In a case involving both utility and design patents, the court reversed the district court’s finding of indefiniteness and grant of summary judgment of non-infringement on the utility patents and reversed the court’s finding that the design patents were invalid for being directed exclusively to functional features and affirmed the alternative finding that the design patents were not infringed.

On the issue of indefiniteness, the court held that a person of ordinary skill in the art, using matters of physics would have understood where to measure for average pressures and therefore that person would have understood the scope of the claims with reasonable certainty. 

On the issue of non-infringement, the court held that the district court correctly construed the claim, but incorrectly discounted evidence of infringement and failed to evaluate the evidence in the light most favorable to the non-moving party, the patentee.  Thus, the court vacated the grant of summary judgment and remanded.

On the issue of design patent functionality, the court held that the court erred in holding the designs functional because the court discounted the existence and availability of alternative designs.  Ethicon had presented evidence of alternative ornamental designs that could provide the same or similar functionality of the underlying designs. 

On the issue of claim construction of the design patents, the district court had held that the patents had no scope because the claimed designs were functional.  The court reversed, holding that, although features were functional, the scope of the patent is limited to the particular ornamental designs of the underlying elements. 

On the issue of infringement of the design patents, the court agreed with the district court that the non-functional, ornamental features of the accused designs were plainly dissimilar than the patented designs.  

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., Case No. 2014-1370 (August 7, 2015); Opinion by: Chen, joined by Lourie and Bryson; Appealed From: District Court for the Southern District of Ohio, Black, J.  Read the full opinion here.

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