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

United States Court of Appeals

for the Federal Circuit

______________________

ETHICON ENDO-SURGERY, INC.,

ETHICON ENDO-SURGERY, LLC,

Plaintiffs-Appellants

v.

COVIDIEN, INC., COVIDIEN LP,

Defendants-Appellees

______________________

2014-1370

______________________

Appeal from the United States District Court for the

Southern District of Ohio in No. 1:11-cv-00871-TSB,

Judge Timothy S. Black.

______________________

Decided: August 7, 2015

______________________

WILLIAM F. CAVANAUGH, Jr., Patterson Belknap Webb

& Tyler LLP, New York, NY, argued for plaintiffs-

appellants. Also represented by CHAD J. PETERMAN,

JEREMY A. WEINBERG, R. JAMES MADIGAN III, HELEN P.

O’REILLY.

DREW MILLER WINTRINGHAM III, DLA Piper US LLP,

New York, NY, argued for defendants-appellees. Also

represented by FRANCIS W. RYAN IV, MATTHEW GANAS,

MELISSA REINCKENS; STANLEY JOSEPH PANIKOWSKI III,

San Diego, CA.

2 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

______________________

Before LOURIE, BRYSON, and CHEN, Circuit Judges.

CHEN, Circuit Judge.

Plaintiffs-appellants Ethicon Endo-Surgery, Inc. and

Ethicon Endo-Surgery, LLC (collectively, Ethicon) sued

defendants-appellees Covidien, Inc. and Covidien LP

(collectively, Covidien) in the U.S. District Court for the

Southern District of Ohio for alleged infringement of

several utility and design patents related to ultrasonic

surgical devices. After the close of discovery, the district

court granted Covidien’s motions for summary judgment,

concluding that 1) U.S. Patent No. 8,182,501 (the ’501

patent) is invalid as indefinite, 2) U.S. Patent No.

5,989,275 (the ’275 patent) is not infringed by Covidien’s

accused products, and 3) U.S. Patent Nos. D661,801 (the

D’801 patent), D661,802 (the D’802 patent), D661,803 (the

D’803 patent), and D661,804 (the D’804 patent) (collec-

tively, the Design Patents) are invalid as functional and

in the alternative, not infringed. The district court en-

tered final judgment in favor of Covidien, and Ethicon

now appeals.

We reverse and vacate in part. As to the ’501 patent,

we reverse the district court’s grant of invalidity for

indefiniteness, because the specification provides suffi-

cient guidance to a person of ordinary skill in the art as to

the scope of its asserted claims. As to the ’275 patent, we

vacate the district court’s grant of summary judgment of

noninfringement because the district court improperly

resolved genuine disputes of material fact in favor of

Covidien instead of Ethicon, the non-moving party, and

questions of fact remain as to whether Covidien’s accused

ultrasonic devices infringe the asserted claims of the ’275

patent.

As for the Design Patents, we reverse the district

court’s grant of invalidity based on functionality. The

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 3

district court evaluated the claimed designs using too

high a level of abstraction, focusing on the unclaimed

utilitarian aspects of the underlying article instead of the

claimed ornamental designs of that underlying article.

We affirm, however, the district court’s grant of summary

judgment of noninfringement of the Design Patents.

After the functional aspects of the claimed designs are

properly excluded from the infringement analysis, the

claimed ornamental designs are plainly dissimilar from

the ornamental design of Covidien’s accused products.

Based on the foregoing, we remand to the district court to

resolve Ethicon’s allegations that Covidien’s accused

devices infringe the asserted claims of the ’501 and ’275

patents.

I. BACKGROUND

The patents-in-suit are directed to surgical instru-

ments that use ultrasonic energy created by blades vibrat-

ing at high frequencies to cut tissue and blood vessels.

These surgical instruments also use the heat generated

from the friction of the blade vibrating against the blood

vessel to coagulate and seal those blood vessels in order to

prevent bleeding. Ethicon develops, manufactures, and

sells such ultrasonic surgical instruments. After Covidien

launched a competing line of ultrasonic surgical equip-

ment, Ethicon sued Covidien, alleging infringement of the

utility and design patents at issue in this appeal, among

others. Both parties waived their rights to a jury trial

and agreed to a bench trial on all disputed issues. After

Markman proceedings and the close of discovery, Covidien

successfully moved for summary judgment of invalidity

and/or noninfringement of the asserted patent claims.

See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., No. 11-

cv-871, ECF Nos. 130–32 (S.D. Oh. Jan 22, 2014) (Ethicon

DCt). The district court entered a stipulated final judg-

ment of noninfringement and/or invalidity of all patents-

in-suit in favor of Covidien. Ethicon timely appealed, and

4 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

we have jurisdiction over Ethicon’s appeal pursuant to 28

U.S.C. § 1295(a)(1).

II. DISCUSSION

We review the grant of summary judgment under the

law of the regional circuit. Lexion Med., LLC v. Northgate

Techs., Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011). The

Sixth Circuit reviews an order granting summary judg-

ment de novo. Savage v. Gee, 665 F.3d 732, 737 (6th Cir.

2012).

A. The ’501 patent

The ’501 patent is directed to ultrasonic surgical

shears for cutting and sealing a blood vessel. ’501 patent,

1:20–23. The claimed device includes an ultrasonic

surgical blade, a clamping arm, and a tissue pad attached

to the clamping arm. Id. at 2:7–10. The clamping arm

opens and closes towards the ultrasonic blade in a man-

ner similar to the two blades of a pair of scissors. Id. at

2:8–9. During use, a blood vessel is positioned between

the blade and the tissue pad on the clamping arm. Id. at

1:67–2:2. When the blade and clamping arm are in a

“closed position,” the average clamping pressure on the

blood vessel is between 60 and 210 pounds per square

inch (psi). Id. at 2:2–4. The ultrasonic blade then vi-

brates at a high frequency. Id. at 2:4–5. The combination

of this ultrasonically-vibrating blade and clamping pres-

sure on the blood vessel results in the bringing together

the walls of the blood vessel (a “coaptation”), the cutting

of the coaptated blood vessel (a “transection”), and the

sealing of the coaptated cut ends of the blood vessel (a

“coagulation”). Id. at 1:40–46. According to the ’501

patent, the 60 to 210 psi average clamping pressure range

provides improved blood vessel sealing with shorter

transection times on smaller blood vessels and blood

vessel sealing with acceptable transection times on larger

blood vessels, a result which was not conventionally

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 5

achievable. Id. at 2:25–31. Claim 17 is representative,

and recites as follows:

17. An ultrasonic surgical shears comprising:

a) an ultrasonic surgical blade;

b) a clamping arm operable to open and close to-

ward the blade;

c) a tissue pad attached to the clamping arm,

wherein the blade and tissue pad define a clamp-

ing surface area so that the applied clamp force

does not exceed a clamping pressure of 210 psi at

the clamping surface area; and

d) means for limiting a user applied clamping

force on the clamping arm creating an average

predetermined clamping pressure between and in-

cluding 60 psi and 210 psi on tissue disposed be-

tween the tissue pad and the blade.

Id. at 7:15–27 (emphases added).

Each asserted claim of the ’501 patent includes at

least one limitation that requires clamping pressure

values similar to those recited in claim 17. Ethicon DCt,

ECF No. 131 at 49. The asserted claims recite either an

“average” clamping/coaptation pressure (e.g., claims 1 and

17) or simply a “clamping pressure” (e.g., claims 12, 22,

and 23). We understand the ’501 patent’s specification to

use “clamping pressure” interchangeably with “average”

clamping/coaptation pressure. For example, in describing

the “method of the invention” as illustrated in Figure 1,

the specification describes the “exert coaptation pressure”

step (element 14) as the exertion of “an average coapta-

tion pressure on the blood vessel between and including

60 psi and 210 psi.” Id. at 3:27–41. The “Summary of the

Invention” also describes the “method of the invention” as

the exertion of “an average coaptation pressure on the

blood vessel between and including 60 psi and 210 psi.”

6 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

Id. at 2:1–4, 2:10–13, 2:18–22. The remainder of the

specification then refers interchangeably to this key 60

psi to 210 psi range as either the “average coaptation

pressure,” the clamping/coaptation pressure, or simply

“the pressure.” Compare id. at 3:38–41 (“average coapta-

tion pressure”), with id. at 5:4–8 (“clamping pressure”), id.

at 5:41–52 (“coaptation pressure”), and id. at 4:17–27

(“the pressure”). Thus, we understand the ’501 patent’s

claims to reference average clamping/coaptation pres-

sures, regardless of whether or not the word “average” is

expressly recited by the claims.

The district court found the asserted claims of the

’501 patent to be invalid as indefinite, finding that noth-

ing in the specification or understanding in the art speci-

fied “a method of measurement, the location of

measurement, and the type and amount of tissue used for

the measurement of clamping force[s] and clamping

pressure[s]” recited by the claims. Ethicon DCt, ECF No.

131 at 56. The district court was troubled by the fact that

“measuring at different locations along the clamp arm

provide[d] different force and pressure values” and “when

the clamp arm [wa]s fully engaged with tissue, the tissue

c[ould] be thin or thick, stiff or compressible, and depend-

ing on the type of tissue, the measurement of the clamp-

ing force and pressure w[ould] differ.” Id. at 56–57.

Ethicon contends that the district court ignored much

of Ethicon’s proffered evidence and instead improperly

resolved disputed issues of fact in favor of the movant,

Covidien. Ethicon argues that a skilled artisan reading

the specification would understand that the clamping

force measurements recited in the claims must be made

when the clamping arm and blade are in a closed position,

and in a manner that reflects the average pressure ap-

plied by the clamping arm on the clamping surface area,

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 7

which can be measured at the midpoint of the recited

clamping surface area—the midpoint of the tissue pad. 1

We review the district court’s indefiniteness determi-

nation de novo. Interval Licensing LLC v. AOL, Inc., 766

F.3d 1364, 1370 (Fed. Cir. 2014). A claim is invalid for

indefiniteness under 35 U.S.C. § 112 ¶ 2 2 if its language,

when read in light of the specification and prosecution

history, fails to inform skilled artisans about the scope of

the invention with reasonable certainty. Nautilus, Inc. v.

Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).

Claim 17 of the ’501 patent recites that the claimed

ultrasonic surgical shears include a tissue pad and blade

1 At oral argument, Ethicon explained that unlike

figures 2–5 of the ’501 patent, the tissue pads of Ethicon’s

ultrasonic shears and Covidien’s accused ultrasonic

shears extend along their entire respective clamping

arms. In other words, the midpoint of the tissue pad is at

substantially the same position as the midpoint of the

clamping arm. Oral Argument at 11:10–16:20, Ethicon

Endo-Surgery v. Covidien, Inc., No. 2014-1370 (Fed. Cir.

Mar. 6, 2015), available at http://www.cafc.uscourts.gov/

oral-argument-recordings/14-1370/all. Covidien con-

firmed Ethicon’s understanding. Id. at 21:00–22:10.

Thus, we interpret the parties’ references in their briefs to

the midpoint of the recited clamping surface area as

referring to the midpoint of the clamping arm as it applies

to the commercial products at issue and the midpoint of

the tissue pad as it applies to the claims of the ’501 pa-

tent. See, e.g., ’501 patent, Fig. 2.

2 Paragraph 2 of 35 U.S.C. § 112 was replaced with

newly designated § 112(b) when § 4(c) of the Leahy-Smith

America Invents Act, Pub. L. No. 112-29 (AIA), took effect

on September 16, 2012. Because the application resulting

in the patent was filed before that date, we will refer to

the pre-AIA version of § 112.

8 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

that define a clamping surface area. ’501 patent, 7:20–21.

The specification explains that this “clamping surface

area is the area where the blade and the tissue pad are in

close proximity because the clamping arm is in a closed

position.” Id. at 4:25–27, 1:36–38. In the primary dis-

closed embodiment, the clamping surface area is about

0.033 square inches. Id. at 4:14–15. The user operates

the claimed shears to exert a clamping force of between

two and seven pounds in order to close the clamping arm

towards the blade. Id. at 4:15–17. Thus, the clamping

force on the clamping surface area—defined by the tissue

pad and the blade—averages between two and seven

pounds over 0.033 square inches, or between approxi-

mately 60 to 210 pounds per square inch. See id. at 5:41–

45; see also id. at 4:61–65.

The clamping force applied to close the clamping arm

towards the blade results in the exertion of a clamping

pressure on a blood vessel disposed between the tissue

pad attached to the clamping arm and the blade. Id. at

4:31–37, 3:38–41. See also id. at 4:38–57. The specifica-

tion makes clear that this clamping or coaptation pres-

sure on the blood vessel is an average pressure. Id. at

Abstract; id. at Summary of the Invention, 2:1–4, 2:10–13,

2:18–22. The specification also makes clear that “[t]he

pressures discussed [in the ’501 patent] are pressures

seen by tissue when the entire clamping surface area is in

contact with the tissue.” Id. at 4:23–25. To ensure that

no more than 210 psi of pressure is exerted at the clamp-

ing surface area, the claimed shears include means for

limiting the clamping force applied by the user on the

clamping arm. Id. at 7:22–27. Thus, the claimed shears

limit the average predetermined clamping pressure on

tissue between the tissue pad and the blade—the clamp-

ing surface area—to between 60 and 210 psi. Id. at 5:4–

12.

As the claims and specification indicate, the user-

applied clamping force on the clamping arm is translated

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 9

to pressure applied by the clamping arm and blade to the

tissue. See, e.g., id. at 7:22–23 (“[T]he applied clamp force

does not exceed a clamping pressure of 210 psi at the

clamping surface area.”); id. at 2:10–13 (“[E]xerting a

clamping force on the clamping arm creat[es] an average

clamping pressure between and including 60 psi and 210

psi on tissue positioned between the tissue pad and the

blade.”). And the specification is clear that the recited

“clamping pressure” is an average pressure that should be

measured when the clamping arm and the blade are in a

closed position and exerting pressure on a blood vessel

disposed between them. See, e.g., id. at 2:1–4, 4:23–27.

Ethicon’s expert explained that as a matter of physics,

pressure measured by pounds per square inch is calculat-

ed by taking a force measurement at a point and dividing

that force by the area. Joint Appendix (J.A.) 4356 ¶ 102.

Translated to the claims of the ’501 patent, a skilled

artisan would know that the recited average clamping

pressures can be determined by measuring the average

clamping force on the clamping surface area and dividing

that average force by the clamping surface area. See J.A.

4427 ¶ 247. And in the case of a simple lever, such as the

clamping arm of the claimed ultrasonic shears, measured

force has a generally linear mathematical relationship

with distance along the lever arm, and the midpoint of the

lever arm is representative of the average force along the

arm. Id.; see also J.A. 4366 (“[T]he force varies linearly

along the length [of the clamping arm] . . . [and] the

midpoint represents the average along the clamping

surface.”). Thus, Ethicon’s expert concluded that a person

of ordinary skill in the art would understand that measur-

ing the average clamping pressure as recited by the

claims can be accomplished by measuring the clamping

force applied by the clamping arm at the midpoint of the

clamping surface area when the clamping arm is in a

closed position—the midpoint of the tissue pad (and the

midpoint of the clamping arm for Ethicon and Covidien’s

10 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

commercial ultrasonic devices). J.A. 4431 ¶ 261. Ethi-

con’s expert also conducted tests of Covidien’s accused

device to illustrate his explanation of the link between

average pressures and the midpoint of the clamping

surface area, which demonstrated, inter alia, the general

linearity of clamping force along the clamping arm, and

how force measurements at the midpoint of the clamping

arm approximated the average of two force measurements

taken at proximal and distal locations 1/3 and 2/3 of the

way along the clamping arm. Id. at 4366, 4370.

Covidien offers nothing to contest this explanation of

the underlying physics- and mathematics-based link

between the average pressure and the midpoint of the

clamping arm provided by Ethicon’s expert. Thus, unre-

butted testimony in the record demonstrates that the

focus of the ’501 patent’s specification and claims on

average clamping/coaptation pressures is sufficient to

signal to a skilled artisan how to arrive at the claimed

force and pressure measurements. Relying on basic

concepts of physics and mathematics, skilled artisans

would understand that the average clamping/coaptation

pressures recited in the ’501 patent’s claims can be de-

termined by measuring clamping force at the midpoint of

the clamping surface area—which for the ultrasonic

shears at issue here is at the midpoint of both the tissue

pad and clamping arm.

The district court appeared to ignore this intrinsic ev-

idence and the testimony in the record. It expressed

concern that the claims did not specifically “refer to any

particular point” on the clamping surface area at which to

take the recited pressure measurements or “identify a

location at which [the clamping force] is to be measured.”

Ethicon DCt, ECF No. 131, at 50–51. The district court

also expressed concern that there was no industry stand-

ard method for measuring clamping forces. Id. at 49.

Indeed, the district court appears to have believed that in

order for the claims of the ’501 patent to satisfy the defi-

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 11

niteness requirement of 35 U.S.C. § 112 ¶ 2, the intrinsic

evidence needed to identify a specific method one of

ordinary skill in the art would use to measure the recited

clamping/coaptation pressures. Id. at 55. See also id. at

48, 50 (same).

But in the context of the dispute here, the definiteness

requirement of 35 U.S.C. § 112 mandates only that one

skilled in the art must be able to understand which

pressures are relevant to the claims and how those pres-

sures can be measured, so to discern the scope of the

claimed average pressure range with reasonable certain-

ty. See Nautilus, 120 S. Ct. at 2124. If such an under-

standing of how to measure the claimed average

pressures was within the scope of knowledge possessed by

one of ordinary skill in the art, there is no requirement for

the specification to identify a particular measurement

technique. As discussed above, evidence in the record

demonstrates that because the specification and claims of

the ’501 patent focused on average clamping and coapta-

tion pressures, a skilled artisan would have possessed

such an understanding and such knowledge. See J.A.

4427 ¶ 247; 4356 ¶ 102.

Instead of focusing on what a skilled artisan would

have understood about the claimed average pressures

based on the disclosure in the ’501 patent, the district

court focused on how Ethicon tested its own commercial

embodiment of the claimed ultrasonic shears. In doing so,

the district court was troubled that Ethicon used four

different methods to measure clamping force, and that

each of these methods appeared to yield different force

measurements. Ethicon DCt, ECF No. 131, at 13. It

found this to create ambiguity in the claims because

“different methods of measuring clamping force and

pressure result[ed] in different numeric values.” Id. at 49.

The district court, however, appears to have based its

conclusions on mischaracterized testimony, and as a

result, arrived at several clearly erroneous factual conclu-

12 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

sions. Although Ethicon’s witnesses testified that Ethicon

used different techniques to measure clamping force, the

district court ignored testimony that each of these meth-

ods was designed to provide the same clamping force

measurement. J.A. 2685–86 (“[All four methods of meas-

urement are] trying to achieve the same result, which is

the force it takes to just bring the clamp arm off the

blade”). And while the actual tested clamping force

measurements may have varied slightly between these

methods, this was simply due to natural variances in real-

world testing conditions. Ethicon’s witness explained that

“[i]f you took [results from] all [four of] the methods again

and again and again, the average of all those [measure-

ments] should be quite similar to each other.” J.A. 2686.

The district court also found that clamping forces of

Ethicon’s shears measured at the distal end of its clamp-

ing arm were lower, and clamping forces measured near

the grip area of the shears were higher, than clamping

forces measured at its midpoint. Ethicon DCt, ECF No.

131, at 18. The district court believed this also demon-

strated the claims were indefinite. Id. at 50. The district

court, however, ignored testimony providing context for

the differing force measurements at the proximal and

distal ends of the clamping arm. There is no dispute that

force measurements along the clamping arm vary. But as

discussed above, when the clamping arm of Ethicon’s

ultrasonic shears is in the closed position, a skilled arti-

san would know that the force applied by the clamping

arm will be linearly related to the distance along the

clamping arm where that force is measured. J.A. 4356

¶ 102. A skilled artisan would also know that in order to

find the average force applied by the clamping arm, he or

she could measure the forces at the midpoint of the clamp-

ing surface area—which for Ethicon’s surgical shears is

the midpoint shared by both the tissue pad and clamping

arm. Id.; see also J.A. 2698.

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 13

Finally, the district court found that the clamping

force measurements at the clamping surface area of

Ethicon’s shears varied based on differing heights be-

tween the tissue pad and the blade, differences which

resulted from the type and amount of tissue to be tran-

sected and then sealed. Ethicon DCt, ECF No. 131 at 20.

There is no dispute that pressures measured at the same

position along the clamping arm vary when the clamping

arm is at different angles with the blade. See, e.g., J.A.

4395 ¶ 147 (“[T]he data upon which [Covidien’s expert]

relied . . . indicate that the clamp arm force clearly in-

creases with increasing clamp arm angle. This is to be

expected . . . .”). But this is immaterial to the scope of the

claims, which are concerned with average clamp-

ing/coaptation pressures at the clamping surface area, or

the “area where the blade and the tissue pad are in close

proximity when the clamping arm is in a closed position.”

’501 patent, 4:25–27. See also id. at 4:23–25 (“The pres-

sures discussed herein are pressures seen by tissue when

the entire clamping surface area is in contact with the

tissue.” (emphasis added)). Thus, while the thickness of

tissue disposed between the tissue pad and blade may

affect the amount of clamping force required to operate

the clamping arm and fully transect that tissue, such

variances are irrelevant to the scope of the claims, which

are concerned with the predetermined pressures meas-

ured when the clamping arm is already in a closed posi-

tion.

Based on its evaluation of the extrinsic evidence, the

district court found the claims of the ’501 patent to “close-

ly resemble” the claims found to be indefinite in Honey-

well Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338

(Fed. Cir. 2003). The claims in Honeywell were directed

to a process for manufacturing a particular type of multi-

filament polyester yarn. Id. at 1334. The parties’ dispute

focused on the measurement of a claimed melting point

elevation feature, which required the production of a

14 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

sample yarn specimen. Id. at 1336. Although the specifi-

cation did not disclose any sample preparation methods,

the parties identified four such methods purportedly

known to those in the art. Id. Because each sample

preparation method produced differing melting point

elevation ranges, knowledge of the specific sample prepa-

ration method used was critical to discerning whether

yarn had been produced using the claimed process. Id.

We found the claims to be indefinite because nothing in

the specification or prosecution history provided guidance

as to which of the critical sample preparation methods a

skilled artisan would have interpreted the claims to

require. Id. at 1340.

The district court analogized the four undisclosed

sample preparation methods in Honeywell to the four

methods used by Ethicon to measure average clamping

pressures of its commercial product here, concluding that

the failure of the ’501 patent to identify a specific method

for measuring the clamping pressures recited by the

claims rendered the claims ambiguous and indefinite.

Ethicon DCt, ECF No. 131, at 54. The district court,

however, did not appreciate several key distinctions

between the facts here and the facts in Honeywell. First,

in Honeywell, there was evidence in the record—in the

form of prior art references—that skilled artisans knew of

three sample preparation techniques to measure the

claimed feature. 341 F.3d at 1340. The fourth technique

was disclosed only in the patentee’s confidential files and

the record contained no evidence that this method was

known by those in the art. Id. at 1336, 1340. Second, it

was undisputed that only this unpublished sample prepa-

ration technique provided measurements of the claimed

feature that fell within the claimed ranges. Id. at 1336.

Third, the different sample preparation techniques pro-

duced measurements of the claimed feature that “var[ied]

greatly.” Id. Moreover, the patentee did not dispute that

identifying the selected sample preparation technique was

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 15

“critical to discerning whether a particular product [wa]s

made by a process that infring[ed] the [patent at issue’s]

claims.” Id. at 1339.

Here, the specification clearly discloses that the

claimed clamping/coaptation pressures are average pres-

sures on tissue disposed between the tissue pad and

blade, and are measured when the clamping arm and

blade are in a closed position. This disclosure is sufficient

to inform skilled artisans as to where these average

pressures should be measured—the midpoint of the tissue

pad (also the midpoint of the clamping arm for the ultra-

sonic shears at issue here). See, e.g., J.A. 4356 ¶ 102. In

contrast, the intrinsic evidence in Honeywell provided no

guidance as to how to measure a critical element recited

by the claims (the melting point elevation range), and the

only method of measurement that satisfied the claimed

process was not only absent from the specification, but

also unpublished outside the patentee’s confidential files.

In addition, the extrinsic evidence in the record here

shows that although there are different methods of meas-

uring the claimed average pressures, each of these meth-

ods is designed to provide similar measurements, whereas

the different methods of measurement in Honeywell

produced widely varying results. The district court’s

reliance on Honeywell is misplaced; Honeywell involved

factual circumstances that differ from the circumstances

here in several important ways.

In short, the district court erred by finding the claims

of the ’501 patent indefinite under 35 U.S.C. § 112 ¶ 2. A

skilled artisan, in view of the specification, would under-

stand the scope of the claims with reasonable certainty.

We therefore reverse the district court’s grant of

Covidien’s motion for summary judgment of invalidity for

indefiniteness.

16 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

B. The ’275 patent

The ’275 patent focuses on a different aspect of the ul-

trasonic surgical shears disclosed in the ’501 patent. In

particular, the ’275 patent claims a particular configura-

tion of an ultrasonic surgical shears device that generates

and then propagates ultrasonic energy to the clamping

end of the device, while dampening undesired vibrations.

’275 patent, 2:3–7. The specification explains that the

device includes a generator, a grip, a semi-flexible acous-

tic transmission rod, and a sheath around that rod. Id. at

3:47–51, 7:52–64. An “end effector,” such as the clamping

arm and blade assembly covered by the ’501 patent, is

attached to the distal end of the acoustic transmission

rod. See id. at 3:61–4:19. The generator transmits an

electrical signal to a transducer, which converts the

electrical energy into vibrational motion at ultrasonic

frequencies. Id. at 1:12–15, 3:51–57. This vibrational

motion results in longitudinal waves of ultrasonic energy

that propagate through the acoustic assembly in a stand-

ing wave at a selected frequency and amplitude. Id. at

3:57–61. The end effector, such as a clamping arm and

blade, transfers the received ultrasonic energy to tissue

(like blood vessels) disposed between the clamping arm

and blade. Id. at 3:61–63. In addition to cutting the

tissue, heat generated by the friction from the blade

vibrating against the tissue causes proteins in the tissue

to denature, resulting in the formation of a coagulum,

which then helps to seal the cut tissue. Id. at 3:66–4:6.

The ’275 patent explains that only the transmitted

axial (or longitudinal) vibrational motion—vibrations that

move directly forward and backward along the transmis-

sion rod towards the blade and clamping arm—is desira-

ble. Id. at 1:22–23. Transverse—or side-to-side—

vibrational motion can lead to sub-optimal performance

and even damage the device. Id. at 1:25–30. To reduce

transverse vibrational motion, the device includes a

damping sheath that “loosely surrounds” the transmission

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 17

rod. Id. at 9:33–39. The specification explains that this

sheath is attached to the transmission rod at nodal points,

or points at which the ultrasonic standing wave vibrating

through the transmission rod is at its minimum ampli-

tude. Id. at 9:40–41, 5:57–60.

Ethicon asserted infringement of Claims 1 and 3 of

the ’275 patent. Ethicon DCt, ECF No. 130, at 1. Claim 3

depends from claim 1, which recites:

1. An ultrasonic surgical device comprising:

a transducer assembly adapted to vibrate at an

ultrasonic frequency in response to electrical en-

ergy;

a mounting device having a first end and a second

end, the mounting device adapted to receive ultra-

sonic vibration from the transducer assembly and

to transmit the ultrasonic vibration from the first

end to the second end of the mounting device, the

first end of the mounting device coupled to the

transducer assembly;

a transmission rod having a first end and a second

end, the transmission rod adapted to receive ul-

trasonic vibration from the mounting device and

to transmit the ultrasonic vibration from the first

end to the second end of the transmission rod;

a damping member surrounding at least a portion

of the transmission rod, the damping member con-

figured to loosely contact the transmission rod over

a portion of the transmission rod, the damping

member adapted to absorb undesired vibrations

along the transmission rod without the use of a

fluid; and

an end effector having a first end and a second

end, the end effector adapted to receive the ultra-

sonic vibration from the transmission rod and to

18 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

transmit the ultrasonic vibration from the first

end to the second end of the end effector, the sec-

ond end of the end effector being disposed near an

antinode and the first end of the end effector cou-

pled to the second end of the transmission rod.

’275 patent at 16:50–17:10 (emphasis added).

After the close of discovery, Covidien filed a motion for

summary judgment of noninfringement, contending that

the damping sheath surrounding the transmission rod of

its accused ultrasonic shears is not “configured to loosely

contact” the transmission rod or “adapted to absorb

undesired vibrations.” Ethicon DCt, ECF No. 130, at 2.

The district court granted Covidien’s motion, finding no

genuine dispute that Covidien’s accused ultrasonic shears

did not satisfy either of those limitations. Id. at 21, 26–

27. On appeal, Ethicon challenges the district court’s

construction of “loosely contact” and contends that the

district court improperly resolved disputed issues of fact

and conflicting expert testimony in Covidien’s favor.

We begin first with Ethicon’s challenge to the district

court’s claim construction. The district court construed

“configured to loosely contact” as “structured to have

contact other than at fixed support points, but not tightly

fitted.” Ethicon DCt, No. 11–cv–871, 2013 WL 1787153,

at *7–8 (S.D. Ohio Apr. 25, 2013). Ethicon contends that

the district court imported a limitation into the term

inconsistent with its ordinary meaning—that “loose[]

contact” is contact “other than at fixed support points.”

According to Ethicon, nothing in the specification limits

where this “loose contact” can occur, and thus that “loose

contact” encompasses embodiments in which contact

occurs only at fixed support points such as the “nodal

ribs” where the damping sheath of Covidien’s accused

ultrasonic shears is attached to its transmission rod.

After review of the disputed term, we arrive at the same

construction as did the district court.

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 19

We review the district court’s claim construction here

de novo because it relied only on evidence intrinsic to the

’275 patent. See Teva Pharm. USA, Inc. v. Sandoz, Inc.,

135 S. Ct. 831, 841 (2015). The words of a claim are

generally given their ordinary and customary meaning,

which is the meaning that the term would have to a

person of ordinary skill in the art in question at the time

of the invention. Phillips v. AWH Corp., 415 F.3d 1303,

1312–13 (Fed. Cir. 2005) (en banc) (internal citations

omitted). Claim language must be viewed in light of the

specification, which is the “single best guide to the mean-

ing of a disputed term.” Id. at 1315 (quoting Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.

1996)).

Claim 1 recites that the damping sheath surrounding

the transmission rod “loosely contact[s] the transmission

rod over a portion of the transmission rod.” ’275 patent,

16:66–67 (emphasis added). The recitation of “over a

portion” suggests that such “loose contact” is not contact

only at discrete fixed points, as Ethicon contends. The

specification reinforces this understanding, explaining

that a longitudinal slit extends along the damping sheath

from one end to the other in order to allow the sheath to

fit over the transmission rod. Id. at 10:52–54, 10:65–11:7.

Without the slit, the damping sheath “may not be able to

loosely contact the transmission rod” over its cross-

sectional diameter. Id. at 10:53–55. See also id. at 9:58–

60 (“The damping sheath 160 is preferably in light contact

with the transmission rod 86 to absorb unwanted ultra-

sonic energy from the transmission rod.” (emphasis add-

ed)).

Moreover, the specification explains that this damp-

ing sheath “is more effective than using silicone rubber

rings [‘nodal ribs’] located only at nodes of longitudinal

vibration.” Id. at 10:7–9. This is because the damping

sheath can “dampen transverse motion occurring near

multiple antinodes of the unwanted vibration which are

20 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

located randomly along the length of the transmission

rod.” Id. at 10:9–12. Antinodes are points at which the

ultrasonic standing wave vibrating through the transmis-

sion rod is at its absolute value maximum, or peak, ampli-

tude. Id. at 5:60–62. In short, the specification touts the

benefits of the sheath for its ability to dampen vibrations

along the full length of the transmission rod instead of

only at certain fixed points. Thus, the specification

strongly suggests that the desirable “loose contact” be-

tween the sheath and transmission rod is contact other

than at only fixed points. In particular, this “loose con-

tact” occurs at various portions of the sheath in between

fixed nodes of the transmission rod, where the amplitude

of the ultrasonic standing wave is at its peak. We find

nothing in the specification supporting the notion that

contact between the damping sheath and the transmis-

sion rod only at nodal ribs is “loose contact.” We therefore

affirm the district court’s construction of “configured to

loosely contact.”

Based on its construction, the district court found that

the transmission rod of Covidien’s accused ultrasonic

shears only contacted its damping sheath at fixed nodal

rib supports, and thus did not satisfy the “loosely contact”

limitation of the asserted claims. Ethicon DCt, ECF No.

130, at 17–18. The district court also found that because

there was no evidence the transmission rod of Covidien’s

accused shears contacted the sheath, there was no evi-

dence that the sleeve “absorb[ed] unwanted vibrations

along the transmission rod,” as required by the asserted

claims. Id. at 22. Ethicon contends there are genuine

issues of material fact as to 1) whether even under the

district court’s construction of “loosely contact,” the damp-

ing sheath of Covidien’s accused ultrasonic shears “loosely

contacts” its transmission rod, and 2) whether Covidien’s

accused shears are “adapted to absorb undesirable vibra-

tions.” We agree with Ethicon.

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 21

We turn first to the district court’s determination that

there is no genuine dispute of material fact that the

damping sheath of Covidien’s accused ultrasonic shears

does not “loosely contact[]” its transmission rod. Neither

party disputes that the sleeve of Covidien’s shears is

supported by fixed nodal ribs on its transmission rod, and

that because these ribs have a greater diameter than the

rest of the transmission rod, there is some amount of

space along the length of the transmission rod separating

the sheath from the transmission rod. Id. at 18. The

district court found that because the nodal ribs were

raised, contact between the sheath and the transmission

rod was avoided. Id. The district court also determined

that even if the accused sheath was capable of contacting

the transmission rod, summary judgment would still be

appropriate because there was no evidence that the

accused sheath was “structured to have contact” at loca-

tions other than the fixed nodal ribs. Id. at 19.

In particular, the district court relied on testimony

from Covidien’s engineers that Covidien sought to design

the sheath of its accused device so that it would not

“loosely contact” the transmission rod. Id. at 19–20. This

finding, however, did not take into account contrary

evidence and testimony from Ethicon’s expert, J.A.

3604, showing that the sheath of Covidien’s accused

shears appeared to contact its transmission rod at points

other than the nodal ribs during operation. Specifically,

Ethicon’s expert examined two sets of high-resolution

computer axial tomography (CT) and X-ray scans gener-

ated during tests of Covidien’s accused shears, testifying

that it was his opinion that both sets of scans showed

loose contact at points other than the fixed nodal ribs.

J.A. 3603, 3617–18.

Covidien’s expert disputed the testimony of Ethicon’s

expert, opining that most of the scans did not show any

contact between the sheath and transmission rod. J.A.

2165. However, Covidien’s expert conceded that at least

22 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

one of the scans did show contact, but argued that such

contact was due to a nonconforming “wrinkle” in the

sheath. J.A. 2165–66; see also Appellee’s Br. 39–40

(“[Although the CT scans at issue] may reflect contact of

the [sheath] and [transmission rod] between the nodal

ribs, any contact was due to a nonconforming ‘wrinkle’ in

the sleeve component of that particular instrument.”).

There is no evidence in the record, however, to support

the expert’s assertion that this alleged wrinkle was in-

deed nonconforming. See J.A. 3630 (“Q. Did you

[Covidien’s expert] ever discuss this wrinkle with any of

the engineers at Covidien? A. No.”); J.A. 3631 (“Q. Does

Covidien do imaging of every [accused] device to deter-

mine that it is wrinkle-free before leaving the factory? A.

Don’t know.’). In short, it is clear that genuine disputes

remain as to whether the sheath of Covidien’s accused

ultrasonic shears “loosely contacts” its transmission rod.

We turn next to the district court’s determination that

there is no genuine dispute of material fact that the

damping sheath of Covidien’s accused ultrasonic shears is

not “adapted to absorb undesired vibrations along the

transmission rod.” The district court found there was no

proof that Covidien’s accused shears experienced unde-

sired transverse vibrations and no proof that the accused

shears absorbed those vibrations. Ethicon DCt, ECF No.

130, at 24. To reach this conclusion, the district court

first relied on testimony from a Covidien expert, who

performed certain water and glycerin droplet tests which

purported to show that the transmission rod of Covidien’s

ultrasonic shears did not experience any undesired trans-

verse vibrations. Id. at 22. Next, as with the “loosely

contact” limitation, the district court was persuaded by

Covidien testimony that its accused shears were “purpose-

fully designed” to avoid unwanted transverse vibrations.

In particular, the district court relied on testimony of

Covidien’s engineers that the transmission rod of its

accused ultrasonic shears was designed to be symmetrical

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 23

and to resonate only in the longitudinal—and not trans-

verse—direction, and that contact between the transmis-

sion rod and sheath at points other than fixed nodal ribs

was identified as a “failure mode” of the sheath. Id. at 22,

26. The district court, noting there was no dispute that

undesired transverse vibrations were generated by

asymmetry of the transmission rod, thus concluded that

Covidien’s shears were designed to avoid generating

transverse vibrations “by mechanical design.” Id.

The district court, however, improperly discounted

clear evidence that the transmission rod of Covidien’s

accused ultrasonic shears did experience transverse

vibrations during testing. In particular, Covidien’s expert

performed a “droplet test,” in which he placed droplets of

water or glycerin on the transmission rod of Covidien’s

accused shears. This test was performed on a fully as-

sembled device by having the sleeve removed and win-

dows cut into the sheath. According to Covidien’s expert,

if the droplets splattered off the transmission rod, there

were transverse vibrations, and if not, there were no

transverse vibrations. Although Covidien’s expert testi-

fied that he saw no droplets splatter, Ethicon’s expert

testified that he repeated the test using glycerine and

observed the test fluid flying off tangentially from the

transmission rod. J.A. 3688.

In addition, the district court’s conclusion that

Covidien’s accused ultrasonic shears were designed to

avoid transverse vibrations is also based on an incomplete

view of the record. In particular, the district court’s

reliance on the symmetry of Covidien’s transmission rod

as evidence that the accused shears avoided transverse

vibrations “by mechanical design” is contradicted by

testimony from Covidien’s own witnesses, who testified

that the transmission rod was actually asymmetrical.

J.A. 3604 (“[W]e don’t live in a perfect world, so there are

straightness, curvatures of parts that are natural within

the part . . . .”). In addition, the district court did not

24 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

address evidence in the record that Covidien’s manufac-

turing tolerances for the transmission rod allowed for a

certain amount of variance that could result in asymme-

tries of the rod. J.A. 3605. Moreover, self-serving testi-

mony from Covidien’s witnesses about the purported goal

of its product design does not negate the evidence in the

record, as discussed above, supporting the possible con-

clusion that the transmission rod of the accused shears

actually did experience unwanted transverse vibrations.

Taking all inferences in favor of the non-movant Ethi-

con, disputed issues of material fact remain as to whether

Covidien’s accused ultrasonic shears infringe or do not

infringe the asserted claims of the ’275 patent. Rather

than properly evaluating the evidence in the light most

favorable to the nonmoving party, the district court

appears to have impermissibly resolved factual disputes

in favor of Covidien in order to reach its conclusions. We

therefore vacate the district court’s grant of summary

judgment of noninfringement of claims 1 and 3 of the ’275

patent. 3

3 We note that Ethicon also argues that the district

court ignored testimony by Covidien’s own witnesses that

the sheath of its accused device was “designed to contact”

the transmission rod in order to prevent the rod from

touching the inner diameter of an inner tube. J.A. 3649.

Preventing such contact reduced the probability of an

audible “squealing” when the two components touched.

Id. But Ethicon does not show how the presence of

“squealing” signals the presence of transverse vibrations,

which are the “undesired” vibrations recited by the

claims. Nor does Ethicon explain how such “squealing”

provides evidence that the sheath absorbs transverse

vibrations of the transmission rod.

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 25

C. The Design Patents

The Design Patents claim particular ornamental de-

signs of an ultrasonic surgical device. The D’801 patent

claims a particular ornamental design of an inverted “U”-

shaped trigger. The D’802 patent claims the overall

appearance of the ornamental design of the “U”-shaped

trigger and the particular ornamental design of a rounded

and fluted torque knob positioned above and forward from

the trigger. The D’803 patent claims the overall appear-

ance of the ornamental design of the “U”-shaped trigger

and the particular ornamental design of a rounded activa-

tion button positioned directly above the trigger. The

D’804 patent claims the overall appearance of the orna-

mental designs of the “U”-shaped trigger, the fluted

torque knob, and the rounded activation button, with the

torque knob and the button positioned relative to the

trigger as in the D’802 and D’803 patents, respectively. A

figure from the D’804 patent, depicting the ornamental

designs of the trigger, torque knob, and button claimed in

various combinations and relative positions by the Design

Patents, is reproduced below:

26 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

The district court concluded that the claimed designs

in the Design Patents were all dictated by function and

were therefore invalid. Ethicon DCt, ECF No. 132, at 22.

Specifically, the district court determined that under each

consideration for assessing functionality identified in

PHG Technologies v. St. John Companies, 469 F.3d 1361,

1366 (Fed. Cir. 2006), Ethicon’s claimed designs were

dictated by function. In the alternative, the district court

found that because each of the designs of the trigger,

torque knob, and button must be “factored out” under

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed.

Cir. 2010), the Design Patents had no scope, and therefore

Covidien’s accused design could not infringe the Design

Patents. Ethicon DCt, ECF No. 132, at 23–24. The

district court also found that even if the functional ele-

ments were not factored out, there was no infringement

under the ordinary observer test laid out in Egyptian

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

(en banc). Specifically, the district court found that the

“highly sophisticated” ordinary observer in the “highly

complex medical device purchasing process” would find

that the claimed designs and the design of Covidien’s

accused ultrasonic shears were plainly dissimilar. Ethi-

con DCt, ECF No. 25–26.

1. Invalidity

Design patents enjoy the same presumption of validi-

ty as utility patents under 35 U.S.C. § 282. L.A. Gear,

Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.

Cir. 1993); 35 U.S.C. § 171. Thus, Covidien has the

burden to prove invalidity of the Design Patents by clear

and convincing evidence. Microsoft v. i4i Ltd. P’ship, 131

S. Ct. 2238, 2242 (2011); L.A. Gear, 988 F.2d at 1124. We

have described as “stringent” this standard as it applies to

invalidating design patents on grounds of functionality.

Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed.

Cir. 2002). We review the district court’s finding that the

patented designs are dictated by their function for clear

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 27

error. Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563,

1566 (Fed. Cir. 1996).

Articles of manufacture necessarily serve a utilitarian

purpose, but design patents are directed to ornamental

designs of such articles. 35 U.S.C. § 171. If a particular

design is essential to the use of an article, it cannot be the

subject of a design patent. L.A. Gear, 988 F.2d at 1123.

We have found designs to be essential to the use of an

article when the claimed design is “dictated by” the use or

purpose of the article. Id. (citing In re Carletti, 328 F.2d

1020, 1022 (CCPA 1964); Power Controls Corp. v. Hy-

brinetics, Inc., 806 F.2d 234, 238 (Fed. Cir. 1986)). Design

patents on such primarily functional rather than orna-

mental designs are invalid. PHG Techs., 469 F.3d at

1366; see also Bonito Boats, Inc. v. Thunder Craft Boats,

Inc., 489 U.S. 141, 148 (1989).

In determining whether a claimed design is primarily

functional, “[t]he function of the article itself must not be

confused with ‘functionality’ of the design of the article.”

Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed.

Cir. 1997). In Hupp, we separated the function inherent

in a concrete mold—producing a simulated stone pathway

by molding concrete—from the particular pattern of the

stone produced by the mold itself—an aesthetic design

choice. Id. at 1461. Thus, even though the claimed

design pattern was embedded within the functional

concrete mold, the proper analysis required a determina-

tion of whether the design pattern within the mold—and

not the concrete mold itself—was “dictated by” its func-

tion. Because there was no utilitarian reason the mold

had to impress the particular claimed rock walkway

pattern into the concrete, we determined that the claimed

design was “primarily ornamental,” and not invalid as

functional. Id. In High Point Design LLC v. Buyers

Direct, Inc., we found that the district court had incorrect-

ly relied on the functional aspects of a slipper—a seam

connecting two components, a curved front accommodat-

28 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

ing the foot, an opening facilitating ingress and egress of

the foot, a forward lean of the heel keeping the heel in

place, and a fleece interior providing warmth—to find the

particular ornamental design of that slipper to be imper-

missibly functional. 730 F.3d 1301, 1316 (Fed. Cir. 2013).

We explained that a claimed design was not invalid as

functional simply because the “primary features” of the

design could perform functions. Id. As with its analysis

on other validity grounds, the district court used “too a

high a level of abstraction” in assessing the scope of the

claimed design. Id. at 1314.

By contrast, in Best Lock, we affirmed a district

court’s determination that a design patent to the blade of

a key was invalid as functional, finding no clear error in

the district court’s conclusion that the claimed key blade

design was dictated by functional concerns. 94 F.3d at

1567. In Best Lock, the claimed design was limited to a

specific shape of a blank key blade. Id. at 1566. The

parties did not dispute that the claimed key blade shape

was designed specifically to perform its intended func-

tion—to fit into a similarly-shaped cylinder lock keyhole.

Id. Further, the patentee presented no evidence of alter-

native compatible key blade designs, admitting that no

differently-shaped key blade could fit into the keyhole of

the corresponding cylinder lock. Id. Because no alterna-

tive design would allow the underlying article to perform

its intended function, we determined the district court did

not clearly err by finding that the claimed key blade

design was dictated by function, and therefore invalid. Id.

at 1567.

We have also instructed that the overall appearance

of the article—the claimed design viewed in its entirety—

is the basis of the relevant inquiry, not the functionality

of elements of the claimed design viewed in isolation. For

example, we acknowledged in L.A. Gear that certain

elements comprising the claimed design of an athletic

sneaker each had a utilitarian purpose, including a “delta

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 29

wing” supporting the foot and reinforcing the shoelace

eyelets, side mesh paneling further supporting the foot, a

“moustache” at the back of the shoe cushioning the Achil-

les tendon and reinforcing the rear of the shoe, and the

particular positioning of each of these elements within the

design of the shoe. 988 F.2d at 1123. Nevertheless, we

explained that “the utility of each of the various elements

that comprise the design is not the relevant inquiry with

respect to a design patent” because whether a design is

primarily functional or primarily ornamental requires

viewing the claimed design “in its entirety.” Id. See also

Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d

1452, 1455 (Fed. Cir. 1997) (“[T]he determination of

whether [a] patented design is dictated by the function of

the article of manufacture must ultimately rest on an

analysis of its overall appearance.” (emphasis added)).

We have not mandated applying any particular test

for determining whether a claimed design is dictated by

its function and therefore impermissibly functional. We

have often focused, however, on the availability of alter-

native designs as an important—if not dispositive—factor

in evaluating the legal functionality of a claimed design.

For example, the district court in L.A. Gear referenced the

evidence of many alternative designs that accomplished

the same functionality associated with the underlying

athletic sneaker. 988 F.2d at 1123. In view of that evi-

dence, we noted that “[w]hen there are several ways to

achieve the function of an article of manufacture, the

design of the article is more likely to serve a primarily

ornamental purpose. Id. See also Rosco, 304 F.3d at 1378

(“[I]f other designs could produce the same or similar

functional capabilities, the design of the article in ques-

tion is likely ornamental, not functional.”); Best Lock, 94

F.3d at 1566 (same); Hupp, 122 F.3d at 1460 (same).

Here, the district court appeared to discount the ex-

istence and availability of alternative designs in deter-

mining that the claimed Design Patents were “primarily

30 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

functional” based on its evaluation of the five considera-

tions identified in PHG, 469 F.3d at 1366 (quoting Berry

Sterling, 122 F.3d at 1456). In Berry Sterling, we vacated

and remanded a district court’s grant of summary judg-

ment of invalidity where it had failed to “elicit the appro-

priate factual underpinnings for a determination of

invalidity of a design patent due to functionality.” 122

F.3d at 1454. In our instructions on remand, we ex-

plained that where the existence of alternative designs is

not dispositive of the invalidity inquiry, the district court

may look to several other factors for its analysis:

whether the protected design represents the best

design; whether alternative designs would ad-

versely affect the utility of the specified article;

whether there are any concomitant utility pa-

tents; whether the advertising touts particular

features of the design as having specific utility;

and whether there are any elements in the design

or an overall appearance clearly not dictated by

function.

Id. at 1456. We explained that evaluating these other

considerations “might” be relevant to assessing whether

the overall appearance of a claimed design is dictated by

functional considerations. Id.; High Point, 730 F.3d at

1315 (“Assessing [these five] factors may help determine

whether a claimed design, as a whole, is ‘dictated by’

functional considerations.” (emphasis added)). Thus,

while the Berry Sterling factors can provide useful guid-

ance, an inquiry into whether a claimed design is primari-

ly functional should begin with an inquiry into the

existence of alternative designs.

Ethicon presented evidence of alternative ornamental

designs that could provide the same or similar functional-

ity of the underlying ultrasonic shears. For example,

Ethicon’s expert testified that “there [we]re many differ-

ent designs that would function just as well” as the de-

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 31

signs claimed in the Design Patents. J.A. 4807–18 ¶¶ 48–

56. Ethicon’s expert also identified multiple alternative

designs for hand-held surgical devices in the prior art. Id.

at 4813–18 ¶¶ 50, 51, 55. Covidien’s expert admitted that

other trigger designs, for example, would “work well” but

“look different.” J.A. 5125. Indeed, Covidien does not

contend on appeal that there are no alternatives to the

claimed designs, but merely argues that such designs

cannot be considered true alternatives because, as the

district court found, they did not work “equally well” as

the claimed designs. Appellee’s Br. 52–53.

The foregoing evidence does not support the district

court’s grant of summary judgment that the claimed

designs are primarily functional for two reasons. First,

the district court’s determination that the designs did not

work “equally well” apparently describes the preferences

of surgeons for certain basic design concepts, not differ-

ences in functionality of the differently designed ultrason-

ic shears. For example, in supporting its conclusion that

alternative designs “would not have worked as well” as

the claimed design, the district court pointed to testimony

that surgeons preferred ultrasonic shears with certain

basic design features like activation buttons on the front,

rather than the rear of the device, “open” triggers, rather

than closed or loop-style triggers, and forward positions,

as opposed to other positions, for placement of the torque

knob. Ethicon DCt, ECF No. 132, at 18–19.

Second, to be considered an alternative, the alterna-

tive design must simply provide “the same or similar

functional capabilities.” Rosco, 304 F.3d at 1378 (revers-

ing functionality finding because alternative mirror

designs could still provide a similar level of performance);

see also Seiko Epson Corp. v. Nu-Kote Intern., Inc., 190

F.3d 1360, 1368 (Fed. Cir. 1999) (explaining that to be

patentable, there cannot only be one “possible [ornamen-

tal] form of the article that could perform its function”).

Here, there is no dispute that the underlying ultrasonic

32 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

shears could still function in the same manner with a

differently-shaped open trigger, activation button, and

torque knob, and different relative locations of the trigger,

button, and torque knob. See Ethicon DCt, ECF No. 132,

at 18 (acknowledging that alternative designs exist).

Indeed, Covidien identifies no evidence or testimony that

the particular appearance and shape of the open trigger,

torque knob, or activation button provided utilitarian

advantages over other ornamental designs of those ele-

ments.

Further, the district court’s functionality inquiry used

too high of a level of abstraction. Instead of focusing on

whether the specific patented designs had a functional

purpose—the continuously curved “U” shape of the open

trigger having tapered handles with ends flaring out-

wards, the football-shape of the activation button, and the

asymmetrically-fluted torque knob with a flat front face—

the district court focused its PHG analysis on the func-

tional characteristics that any design of an open trigger,

button, and torque knob would have for the underlying

ultrasonic shears.

For example, the district court supported its conclu-

sion that the claimed designs were “primarily functional”

using testimony from Ethicon witnesses that the chosen

design was “the best design ergonomically” of those con-

sidered for Ethicon’s commercial product. Ethicon DCt,

ECF No. 132, at 18. This ergonomic choice, however, was

not a choice between different open trigger designs, but

rather between the concept of an open trigger and a

thumb-ring or loop-shaped trigger. J.A. 5573 ¶ 19 (“Part

of [Ethicon’s] decision to use a shepherd’s hook trigger

[i.e., an open trigger] instead of a thumb-ring or loop-

shaped trigger design stemmed from the aesthetic value

of the shepherd’s hook design.”). This same evaluation of

an open trigger guided the district court’s determination

that alternative designs would not have worked as well as

an open trigger because surgeons preferred the chosen

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 33

design to alternatives. And as discussed above, the

surgeon-preferred design was not the specific patented

design, but rather the general concept of an “open trigger”

versus a “closed trigger” design. J.A. 3058 (Tr. 272:14–22)

(Q. “What about changing the [open trigger design] to a

closed trigger design, do you think that if you made that

one change would that hypothetical device be as attrac-

tive to surgeons?” A. “I don’t think so. I think the open

trigger . . . was [surgeons’] preferred design.”).

Similarly, the district court found significant the fact

that Ethicon applied for utility patents that included

figures similar to those of the claimed designs. Ethicon

DCt, ECF No. 132, at 20. The district court noted that the

utility patents described an “ergonomically formed”

trigger with a proximal and distal portion having differ-

ent lengths, a rounded button, and a fluted rotation knob.

Id. at 20–21. Again, however, the district court’s analysis

focuses on the concepts of an open trigger, button, and

torque knob, rather than the specifically claimed design

conceptions of those elements. Finally, the district court

relied on Ethicon’s advertisements for its commercial

product touting the “intuitive controls” of the rounded

button and torque knob that offered the “ergonomic

benefit of ‘minimal index finger repositioning’” and the

“easy access” provided by the open trigger. Id. at 21.

These advertisements, however, tout the functional

benefits of the general design concepts of the underlying

elements rather than any functional benefits of the specif-

ic claimed designs.

Ethicon’s Design Patents cover only the specific or-

namental conceptions of the features shown in their

figures, and not the general concepts of an open trigger, a

rounded button, and a fluted torque knob oriented in

some configuration as part of an ultrasonic surgical

device. The analysis of whether Ethicon’s patented de-

signs are invalid as dictated by function must also be

performed at a level of particularity commensurate with

34 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

the scope of the claims. For functionality purposes, “it is

relevant whether functional considerations demand only

this particular design or whether other designs could be

used, such that the choice of design is made for primarily

aesthetic, non-functional purposes.” Hupp, 122 F.3d at

1460. The district court performed its functionality

analysis at too high a level of abstraction, focusing on the

general concepts of an open trigger, torque knob, and

activation button rather than the ornamental designs

adorning those elements.

Moreover, Covidien has not shown by clear and con-

vincing evidence that no designs other than those claimed

in the Design Patents allow the underlying ultrasonic

shears to perform their intended function. Indeed, the

evidence in the record leads to the opposite conclusion.

We therefore conclude the district court clearly erred in

finding that Ethicon’s patented designs are dictated by

functional considerations and are therefore invalid as

primarily functional. Because Covidien has not met its

burden of showing that the Design Patents are invalid as

functional, we reverse the district court’s grant of sum-

mary judgment of invalidity of the Design Patents for

functionality.

2. Claim construction

Because the Design Patents are not invalid, we move

to the district court’s grant of Covidien’s motion for sum-

mary judgment of noninfringement. The district court

found the claimed trigger, torque knob, and activation

button elements of the Design Patents to be “based on

functional considerations.” Ethicon DCt, ECF No. 132, at

23–24. The district court therefore construed each claim

of the Design Patents to encompass “nothing,” factoring

out and removing every element from the scope of the

claimed designs. Id. at 24.

We review the district court’s ultimate construction de

novo, and any underlying factual findings supporting the

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 35

construction for clear error. Teva, 135 S. Ct. at 841.

Because a claimed design is better represented by an

illustration rather than a description, we have instructed

that, unlike utility patents, “the preferable course ordi-

narily will be for a district court not to attempt to ‘con-

strue’ a design patent claim by providing a detailed verbal

description of the claimed design.” Egyptian Goddess, 543

F.3d at 679. We have explained, however, that there are

a number of claim scope issues which may benefit from

verbal or written guidance, among them the distinction

between features of the claimed design that are ornamen-

tal and those that are purely functional. Id. at 680.

For purposes of validity, as discussed above in section

II.C.1., a design patent is invalid if its overall appearance

is dictated by function, and therefore primarily functional.

L.A. Gear, 988 F.2d at 1123. If the overall appearance of

a claimed design is not primarily functional, the design

claim is not invalid, even if certain elements have func-

tional purposes. Richardson, 597 F.3d at 1293–94. The

scope of that claim, however, must be limited to the

ornamental aspects of the design, and does not extend to

“the broader general design concept.” OddzOn Prods.,

Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir.

1997).

Richardson involved a claim to the ornamental design

of a multi-function carpentry tool that combined a ham-

mer with a stud climbing tool and a crowbar. 597 F.3d at

1290. There was no dispute that several individual

elements of the claimed design had functional purposes.

In particular, a portion of the hammer head was flat to

effectively deliver force to a struck object, the handle of

the tool was elongated to provide leverage, the crowbar

was at the end of the handle to reach into narrow spaces,

and a jaw was located on the opposite end of the hammer

head to allow the device to be used as a climbing step. Id.

at 1294. These elements—which composed the entirety of

the multi-function tool—had utility that had been known

36 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

and used in the art for more than a century, and were

thus outside the scope of the design claim. Id. This did

not mean, however, that the design claim had no scope.

Rather, the claim was limited to the ornamental aspects

of these functional elements. In particular, the scope of

the claim encompassed, among other ornamental aspects,

the shape of the hammer head, the diamond-shaped flare

of the crowbar and the top of the jaw, the rounded neck,

the undecorated handle, and the orientation of the crow-

bar relative to the head of the tool (which was not driven

by functional considerations, unlike the orientation of the

hammer head and crowbar at opposite ends of the han-

dle). Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998

(Fed. Cir. 2015) (discussing Richardson and citing Rich-

ardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1050

(D. Ariz. 2009)). Thus, the design claim did not broadly

protect a multi-function tool with a hammer, crowbar,

handle, and claw, but only the specific ornamental aspects

of that tool in the depicted configuration.

Similarly, in OddzOn, we limited the scope of a design

claim to ornamental features of a football-shaped ball

with a tail and fin structure, rejecting the patentee’s

argument that its design claim covered the broad general

concept of a ball with a “rocket-like” appearance. 122

F.3d at 1405. We identified the “functional qualities” of

the underlying article as its football shape combined with

fins on a tail attached at one end of the ball, which added

stability to the ball in the same manner as the tail and

fins on darts or rockets. Id. Although the existence of a

functional purpose for the football-shape, tail, and fin

elements of the underlying article did not alone invalidate

the design patent—as the claimed design also included

some purely ornamental features—such functional as-

pects at least necessitated cabining the scope of the

design claim in order to prevent the claim from encom-

passing the general design concept of a football with tails

and fins. Id. (“[T]hese functional characteristics do not

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 37

invalidate the design patent, but merely limit the scope of

the protected subject matter.”). Thus, we affirmed the

construction of the district court, which removed the

generalized football shape, tail, and fins from the scope of

the claim, limiting the design claim to its purely orna-

mental features: a “slender, straight tailshaft” and “three

fins symmetrically arranged around the tailshaft,” each

“gentl[y] curv[ing] up and outward [to] create[] a larger

surface area at the end furthest from the ball” and

“flar[ing] outwardly along the entire length of the tail-

shaft” with the “fins seemingly protrud[ing] from the

inside of the football.” Id. at 1400.

Here, the district court found that the “U”-shaped

trigger, the torque knob, and the rounded button claimed

in various combinations by the Design Patents are dictat-

ed by function. For example, the “U”-shaped trigger

operates the clamping arm of the ultrasonic shears.

Ethicon DCt, ECF No. 132, at 20. Its “open” design allows

the user to exert higher input forces by employing multi-

ple fingers, thus lessening hand fatigue and strain. Id.

The torque knob and rounded button provide functional

controls for the ultrasonic shears. Id. at 21. Their place-

ment relative to the trigger offers ergonomic access, and

the fluted shape of the torque knob permits a user to

operate the knob with one finger. Id. We agree that the

trigger, torque knob, and activation button elements of

the underlying article have functional aspects. But the

district court’s construction of the Design Patents to have

no scope whatsoever fails to account for the particular

ornamentation of the claimed design and departs from our

established legal framework for interpreting design

patent claims.

As explained in greater detail in section II.C.3., for

purposes of claim construction, the district court ignored

the facts that the trigger has a particular curved design,

the torque knob has a particular flat-front shape, and the

activation button has a particular rounded appearance.

38 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

Unlike the functionality inherent in the underlying arti-

cles themselves, there is no evidence in the record, that

any of the ornamental designs adorning those underlying

articles are essential to the use of the article. See section

II.C.1. Thus, although the Design Patents do not protect

the general design concept of an open trigger, torque

knob, and activation button in a particular configuration,

they nevertheless have some scope—the particular orna-

mental designs of those underlying elements. We there-

fore vacate the district court’s construction that the

Design Patents cover “nothing.” The scope of the Design

Patents, although limited, encompasses the depicted

ornamental aspects of certain combinations of the trigger,

torque knob, and activation button elements of ultrasonic

surgical shears, in specific relative positions and orienta-

tions.

3. Noninfringement

Although the district court construed the claims of the

Design Patents to have no scope, it performed, in the

alternative, an infringement analysis of Covidien’s ac-

cused ultrasonic shears based on a construction of the

claimed designs that retained the ornamental aspects of

the underlying trigger, torque knob, and activation button

elements. Ethicon DCt, ECF No. 132, at 24, 26–34. We

can thus evaluate the district court’s alternative grant of

summary judgment of noninfringement of the Design

Patents, because the district court apparently performed

this analysis using a correct construction of the claimed

designs.

A design patent is infringed “[i]f, in the eye of an or-

dinary observer, giving such attention as a purchaser

usually gives, two designs are substantially the same, if

the resemblance is such as to deceive such an observer,

inducing him to purchase one supposing it to be the

other.” Egyptian Goddess, 543 F.3d at 670 (quoting

Gorham Co. v. White, 81 U.S. 511, 528 (1871)). As with

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 39

utility patents, the patentee must prove infringement of a

design patent by a preponderance of the evidence. Id. at

679. Where the claimed and accused designs are “suffi-

ciently distinct” and “plainly dissimilar,” the patentee

fails to meet its burden of proving infringement as a

matter of law. Id. at 678. If the claimed and accused

designs are not plainly dissimilar, the inquiry may benefit

from comparing the claimed and accused designs with

prior art to identify differences that are not noticeable in

the abstract but would be significant to the hypothetical

ordinary observer familiar with the prior art. Id.

Differences, however, must be evaluated in the con-

text of the claimed design as a whole, and not in the

context of separate elements in isolation. Where, as here,

the claimed design includes several elements, the fact

finder must apply the ordinary observer test by compar-

ing similarities in overall designs, not similarities of

ornamental features in isolation. Richardson, 597 F.3d at

1295; Crocs, Inc. v. Int'l Trade Comm’n, 598 F.3d 1294,

1303–04 (Fed. Cir. 2010). An element-by-element com-

parison, untethered from application of the ordinary

observer inquiry to the overall design, is procedural error.

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d

1365, 1372 (Fed. Cir. 2006).

After performing a side-by-side comparison between

the claimed designs and the design of Covidien’s accused

shears, the district court concluded there could be no

genuine dispute that the claimed and accused designs

were plainly dissimilar because they “simply d[id] not

look alike except for the fact that both are hand-held

surgical devices with open trigger handles.” Ethicon DCt,

ECF No. 132, at 26, 28. The district court thus deter-

mined that even if the Design Patents had scope, the

design of Covidien’s accused shears did not infringe any of

the claimed designs. Id. at 27.

The claimed and accused designs are depicted below:

40 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

D’804 patent, Fig. 1 Covidien’s accused product

We agree with the district court that there is no genu-

ine dispute the claimed and accused designs of an ultra-

sonic surgical device are plainly dissimilar. On a general

conceptual level, both designs include an open trigger, a

small activation button, and a fluted torque knob in

relatively similar positions within the underlying ultra-

sonic device. Similarity at this conceptual level, however,

is not sufficient to demonstrate infringement of the

claimed designs. As discussed in section II.C.2., because

each of these components has a functional aspect, the

underlying elements must be excluded from the scope of

the design claims at this general conceptual level. And

when the remaining ornamental features of those compo-

nents are compared, as a whole, to the corresponding

ornamental features of Covidien’s accused ultrasonic

surgical shears, the dissimilarities between the designs

are plain.

The district court identified the most obvious differ-

ence between the claimed and accused designs as “the

overall contoured shape” of the claimed design and the

“overall linear shape” of the accused design. Id. The

district court also identified plain dissimilarities between

the ornamentation of the trigger, torque knob, and button

elements of the claimed and accused designs. For the

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 41

trigger, the district court found dissimilarities between

the proximal and distal portions of the claimed trigger

handle, which curved toward and away from the device,

respectively, and the proximal and distal portions of the

accused trigger handle, which were parallel. Id. at 28.

The district court also found differences between the

width and length of the proximal and distal handles of the

claimed and accused triggers, noting in particular that

the proximal handle of claimed design was tapered at its

end and at the portion connecting the proximal and distal

handles, while the proximal handle of the accused design

was a consistent width throughout. Id. at 29. For the

activation button, the district court found the football-

shaped button of the claimed design and the rectangular

button of the accused design to be dissimilar. Id. at 31.

As for the torque knob, the district court found dissimilar-

ities between the unevenly-tapered flutes and flat front

face with a large circular recess at its center of the

claimed design, and the evenly-tapered flutes and round-

ed front face with no recess of the accused design. Id. at

32–33. We find no error with the district court’s determi-

nation that the claimed and accused designs are plainly

dissimilar.

Ethicon does not challenge any of these specific find-

ings by the district court, but instead asserts that the

claimed and accused designs are not plainly dissimilar,

and as a result, contends that the district court should

have considered the frame of reference provided by the

prior art, which Ethicon characterizes as predominantly

featuring thumb-ring and loop-shaped triggers. However,

comparing the claimed and accused designs with the prior

art is beneficial only when the claimed and accused

designs are not plainly dissimilar. Egyptian Goddess, 543

F.3d at 678. Because the district court found the nonfunc-

tional, ornamental aspects of the claimed and accused

designs to be plainly dissimilar, it did not need to compare

the claimed and accused designs with the prior art, as

42 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

resolution of the infringement inquiry was already clear.

Id. (“In some instances, the claimed 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.”).

Ethicon also contends that the district court erred in

identifying who the ordinary observer would be. The

district court found the ordinary observer to be a sophisti-

cated entity who managed the complex medical device

purchasing process, because that entity was the ultimate

purchaser of the underlying ultrasonic surgical shears.

Ethicon DCt, ECF No.132, at 25. Ethicon argues that the

ordinary observer is the surgeon who would use the

shears.

The Supreme Court explained in Gorham that the or-

dinary observer is not an expert in the claimed designs,

but one of “ordinary acuteness” who is a “principal pur-

chaser[]” of the underlying articles with the claimed

designs. 81 U.S. at 528; Arminak & Assocs., Inc. v. Saint-

Gobain Calmar, Inc., 501 F.3d 1314, 1322–23 (Fed. Cir.

2007) (overruled on other grounds by Egyptian Goddess).

Ethicon does not dispute that it is the hospital or medical

device supplier, not the surgeon, who is ultimately re-

sponsible for purchasing the underlying articles at issue.

Regardless, we see no need to resolve this dispute because

Ethicon fails to explain how the infringement analysis

would be affected if surgeons—who are more sophisticated

than the general public—were considered to be the hypo-

thetical ordinary observer. The claimed and accused

designs are plainly dissimilar even to one less discerning

than the ordinary observer; these distinctions would only

be more evident to a sophisticated observer, whether a

purchasing entity or a surgeon.

As the district court correctly concluded, the scope of

the Design Patents “do[es] not entitle [Ethicon] to pre-

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. 43

clude others from using all styles or placements of open

triggers, fluted rotation knobs, or activation buttons.”

Ethicon DCt, ECF No. 132, at 26. Rather, because these

elements have functional purposes, the Design Patents

protect only the ornamental designs adorning those

elements, and not the general concept of an ultrasonic

surgical device having an open trigger, a fluted knob, and

a rounded button. Here, there can be no genuine dispute

that at the proper level of granularity, the claimed orna-

mental designs of the Design Patents are, as a whole,

plainly dissimilar from the ornamental design of

Covidien’s accused ultrasonic shears. Therefore, we

affirm the district court’s grant of summary judgment of

noninfringement of the Design Patents.

***

We have considered the parties’ remaining arguments

and find them unpersuasive.

III. CONCLUSION

Because one of ordinary skill in the art, in view of the

specification, would understand the scope of the claims of

the ’501 patent with reasonable certainty, we reverse the

district court’s grant of summary judgment of invalidity of

the ’501 patent for indefiniteness. We affirm the district

court’s claim construction of the term “loosely contact” in

claims 1 and 3 of the ’275 patent. We find, however, that

disputed issues of material fact remain as to whether

Covidien’s accused ultrasonic shears infringe the “config-

ured to loosely contact” and “adapted to absorb undesired

vibrations” limitations of the asserted claims. Thus, we

vacate the district court’s grant of summary judgment of

noninfringement of the asserted claims of the ’275 patent.

Because Covidien has not met its burden of showing that

the ornamental designs claimed by the Design Patents

are primarily functional, we reverse the district court’s

grant of summary judgment of invalidity of the Design

Patents. We also vacate the district court’s construction

44 ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

of the Design Patents as having no claim scope whatsoev-

er. The ornamental designs claimed by the Design Pa-

tents, however, are plainly dissimilar from the designs of

Covidien’s accused ultrasonic shears. We thus affirm the

district court’s alternative grant of summary judgment of

noninfringement of the Design Patents. Finally, we

remand to the district court for further proceedings relat-

ing to the asserted claims of the ’501 patent and the ’275

patent.

AFFIRMED IN PART, REVERSED IN PART,

VACATED IN PART, AND REMANDED

COSTS

No costs.