  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.
