clamping arm. (Eth.Br. 23-29)

A. Closed Position

Based on the specification’s teachings, a skilled artisan would know how to

measure the claimed force/pressure with the clamp arm and blade in a closed

3

position. (Eth.Br. 23-26) The specification of the ’501 patent explains that “[t]he

pressures discussed herein are pressures seen by tissue when the entire clamping

surface area is in contact with the tissue.” (A0178/col.4:23-27) The specification

then states: “a clamping surface area is the area where the blade and the tissue

pad are in close proximity when the clamping arm is in a closed position.” (Id.)

These teachings could not be more pertinent or clearer.

Dr. Schafer testified that based on the foregoing disclosure a skilled artisan

would know to make the measurement with the clamp arm in a closed position,

“i.e., with the clamp arm closed on the blade.” (A4281-A4282) As he explained,

the ’501 patent was directed to performing the measurement “when the clamp jaw

is in the closed position” and that a “clamp jaw open at an angle ... does not lead

to” the measurements required under the patent. (A4427/¶248)

Covidien distorts the specification and the expert evidence when it argues

that notwithstanding the explicit disclosure quoted above, the specification does

not refer to measuring clamping force/pressure in the closed position. (Cov.Br. 28-

29) As a fallback, Covidien argues that there are still “unanswered ...

methodological questions” regarding the measurement, including the amount and

compressibility of tissue in the clamping arm. (Cov.Br. 28-29) But with the clamp

arm and blade being in a closed position, the so-called “unanswered ...

methodological questions” are irrelevant because the measurement is not taken

4

until the clamp arm is actually closed on the blade. (Eth.Br. 23-26; A4281-A4282;

A4427/¶248; A4428/¶252)

In sum, Ethicon presented competent evidence that one of skill in the art

would understand from the patent that the closed position is the correct position in

which to take the required measurement. To be sure, Covidien’s expert disagreed,

but this simply presented a “conflict in [expert] declarations [which] created a

genuine issue of material fact that made summary judgment inappropriate.” Metro.

Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008);

see also Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635

F.3d 1373, 1384 (Fed. Cir. 2011).2

B. Average Force/Pressure

Ethicon also presented substantial evidence that a skilled artisan would

understand how to measure the force/pressure in order to calculate the average

pressure or force of the clamping surface area, by using the midpoint of the

clamping arm. (Eth.Br. 24-27) The patent directs those skilled in the art to use a

method that is reflective of the average pressure or force. For example, asserted

claims 1, 2, 13, 17, and 18 expressly recite calculating the “average” clamping

2 Although Nautilus modified the standard for indefiniteness, it did not overruledecades of Federal Circuit precedent. As Judge Bryson noted, sitting bydesignation in a recent district court case, Nautilus did “not render all of the priorFederal Circuit and district court cases [on indefiniteness] inapplicable.” Freenyv. Apple, Inc., No. 2:13-CV-00361-WCB, 2014 U.S. Dist. Lexis 120446, at *16(E.D. Tex. Aug. 28, 2014).

5

force or pressure. (A4424-A4427/¶¶244-247; A0179/col.6:29, 6:33;

A0180/col.7:6, 7:25, 7:29; see also A0178/col.4:17-27; A0177/col.1:27-40, 1:62-

2:54; A0179/col.5:41-64) For the claims that do not expressly recite “average,” the

patent’s written description makes clear to a skilled artisan that the “average”

pressure is the pressure of interest. (Id.) For example, the claim term “pressure at

the clamping surface area” is understood by a skilled artisan to refer to an average

pressure. (A4424/¶244)

Covidien argues that the specification lacks specific instructions on how to

measure the average or on the use of the midpoint. (Cov.Br. 26-28) But the

specification does not need to provide more detailed directions because

determining the average force/pressure was within the knowledge of a skilled

artisan. (A4427/¶247) See Nautilus, 134 S. Ct. at 2129 (“[T]he certainty which

the law requires in patents is not greater than is reasonable, having regard to their

subject matter.”); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,

1576 (Fed. Cir. 1986) (“[W]hether a claim is invalid [for indefiniteness] requires a

determination whether those skilled in the art would understand what is claimed

….”).

Measuring force/pressure at the middle of the clamp arm is a recognized

method for determining average force/pressure. (A4427/¶247) Based on basic

laws of physics and his knowledge as a skilled artisan, Dr. Schafer opined that

6

“taking the force at the midpoint of the active portion of the clamping arm would

be representative of the average forces delivered by the clamping arm.”

(A4356/¶102; A4366) Thus, he concluded that a skilled artisan would find it

“common sense to take the force measurement and calculate pressure based on

measurements at the midpoint.” (Id.) As an example, Dr. Schafer pointed to the

’984 Whipple patent, which uses the midpoint for a force/pressure measurement.

(A4427/¶247) His opinions cannot be disregarded at the summary judgment stage.

See Metro. Life, 527 F.3d at 1338-39; Crown Packaging, 635 F.3d at 1384.

Covidien’s assertion that Dr. Schafer admitted that the “midpoint measurement was

not equivalent to the average clamping force” is not supported by the cited record.

(Cov.Br. 27) Indeed, Dr. Schafer confirmed experimentally that the midpoint of

the active portion of the clamping arm is representative of the average clamping

force. (A4366; A4370)

* * *

Viewing disputed facts in Ethicon’s favor, a reasonable fact-finder could

conclude that Covidien has not established indefiniteness by clear and convincing

evidence. The district court therefore erred in granting summary judgment of

indefiniteness.

7

II. THE ’275 PATENT: THE DISTRICT COURT ERRED INGRANTING SUMMARY JUDGMENT OF NON-INFRINGEMENT

As Ethicon has demonstrated (Eth.Br. 29-39), the district court erred in its

construction of claim 1 of the ’275 patent and in applying its (incorrect) claim

construction to Covidien’s Sonicision device. Covidien’s response does not justify

the district court’s rulings.

A. The District Court Erred in Its Construction of“Configured to Loosely Contact”

In construing a “damping member configured to loosely contact the

transmission rod over a portion of the transmission rod” (A0169/16:64-

A0170/col.17:2 (emphasis added)), the district court committed a classic error of

claim construction. Instead of giving the italicized claim language its ordinary

meaning (A1625-A1627), the district court read limitations into the claim based on

features of a preferred embodiment. (A0014-A0015) The district court’s

construction confuses the type of contact required by the claim (loose) with the

location of that contact (other than at fixed support points). Nothing in the intrinsic

evidence supports reading this latter feature into the claim. In fact, the term

“fixed” is not used anywhere in the ’275 patent.

“As a general rule, ‘it is improper to read limitations from a preferred

embodiment described in the specification … into the claims absent a clear

indication in the intrinsic record that the patentee intended the claims to be so

8

limited.’” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1342 (Fed. Cir. 2012)

(quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir.

2010)); see also Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1355

(Fed. Cir. 2014) (same). This is true even if the preferred embodiment is the only

embodiment. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.

2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002).

The intrinsic evidence here does not indicate—let alone indicate with the

requisite clarity—that “fixed support points” must be excluded from the points of

loose contact. Covidien’s argument focuses on the following description of a

preferred embodiment:

Referring now to FIGS. 5 and 6, the damping sheath 160of the surgical instrument 150 loosely surrounds at least aportion of the transmission rod 86. The damping sheath160 may be positioned around the transmission rod 86 todampen or limit transverse side-to-side vibration of thetransmission rod 86 during operation. The dampingsheath 160 preferably surrounds part of the third section86c of the transmission rod 86 and is coupled or attachedto the transmission rod 86 near one or more nodes. Thedamping sheath is only attached to the transmission rodat the nodal points thereby preventing the sheath fromotherwise adhering to the outer surface of thetransmission rod 86.

(A0166/col.9:33-45 (emphasis added)) This passage is notable for its use of the

words “may” and “preferably.” There is nothing indicating that the sleeve must be

attached or coupled to the transmission rod or nodal points.

9

The language quoted above is a description of one of several possible

embodiments. But the district court relied on it in holding that the specification

“distinguish[es] loose contact from attachment at fixed support members” and

therefore requires that the loose contact cannot occur at “fixed support points” on

the transmission rod. (A0014-A0015) This holding is at odds with the intrinsic

record and settled law. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.

2005) (“[A]lthough the specification often describes very specific embodiments of

the invention, we have repeatedly warned against confining the claims to those

embodiments.”); DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir.

2008) (“[I]nterpreting what is meant by a word in a claim is not to be confused

with adding an extraneous limitation appearing in the specification, which is

improper.” (internal quotation marks and citation omitted)).

The portions of the specification on which Covidien relies do not constitute

a definition, restriction, or disclaimer. There is no indication that the feature of

where loose contact cannot occur is essential for the invention. See Hill-Rom

Servs. v. Stryker Corp., 755 F.3d 1367, 1371-73 (Fed. Cir. 2014). Covidien admits

as much. (Cov.Br. 32-33) Covidien also acknowledges that the specification

describes nodes merely as a “preferred location” for support (id. at 32), and does

not even identify how many nodes should serve as support points (A0166/col.9:42

(“near one or more nodes”)), or precisely where the support points should be

10

located (Cov.Br. 32 (“preferably placed at or near longitudinal nodes” (emphasis

added))). Accordingly, there is no redefinition of the claim language or disclaimer

of its ordinary meaning in the intrinsic record. See Starhome GmbH v. AT&T

Mobility LLC, 743 F.3d 849, 854, 856 (Fed. Cir. 2014); Aventis Pharma SA v.

Hospina, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012).

The specification also discloses several other embodiments, further

demonstrating that no single embodiment is exclusive or limiting. See Plantronics,

Inc. v. Aliph, Inc., 724 F.3d 1343, 1349-50 (Fed. Cir. 2013) (rejecting construction

that is improperly limited to one preferred embodiment and thereby excludes

others); LG Elecs. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1377 (Fed. Cir. 2006)

(same), rev’d on other grounds, 553 U.S. 617 (2008). These alternative

embodiments include the sleeve being “coupled to or maintained on the

transmission rod by compliant members” (A0167/col.11:9-10); “anchored by one

or more compliant members” (A0167/col.11:67); or, according to Covidien,

“supported on the transmission rod” (Cov.Br. 32, 34). The specification

contemplates multiple ways in which the sleeve may interact with support

members, none of which are specifically required and none of which can be read to

limit the claimed invention. “While the specification discloses examples and

embodiments ..., nowhere does the specification limit the [invention] to those

11

examples and embodiments.” Williamson v. Citrix Online, LLC, 770 F.3d 1371,

1377 (Fed. Cir. 2014).

Nothing requires that the contact between the sleeve and the support

member(s) be anything other than “loose.” The district court recognized that the

sleeve may be attached to a support member and that the support member may be

positioned at fixed nodal points. (A0015) The district court concluded from this

that the loose contact cannot occur at fixed support points. (A0014) But that

conclusion does not follow either from the claim language or from the

specification’s teachings. The contact between the sleeve and support members

can be loose even if they are attached or coupled. For example, as discussed

above, the specification discloses an embodiment in which the sleeve can be

“maintained on the transmission rod by compliant members.” (A0167/col.11:9-10)

The specification later uses the term “loosely” to modify the term “maintained”

(A0167/col.11:55), which establishes that the contact contemplated by the use of

the term “maintained” can be loose.

Finally, Covidien misreads the record when it argues that Ethicon’s expert,

Dr. Schafer, “opined that contact between the sleeve and waveguide’s nodal ribs is

irrelevant to the infringement analysis because the nodal ribs serve as fixed support

points for the sleeve.” (Cov.Br. 36 (citing A3546/¶30; A2045-46)) In the

testimony Covidien cites, Dr. Schafer was merely applying the district court’s

12

(incorrect) claim construction—not the correct construction. (See A2046/171:2-

171:5; see also A3595/¶56; A3602/¶59)

Under the correct construction, the “loose contact” that occurs “over a

portion of the transmission rod” can include nodal or other support locations. The

grant of summary judgment of non-infringement was based on an incorrect claim

construction and should be reversed. (Eth.Br. 32) See also EPOS Techs. Ltd. v.

Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (reversing grant of

summary judgment of non-infringement where district court erroneously relied on

features of preferred embodiments to limit the claim terms).

B. The District Court Erred in Finding that Sonicision’s Sleeve IsNot “Configured to Loosely Contact the Transmission Rod”

Even under the district court’s erroneous claim construction, there is at least

a material question of fact as to whether Sonicision’s sleeve is “structured to have

contact other than at fixed support points, but not tightly fitted.”

The CT scan images submitted by both parties show the loose contact

required by claim 1 even under the adopted claim construction. The CT scans

performed by Dr. Schafer show Sonicision’s sleeve is structured to loosely contact

the transmission rod at points “other than the fixed support points.” (A3562-

A3563; A3602/¶61-A3603/¶65; A3617-A3618; A3684/¶5-A3687/¶12) Covidien’s

own expert, Dr. Durfee, admitted that one of the CT images, No. 9(e), showed that

“the sheath touches in one location” other than a fixed support point.

13

(A3671/¶107; see also A3618; A3526-A3527; A3562) Reviewing the same CT

images, Ethicon’s expert, Dr. Schafer, agreed. (A3602/¶61-A3603/¶65; A3617;

A3684/¶5; A3687/¶10) This contact was corroborated by the CT images proffered

by Covidien. (A3687/¶11) In its response, Covidien ignores its CT scan

evidence.3

In trying to discount this evidence, Covidien argues, unconvincingly, that the

contact shown by the CT images was due to a “nonconforming wrinkle” in the

sleeve of the Sonicision device tested, or that these images show “air gaps”

between the sleeve and transmission rod such that there is no contact. (Cov.Br. 38-

40) These arguments are based on the opinions of Covidien’s expert, which are

hotly disputed by Ethicon’s expert and not supported by any underlying evidence.

For example, Dr. Durfee admits he had no evidence to support his theory that the

contact shown in CT image No. 9(e) resulted from a wrinkled, nonconforming

sleeve. (Eth.Br. 34) Nor is there any evidence to support his assertion that the

points of contact identified by Dr. Schafer are actually “air gaps.” (A3528; A3563;

A3634-A3636; A3686-A3687) Here, as elsewhere, the disagreements between the

3 Yet even if there was only a “single image” showing the requisite contact(Cov.Br. 40), that would go to the weight of the evidence and not its admissibility.See, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1319 (Fed. Cir. 2014)(disagreements about the factual underpinnings of an expert’s analysis go to theweight of the evidence, not its admissibility).

14

experts raises disputed issues of material fact requiring denial of summary

judgment. (Eth.Br. 34)

Indeed, Soncision’s structure—including the flexible sleeve, vibrating

transmission rod, and minimal clearance (0.015 inches) between the two—makes

the requisite contact is inevitable. (Id. at 35-36) In response, Covidien argues that

its design goal was minimizing contact. (Cov.Br. 36-38) But Covidien’s intent is

irrelevant and cannot rebut the showing that Sonicision’s sleeve, as configured,

contacts the transmission rod. (Eth.Br. 35-36) Moreover, as the intrinsic record

makes clear, the purpose of the patented sleeve is to dampen—that is, minimize—

undesired vibrations without dissipating desired longitudinal vibrations. (See, e.g.,

A0166/col.9:57-10:1; A0167/col.11:22-26; A0168/col.14:33-36; A0169/col.16:15-

21) It therefore should come as no surprise that dampening Sonicision’s

longitudinal vibrations is identified as a “failure mode” (Cov.Br. 37), as it would

diminish desired vibrations and result in inadequate cutting and sealing, (A2196;

see also A0163/col.4:9-19).

C. The District Court Erred in Finding that Sonicision’s Sleeve IsNot “Adapted To Absorb Undesired Vibrations”

As Ethicon demonstrated (Eth.Br. 36-39), the district court also ignored

record evidence showing that Sonicision’s sleeve is “adapted to absorb undesired

15

vibrations” as claim 1 requires. Instead, in granting summary judgment, the court

adopted Covidien’s position on this disputed issue.4

Sonicision’s transmission rod produces undesired vibrations that are

absorbed by its sleeve. The evidence shows and Covidien concedes that:

(1) absent the sleeve, Sonicision would experience metal-to-metal contact between

the transmission rod and the inner tube; (2) metal-to-metal contact can result in

squealing and other problems; and (3) Sonicision’s sleeve is specifically designed

to contact the transmission rod (or waveguide) in order to prevent this metal-to-

metal contact. (Cov.Br. 44-45; see also Eth.Br. 36-37) Based on these facts and

his expert experience, Dr. Schafer concluded that Sonicision’s transmission rod

generates undesired vibrations which are absorbed by Sonicision’s damping sleeve.

(A3606)

Droplet tests performed by both Drs. Durfee and Schafer demonstrate

undesired vibrations in Sonicision. (A3688/¶¶16-17) Although Covidien concedes

that a video of the tests performed by its expert, Dr. Durfee, shows test fluid flying

off the transmission rod (Cov.Br. 42), it argues that the Court should discount this

4 At Covidien’s invitation, the district court also imposed multiple unwarrantedlimitations on the claim language, equating “undesired vibrations” solely with“transverse vibrations” and requiring Ethicon to show “significant” undesiredvibrations. (A0045-A0048; A0050) Neither of these limitations is required bythe patent or included in the district court’s claim construction. In any event, theevidence establishes that Sonicision’s transmission rod experiences undesiredvibrations, transverse and other.

16

evidence on the theory that its expert’s test did not involve a commercial

Sonicision device (id.). But having offered tests of this device as evidence to show

how its device performs, Covidien cannot run away from what the tests show. The

record therefore contains admissible evidence establishing that Sonicision’s

transmission rod generates unwanted vibrations.

Moreover, Covidien’s current effort to differentiate a commercial Sonicision

device from the Sonicision device Dr. Durfee used in his tests only confirms the

existence of undesired vibrations and that the sleeve is adapted to absorb those

vibrations. Covidien argues that the device Dr. Durfee used in the droplet tests

differs from the Sonicision because it lacks support mechanisms, such as the distal

O-ring seal and sleeve, which are present in the Sonicision and help to secure the

transmission rod and limit undesired vibrations.5 (Id.) In other words, the

Sonicision’s O-ring seal and sleeve—which were not part of the device Dr. Durfee

tested—respectively support the transmission rod and dampen and absorb its

undesired vibrations. (A3605/¶71)

The evidence only proves Ethicon’s point, that Sonicision’s sleeve is

adapted to absorb undesired vibrations of the transmission rod. Covidien’s

5 In the alternative, Covidien argues that the Sonicision device avoids all unwantedvibrations because it is designed to be perfectly symmetrical. (Cov.Br. 41, 44)This argument strains credulity as a perfectly symmetrical device cannot bemanufactured (A3604-A3605/¶¶69-70), and asymmetry results in transversevibrations (A1991).

17

witnesses testified that the sleeve is designed to prevent touching and act as a

“buffer” between the active transmission rod and the inner tube. (A5586;

A2172/42:6-11; A2006/¶57) Covidien also concedes that Sonicision’s sleeve is

designed to avoid—i.e., absorb—the above-discussed metal-to-metal contact

between the transmission rod and inner tube. (Cov.Br. 47) At a minimum, this

evidence, and Dr. Schafer’s expert opinion on the subject (A3605-A3606/¶73;

A3564/¶94), raise a disputed fact issue on whether Sonicision’s sleeve is adapted

to absorb the undesired vibrations of the transmission rod.

III. THE DESIGN PATENTS: THE DISTRICT COURT ERRED INGRANTING SUMMARY JUDGMENT OF INVALIDITY AND NON-INFRINGEMENT

A. Validity

Whether a patented design is dictated by function is a question of fact. PHG

Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1365 (Fed. Cir. 2006). The

district court ignored record evidence and erroneously decided that fact question in

Covidien’s favor on summary judgment. Especially on summary judgment, the

evidence does not meet the “stringent standard for invalidating a design patent on

grounds of functionality ….” Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1377-

78 (Fed. Cir. 2002).

18

1. The District Court Erred in Ignoring Alternative DesignsThat Would Work as Well as the Patented Designs

In determining whether a design as a whole is dictated by function, relevant

factors include “‘whether the patented design represents the best design’” and

“whether alternative designs would adversely affect the utility of the specified

article.’” PHG, 469 F.3d at 1366 (quoting Berry Sterling v. Pescro Plastics, Inc.,

122 F.3d 1452, 1456 (Fed. Cir. 1997)) (italics added in PHG). “A design is not

dictated solely by its function when alternative designs for the article of

manufacture are available.” Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563,

1566 (Fed Cir. 1996). The district court erred in applying these factors.

Ethicon presented substantial evidence that alternative designs would work

as well as, or better than, the patented designs. (Eth.Br. 41-46) Covidien

acknowledges that “the record contained” evidence of alternative designs.

(Cov.Br. 48-49) The district court erred in failing to address alternative designs

that would work better than the patented trigger design. See, e.g. (A4808, A4811-

A4812, A5574/¶24):

19

For example, the district court ignored the testimony of Ethicon’s expert,

Mr. Ball, and the lead inventor, Dan Price, that triggers with longer distal portions

provide the user with a surer grip and more surface area against which to apply

force. (A4808, A4811-A4812, A5574/¶24) Mr. Price noted that a longer distal leg

would have made it easier for users to “apply force in a distal direction, thus

making that motion easier to perform,” and allowed users who wrap their fingers

around the distal end of the trigger “to have greater purchase on the trigger and

apply more force on the device in a proximal direction.” (A5574/¶24) Covidien’s

own expert agreed that “it’s possible to make – to design another handle that …

would function well” yet “look different” (A5214/199:21-A5215/200:25), and that

there are “a number of examples” of different looking triggers that have the same

functional aspects as the patented designs (A5209/182:17-A5210/183:12).

Before and after Berry Sterling, this Court has treated the presence or

absence of alternative designs that work as well as the claimed design as a

dispositive factor in analyzing functionality. For example, in Rosco, this Court

rejected an argument that “the claimed design of the ’357 patent was dictated by

functional considerations” because the defendant had “not shown by clear and

convincing evidence that there are no designs, other than the one shown in Rosco’s

’357 patent, that have the same functional capabilities as Rosco’s oval mirror.”

304 F.3d at 1378-79; see also Best Lock, 94 F.3d at 1566; L.A. Gear v. Thom McAn

20

Shoe Co., 988 F.2d 1117, 1123 (Fed Cir. 1993); Hupp v. Siroflex of Am., Inc., 122

F.3d 1456, 1460-61 (Fed. Cir. 1997).

The fact that Ethicon decided to go to market with and patent a design that

tested better among focus groups than certain alternatives does not negate the

relevance of other (untested) alternatives. If other designs not considered by the

inventors—like the designs Ethicon’s expert proposed—would work as well or

better than the patented designs, then the patented designs as a whole are not

dictated by function. See Rosco, 304 F.3d at 1378-79.

Covidien sets up a straw man when it focuses on the functionality in general

of an “open trigger design.” (Cov.Br. at 50) The Design Patents do not cover the

general concept of an open trigger design. Rather, they cover a particular design

as shown in the patent drawings. The relevant issue for a functionality analysis is

the functionality of the particular patented design—not the abstract concept of

“open trigger design” in general. Cf. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d

1294, 1303 (Fed. Cir. 2010) (noting, in infringement context, the need to view the

patented design as a whole and the dangers of relying on an abstract description of

the patent rather than its drawings). Although an open trigger design might

generally have functional advantages over alternatives, this does not mean that the

particular open trigger design claimed in the Design Patents is dictated by

function. See L.A. Gear, 988 F.2d at 1123 (the fact that elements of the design

21

serve functional purposes “does not mean that the specific design of each element,

and the combination of these elements into the patented design” is dictated by

function) (emphasis added). Covidien’s expert agreed that there are “any number

of different looking triggers” that would have the same functional aspects as the

Design Patents. (A5209/182:17-A5210/183:12)

Covidien’s expert, Mr. Kemnitzer, conceded that there is no single “best

design” for this type of product. Covidien argues that his testimony concerned a

different device, but his testimony was that there is not “one optimal design for …

a handheld surgical device” and that “[he doesn’t] think there’s an ultimate design

for anything.” (A5223/276:10-22; A5177/38:15-A5178/39:2 (emphasis added);

see also A5172/33:13-A5173/34:2; A5213/186:2-23; A4806-4807; A4999/273:18-

A5000/274:13)

When, as in this case, “‘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.’” PHG, 469 F.3d at 1367 (quoting Rosco, 304 F.3d at 1378).

2. The District Court Erred in Addressing Other ConcomitantUtility Patent Applications

Another relevant consideration in addressing functionality is “‘whether there

are any concomitant utility patents.’” PHG, 469 F.3d at 1366 (quoting Berry

Sterling, 122 F.3d at 1456). The district court also erred in its treatment of this

factor. (A0128-A0129)

22

Covidien misses the mark when it argues that utility patent applications

emphasize “the same features” claimed in the design patents. (Cov.Br. 54-55

(emphasis added)) The utility patent applications are directed toward the

functional features of a general configuration for a surgical device (see, e.g.

A3036-A3037, A3189-A3190), whereas the Design Patents cover ornamental

aspects of a specific, aesthetically pleasing design for such a device. See L.A.

Gear, 988 F.2d at 1123 (“[I]t is the ornamental aspect that is the basis of the design

patent.”); Avia Grp. Int’l Inc. v. L.A. Gear Cal. Inc., 853 F.2d 1557, 1563 (Fed.

Cir. 1988). As Ethicon’s expert explained, the utility patent application claims

cited by the district court—“distal rotation knob … [with] a plurality of flutes” and

a “proximal trigger portion” coupled to a shorter “distal trigger hook” (A0129)—

could be practiced by myriad different looking designs and therefore do not

demonstrate, as a matter of law, that the designs are dictated by function. (A4808-

A4816; see also A5209/182:17-A5210/183:12)

3. The District Court Erroneously Ignored AestheticConsiderations

As Ethicon has demonstrated (Eth.Br. 47), there is substantial evidence that

the patented designs were not dictated by function and that aesthetic considerations

heavily influenced the design. For example, the lead inventor sought to create a

“signature look” for Ethicon products, and design choices were substantially

motivated by a desire to achieve “a more aesthetic, artistic gracefulness.”

23

(A4603/271:22-23; A4612/280:16-17) The inventors “married together”

ergonomics and aesthetics in an effort to create “the nicest looking design based on

[the functional choices the team had made for] the [trigger] handle.”6

(A4611:279:17-19; A4612:2-4) For example, many of the designs’ undulating

curves were chosen not for any utilitarian purpose, but rather to establish a visual

“unity” of design. (A4611/279:20-A4612/280:18)

Covidien’s brief draws attention to several elements of the patented designs

that are clearly not dictated by function (Cov.Br. 60-61):

“Distal portion [of the trigger]

curves away the from device”

(Cov.Br. 60)

6 The Ethicon inventors thus created “a nice unified clean design that’s pleasing”and in which “the forms and the shapes and the curves relate to each other” in away that is both well-functioning and “welcoming,” “friendly,” “inviting,”“clean,” and “good looking.” (A4563/38:8-14, A4575/68:23-24, A4576/69:5-8,A4576/69:14-23, A4577/70:15-18, A4579-A4580/90:25-91:3, A4585/113:5-8,A4586/119:8-20, A4588/131:3-10, A4597/215:20-23, A4611/279:7-11,A4612/280:2-7)

24

The part of the trigger connecting

the distal and proximal portions is

“continuously curved” and

“narrowed in [the] center and

widest at [the] ends.” (Cov.Br.

60-61)

Proximal portion “tapers along its

length, becoming narrower with

[an] inward curve at [the]

bottom.” (Cov.Br. 60)

Covidien’s contention that no elements of the designs are “entirely

aesthetic” is a red herring. (Cov.Br. 56) There is no requirement that any aspect of

a design be “entirely aesthetic”—only that the design not be dictated by function.

In fact, if the designs were entirely aesthetic, they would be governed by the law of

copyright not design patent. See Hupp, 122 F.3d at 1460 (“[T]he fact that the

article of manufacture serves a function is a prerequisite of design patentability, not

a defeat thereof.”).

25

* * *

The district court inverted the summary judgment standard, crediting

Covidien’s evidence and ignoring countervailing evidence. At a minimum, there

were disputed issues of material fact as to whether the claimed designs are dictated

by function.

B. Infringement

The district court also erred in granting summary judgment of non-

infringement of the Design Patents. (See Eth.Br. 50-56)

1. The District Court’s Errors in Assessing FunctionalityInfected its Infringement Analysis

As discussed in Ethicon’s opening brief, the district court’s functionality

errors in its validity analysis carried over to its infringement analysis. (Eth.Br. 50-

52) For the reasons set forth above and in Ethicon’s opening brief, it was error for

the district court to “factor out” the entirety of the patented design as part of its

infringement analysis on the theory that the design supposedly was dictated by

function.

2. The District Court Also Erred in Not EvaluatingInfringement in the Context of the Prior Art

The district court also erred by failing to consider the designs in light of the

prior art. (See Eth.Br. 52-56) Covidien argues that it was not necessary to

consider prior art designs because its accused design is “plainly dissimilar” to the

patented designs. (Cov.Br. 59) But a reasonable fact-finder, after considering all

26

the evidence at trial, could reach the opposite conclusion: that the Sonicision and

the Design Patents share important similarities, especially when viewed through

the eyes of an observer familiar with previous designs in this field.

Design patent infringement is measured exclusively under “the ordinary

observer test through the eyes of an observer familiar with the prior art.” Egyptian

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008) (en banc); see

Revision Military, Inc. v. Balboa Mfr. Co., 700 F.3d 524, 527 (Fed. Cir. 2012)

(noting that the relevant prior art for purposes of design patent infringement is “the

prior art with which the ordinary observer would reasonably be familiar”). In

Egyptian Goddess, this Court made clear that it was not discarding the purpose of

the previously used “point of novelty” test, which sought to “focus [the

infringement analysis] on those aspects of a design which render the design

different from prior art designs.” 543 F.3d at 677. Rather, it held that this goal

was better achieved by the ordinary observer test, which the Court concluded has

always considered the prior art. Id. at 676-77.

Notwithstanding the clear teaching in Egyptian Goddess, the district court

refused to consider the prior art in its infringement analysis. (A0135 (relying on

“comparison of the overall design[s] … without more”)) This was error.

Covidien tries to justify this result by citing Egyptian Goddess’s statement

that, in some instances, the claimed and accused designs may be so “‘plainly

27

dissimilar’” that it will be clear without more that there is no infringement.

(Cov.Br. 65 (quoting Egyptian Goddess, 543 F.3d at 678)) Drawing all reasonable

inferences in Ethicon’s favor, this is not such a case.

The accused Sonicision design and the patented designs are not “plainly

dissimilar.” In fact, their similarities are far greater than their differences. As

Ethicon’s expert noted—and as a comparison of the designs confirms—the

accused product and the asserted designs share an inverted U-shaped trigger whose

distal leg is approximately half as long as its proximal leg, with a length

approximately 2.5 times the size of the aperture (i.e., the width of the “U”), and a

width approximately equal to the size of the aperture. (A4689, A4702, A4714)

The rotation knobs of the two designs are both conical, share almost identical

proportions, and both have six equally spaced flutes created by six rounded

scallops. (A4717) The buttons of the two designs are both rounded, placed

directly above the trigger at the distal end of the device, approximately as wide as

the trigger, and also share similar proportions of height to width. (A4694, A4702,

A4720) These elements are aligned, one on top of another, at the distal end of the

device in both designs. These striking similarities (depicted below) far outweigh

any subtle design differences. Compare A4788 with A0211-A0214:

28

29

Resolving disputed fact issues in Covidien’s favor, the district court ignored

overwhelming evidence of similarities, and instead focused on subtle design

differences. This was error. See Goodyear Tire & Rubber Co. v. Hercules Tire &

Rubber Co., 162 F.3d 1113, 1117 (Fed. Cir. 1998) (noting that similarities between

two designs, as well as differences, must be considered in infringement analysis);

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371-72 (Fed. Cir.

2006) (reversing summary judgment of noninfringement). The test for design

patent infringement “is not identity, but rather sufficient similarity.” Pac. Coast

Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 701 (Fed. Cir.

2014); Crocs, 598 F.3d at 1303-04 (infringement analysis focuses on “overall

impression” of designs, not “small differences in isolation”).

In its only precedential decision addressing whether two designs are “plainly

dissimilar,” this Court found that the following designs were not so unalike as to

permit a court to ignore the “prior art context” in assessing infringement:

30

Revision Military, 700 F.3d at 527. There are several readily apparent differences

in the Revision Military designs— the “shape and sizes of the lenses, the concavity

of the nose bridge, and the venting along the top and bottoms”—but this Court

disagreed with the lower court’s conclusion that it could conduct the infringement

analysis without considering the prior art. Id.

As in Revision Military, this case should be remanded to the district court for

consideration of the similarities of the designs in light of prior designs in the field.

When the similarities in design are considered, and the summary judgment

standard is properly applied, a reasonable fact-finder could conclude that the

designs are not “plainly dissimilar” as a matter of law.7

7 Covidien cites the nonprecedential decision in Anderson v. Kimberly-ClarkCorp., 570 F. App’x 927 (Fed. Cir. 2014) (see Cov.Br. at 66), but that case

31

If anything, this is a case where consideration of prior art is especially

important. Record evidence shows that the Design Patents departed dramatically

from prior designs in the field, which predominantly featured thumb-ring or loop-

shaped controls. (A5573/¶20, A5575/¶¶28-30; A4656-A4657; A4662/61:8-24;

A5008-A5009; A5361-A5363)8 Because the Design Patents “depart[ed]

conspicuously” from previous devices in the field, it is “naturally more likely [that

Covidien’s Sonicision would] be regarded as deceptively similar to the claimed

design, and thus infringing.” Egyptian Goddess, 543 F.3d at 677. The district

court, by ignoring the prior art, failed to credit Ethicon with this important

inference.

Contrary to Covidien’s contention, Ethicon is not “attempt[ing] to

monopolize any use of an open trigger” design. (Cov.Br. 67 (emphasis in

original)) The point is not that all open trigger designs infringe the Design Patents,

but that without examining the prior art with which an ordinary observer would

reasonably be familiar, a fact-finder does not have the appropriate frame of

presented very different facts and has no bearing here. Anderson involved acomparison between a patented design on a “bloomers-style” undergarment witha prominent U-shaped design made of a different material than the rest of thegarment, and accused designs for “briefs-style” undergarments that completelylacked the U-shaped design and were made of a single material. Id. at 933.

8 While there were patents on designs for surgical devices with U-shaped triggers,there is no record evidence that these were ever commercialized, let alone“reasonably … familiar” to purchasers of ultrasonic surgical instruments.Revision Military, 700 F.3d at 527.

32

reference to understand what similarities and differences would likely be noticed

by the ordinary observer. See Egyptian Goddess, 543 F.3d at 677; Revision

Military, 700 F.3d at 527.

* * *

For all of these reasons, it was error for the district court to grant summary

judgment of non-infringement, and to do so without considering the perspective of

an ordinary observer familiar with prior designs in the field. The grant of summary

judgment of non-infringement should be reversed.

CONCLUSION

For the reasons set forth above and in Ethicon’s opening brief, this Court

should reverse the orders granting summary judgment for the patents-in-suit.

December 19, 2014 Respectfully submitted,

/s/ William F. Cavanuagh, Jr.William F. Cavanaugh, Jr.Chad J. PetermanR. James Madigan IIIJeremy A. WeinbergHelen P. O’ReillyPATTERSON BELKNAP WEBB & TYLER LLP1133 Avenue of the AmericasNew York, NY 10036Tel. 212-336-2000Fax [email protected]

Attorneys for Plaintiffs-Appellees


I hereby certify that on December 19, 2014, I caused the foregoing REPLY

BRIEF FOR PLAINTIFFS-APPELLANTS to be electronically filed with the

Clerk of the Court using the CM/ECF system, which will send notification of such

filing to the registered attorney(s) of record that the document has been filed and is

available for viewing and downloading.



This brief complies with the type-volume limitation of FED. R. APP. P.



exempted by FED. R. APP. P. 32(a)(7)(B)(iii) and FED. CIR. R. 32(b).

This brief complies with the typeface requirements of FED. R. APP. P.

32(a)(5) and the type style requirements of FED. R. APP. P. 32(a)(6). The brief has


December 19, 2014


Documents

Ethicon v. Covidien - Appellate Briefs