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

Court of Appeals for the Federal Circuit
796 F.3d 1312 (2015)

ELI5:

Rule of Law:

A design patent is not invalid for functionality merely because the article it applies to serves a utilitarian purpose. If numerous alternative designs exist that could achieve the same function, the specific design is more likely to be primarily ornamental and therefore valid.

Facts:

Ethicon develops, manufactures, and sells ultrasonic surgical instruments that use high-frequency vibrating blades to cut and seal tissue and blood vessels.
Ethicon's instruments include specific functional features such as a trigger, a torque knob, and an activation button.
Ethicon obtained several design patents (the D'801, D'802, D'803, and D'804 patents) for the specific ornamental appearance of these features, including a U-shaped trigger, a fluted torque knob, and a rounded activation button.
Ethicon also obtained utility patents for the functional aspects of its surgical devices.
A competitor, Covidien, launched a line of ultrasonic surgical equipment.
Ethicon believed that Covidien's devices copied the patented ornamental designs of its instruments.

Procedural Posture:

Ethicon sued Covidien in the U.S. District Court for the Southern District of Ohio for infringement of several utility and design patents.
After discovery, Covidien filed motions for summary judgment, arguing the patents were either invalid or not infringed.
The district court granted summary judgment in favor of Covidien.
The district court ruled that Ethicon's utility patent '501 was invalid as indefinite.
The district court also ruled that Ethicon's utility patent '275 was not infringed.
The district court held that Ethicon's Design Patents were invalid as functional and, in the alternative, were not infringed.
Ethicon (appellant) appealed the district court's final judgment to the U.S. Court of Appeals for the Federal Circuit.

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Issue:

Is a design patent covering parts of a utilitarian article invalid for functionality if the underlying components serve a function, even when numerous alternative ornamental designs exist that could perform the same function?

Opinions:

Majority - Chen, Circuit Judge.

No. A design patent is not invalid for functionality simply because its components have a utilitarian purpose, especially when alternative designs are available. The district court erred by analyzing functionality at too high a level of abstraction, focusing on the general concepts of an open trigger, a button, and a knob, rather than on the specific ornamental designs claimed in the patents. The correct inquiry is not whether a trigger itself is functional, but whether the particular claimed shape and appearance of that trigger is dictated by its function. The availability of alternative designs that could perform the same function is strong evidence that the chosen design is primarily ornamental. Because Covidien failed to show by clear and convincing evidence that no other design could perform the underlying function, it did not meet its high burden to prove invalidity.

Analysis:

This decision reinforces the high bar for invalidating a design patent on functionality grounds, solidifying the principle that the existence of alternative designs is a critical, often dispositive, factor. It clarifies that the functionality analysis must focus on the specific claimed ornamental features, not the general utility of the product or its components. This protects aesthetic choices on functional products, preventing competitors from easily copying unique designs by arguing that any ergonomic or user-preferred feature is inherently functional and thus unpatentable.

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