Tyco Healthcare Grp. Lp v. Ethicon Endo-Surgery, Inc. , 774 F.3d 968 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
TYCO HEALTHCARE GROUP LP AND
UNITED STATES SURGICAL CORPORATION,
Plaintiffs-Cross-Appellants,
v.
ETHICON ENDO-SURGERY, INC.,
Defendant-Appellant.
______________________
2013-1324, -1381
______________________
Appeals from the United States District Court for the
District of Connecticut in No. 10-CV-0060, Judge Janet
Bond Arterton.
______________________
Decided: December 4, 2014
______________________
DREW M. WINTRINGHAM, DLA Piper LLP (US), of New
York, New York, argued for plaintiffs-cross-appellants.
With him on the brief were FRANCIS W. RYAN, IV, and
STANLEY J. PANIKOWSKI, III.
WILLIAM F. CAVANAUGH, JR. Patterson Belknap Webb
& Tyler LLP, of New York, New York, argued for defend-
ant-appellant. Of counsel on the brief were DIANNE B.
ELDERKIN, BARBARA L. MULLIN, and STEVEN D.
MASLOWSKI, Akin Gump Strauss Hauer & Feld LLP, of
Philadelphia, Pennsylvania.
2 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
______________________
Before PROST, Chief Judge, REYNA and HUGHES, Circuit
Judges.
PROST, Chief Judge.
Ethicon Endo-Surgery, Inc. appeals from a U.S.
District Court for the District of Connecticut judgment
that certain asserted claims of Tyco Healthcare Group
LP’s U.S. Patent Nos. 6,682,544 (“’544 patent”), 6,063,050
(“’050 patent”), and 6,468,286 (“’286 patent”) would not
have been obvious under 35 U.S.C. § 103. Tyco cross-
appeals from the district court’s conclusion that the other
asserted claims are anticipated under 35 U.S.C. § 102(g).
Because the court’s § 102(g) findings were correct, but its
§ 103 determination was improper, including its decision
to exclude the § 102(g) prior art from the obviousness
analysis, we affirm-in-part, reverse-in-part, and vacate-in-
part.
BACKGROUND
On January 14, 2010, Tyco initiated an action against
Ethicon alleging, inter alia, that Ethicon’s ultrasonic
cutting and coagulating surgical devices infringe claims 1,
5 and 9–12 of the ’050 patent, claims 1 and 6–15 of the
’286 patent, and claims 1–3, 6, 8–13, 16, 18, and 23–25 of
the ’544 patent.
I. The Asserted Patents
The asserted patents generally disclose a surgical de-
vice, such as the one depicted in Figure 12 of the ’050
patent below, that employs ultrasonic energy to cut and
coagulate tissue in surgery. See, e.g., ’050 patent col. 1 ll.
54–58. The device includes a stationary and movable
handle at one end and a shaft with a tube within a tube
construction at the other. Id. at col. 11 ll. 1–3, col. 12 ll.
9–14. A clamp and a curved blade sit at the distal end of
the shaft. Id. at col. 5 ll. 39–45. The clamp opens and
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 3
shuts like a jaw against the blade via a dual cam mecha-
nism. Id. at col. 11 ll. 40–42, col. 12 ll. 44–53.
One embodiment of the ’050 patent discloses that, to
grasp tissue, a surgeon fits the shaft of the device through
a trocar holding open a small incision in a patient and, by
engaging the movable handle, the inner tube of the shaft
advances toward the blade-end of the device, which re-
sults in closing the clamp against the blade through the
dual cam mechanism. Id. at col. 11 ll. 1–42. Using a
generator, transducer, and vibration coupler, the surgical
device delivers ultrasonic energy to cut and coagulate
tissue through rapid vibrations. Id. at col. 11 ll. 42–49.
II. The Prior Art
Relevant to this appeal, Ethicon argued that the
asserted claims are invalid as either anticipated or obvi-
ous based on the following prior art: (1) a prototype of an
ultrasonic surgical device that Ethicon developed (“Ethi-
con Prototype”); (2) U.S. Patent No. 5,322,055 (“Davison
patent”); (3) and European Patent No. 0 503 662 (“’662
patent”). Tyco maintains that the earliest date of concep-
tion for the claimed invention is January 1997, and that it
was reduced to practice in March 1997.
A. The Davison Patent and the Ethicon Prototype
In 1993, Ultracision, Inc. commercialized an ultrason-
ic surgical device similar to the claimed invention, as
shown in Figure 1 below. The device includes a shaft
capable of fitting through a trocar with a ten millimeter
4 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
diameter. In 1994, Ultracision obtained the Davison
patent covering that invention. The Davison patent
describes and depicts both straight and curved blade-
clamp configurations, such as Figure 8p depicted below.
It further discloses that a benefit of using a curved blade
is that it “facilitates treatment of tissue at awkward
angles of approach.” Davison patent col. 13 ll. 23–24.
Ultracision then worked to modify the design of the
patented device so that it could fit through a trocar with a
five millimeter diameter, as a narrower trocar improves
the effectiveness of surgery by minimizing the size of the
incision site. By November 1995, Ultracision had built
and tested a prototype with this modified design that
could cut and coagulate tissue.
After Ethicon acquired Ultracision at the end of 1995,
Ethicon worked to perfect the modified design for com-
mercialization. As depicted in the drawing below, Ethicon
completed this design (the Ethicon Prototype) by Novem-
ber 1996. The Ethicon Prototype employed a single pin
and slot design and could successfully cut and coagulate
tissue by December 1996. Ethicon nevertheless sought to
increase the size of the blade so that the device could cut
and seal larger blood vessels, and modified the clamp to
use two pins and two slots to accommodate the larger
blade.
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 5
J.A. 12133.
From August to December 1997, the Ethicon Proto-
type, with the increased blade size and pair of pins and
slots, successfully cut and sealed large vessels. The Food
and Drug Administration (FDA) approved it for commer-
cialization in April 1998, and Ethicon launched products
based on the prototype in August 1998. Ethicon had also
filed patent applications covering the Ethicon Prototype
in October 1997. These applications resulted in U.S.
Patent Nos. 5,873,873 and 5,980,510, which issued in
1999 (“Ethicon patents”).
B. The ’662 Patent
The ’662 patent, filed in 1992, discloses an invention
for an “approximating apparatus for jaw structure in
surgical instrumentation.” In an embodiment, depicted in
Figure 4 below, the device employs a pair of camming
members and camming slots to open and close the jaw.
’662 patent col 2. ll. 43–45, col. 3 ll. 4–7.
6 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
The ’662 patent explains that the “[c]amming pins, at-
tached to the movable jaw structure, ride in parallel
diagonal slots in the camming plate.” Id. at col. 3 ll. 4–7.
The ’662 patent further discloses that the jaw structure
can be used for many surgical purposes including “grip-
pers, graspers, dissectors, cutters, measurers, staplers,
etc.” Id. at col. 2 ll. 43–46.
II. District Court Proceedings
Relevant to this appeal, claim 15 of the ’286 patent
and claims 6 and 8 of the ’544 patent generally recite a
device with a curved blade (“Curved Blade Claims”). The
court construed the Curved Blade Claims to similarly
require that the blade’s length deviates from a straight
line. Claims 11 and 12 of the ’050 patent and claim 8 of
the ’286 patent generally recite that the clamp closes
against the blade via a dual cam mechanism that consists
of “cam members” or “camming members,” as well as cam
“slots” (“Dual Cam Claims”). The court construed “cam
members” and “camming members” as “the follower parts
of the cam mechanism that are imparted motion by the
cam slots and whose motion is guided by the cam slots,”
and cam “slots” as “openings or grooves that impart
motion to and guide the motion of the camming mem-
bers.” J.A. 6521–22. The parties do not contest any of the
district court’s constructions here.
The district court held on summary judgment that
Ethicon’s accused devices infringed certain asserted
claims, including claim 15 of the ’286 patent, one of the
Curved Blade Claims. The court did not enter final
judgment at that time, though, reasoning that if Ethicon
succeeded on its invalidity defense at trial, the court’s
infringement findings would be moot.
After a bench trial, the court concluded that Ethicon
infringed each asserted claim. The court held, however,
that the Ethicon Prototype anticipates twenty-six of the
asserted claims under § 102(g). The court found that
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 7
Ethicon conceived of the prototype before Tyco’s January
1997 conception date, worked diligently to constructively
reduce it to practice when it filed the patent applications
covering it in October 1997, and did not abandon, sup-
press, or conceal it thereafter. Having concluded that the
Ethicon Prototype constitutes prior art under § 102(g), the
court nonetheless held that the prototype could not serve
as prior art under § 103 because Ethicon did not establish
reduction to practice before Tyco reduced its invention to
practice, and because the prototype was not known in the
art at the time of Tyco’s invention.
The court then determined that the remaining claims,
the Curved Blade Claims and Dual Cam Claims, would
not have been obvious in view of the Davison patent and
the ’662 patent. As to the Curved Blade Claims, the court
only considered the Davison patent as prior art. The
court distinguished the Davison patent as teaching away
from using a curved blade because its preferred embodi-
ment discloses a straight blade. The court further noted
that the Davison patent refers to the benefit of a curved
blade as facilitating “treatment at awkward angles of
approach,” whereas the asserted patents disclose the
benefit of “additional blade force” from a curved blade. In
addition, the court found that the Davison patent provides
“no guidance for how one would affix such a curved blade
to the clamp arm.” J.A. 60.
As to the Dual Cam Claims, the court held that the
Davison patent does not disclose use of a camming mech-
anism, and that the switch from a single cam to dual cam
mechanism was “far from insignificant.” J.A. 63. The
court additionally distinguished the ’662 patent as not
disclosing a device that employs ultrasonic energy.
Because the district court found that neither the
Curved Blade Claims nor the Dual Cam Claims are
invalid, it awarded Tyco damages for Ethicon’s infringe-
ment of those claims in the amount of $176 million.
8 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
Ethicon appeals the district court’s decision, and Tyco
cross-appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
A party challenging the validity of a patent must es-
tablish invalidity by clear and convincing evidence. See
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242
(2011). Anticipation is a question of fact reviewed for
clear error after a bench trial. Forest Labs., Inc. v. Ivax
Pharms., Inc., 501 F.3d 1263, 1268 (Fed. Cir. 2007).
Following a bench trial on the issue of obviousness, we
review the court’s ultimate legal conclusions de novo and
the underlying factual findings for clear error. Novo
Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346,
1354 (Fed. Cir. 2013).
The parties raise several issues on appeal. We turn
first to Tyco’s cross-appeal challenging the district court’s
determination that the Ethicon Prototype anticipates
twenty-six of the asserted claims under § 102(g). Thereaf-
ter, we address Ethicon’s appeal of the court’s decision to
exclude the Ethicon Prototype as prior art under § 103,
even though the court previously held that it constituted
prior art under § 102(g). Finally, we review the court’s
finding that the Curved Blade Claims and Dual Cam
Claims would not have been obvious under § 103.
I. Anticipation
The district court properly held that the Ethicon
Prototype anticipates twenty-six of the asserted claims
because Ethicon conceived of the prototype before Tyco’s
January 1997 conception date and diligently reduced it to
practice without abandoning, suppressing, or concealing it
thereafter.
Under § 102(g), Ethicon can establish that its Proto-
type was prior art by proving “either that it reduced its
invention to practice first or that it conceived of the
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 9
invention first and was diligent in reducing it to practice.”
Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1304 (Fed. Cir.
2012).
“[T]he test for conception is whether the inventor had
an idea that was definite and permanent enough that one
skilled in the art could understand the invention.” Bur-
roughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223,
1228 (Fed. Cir. 1994). Though the inventor should have
“a specific, settled idea,” the inventor “need not know that
his invention will work for conception to be complete. He
need only show that he had the idea . . . .” Id. (citation
omitted).
To establish diligence in reduction to practice, the
“basic inquiry is whether . . . there was reasonably con-
tinuing activity to reduce the invention to practice.”
Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006).
And, the inventor must not abandon, suppress, or conceal
the invention after he or she reduces it to practice. Dow
Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1342
(Fed. Cir. 2001). The filing of a patent application is
constructive reduction to practice of the invention dis-
closed therein, and failing to file such an application
within a reasonable time after first making the invention
may constitute such abandonment, suppression, or con-
cealment. Id. at 1337, 1342.
Tyco argues on cross-appeal that because Ethicon
made changes to design features of the prototype, such as
replacing the single cam with a dual cam mechanism,
Ethicon did not establish prior conception. Tyco further
asserts that Ethicon failed to show diligence through the
date of constructive reduction to practice in October 1997,
arguing that there was a gap in weekly records from
September 1996 to February 1997.
As the district court properly found, however, the
Ethicon Prototype, originated by Ultracision and perfect-
ed by Ethicon, existed in the form of detailed drawings
10 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
and physical embodiments in 1996, before Tyco’s concep-
tion date of January 1997. Based on this evidence and
corroborating testimony, there was a “definite and per-
manent idea” of an ultrasonic surgical device that could
cut and coagulate and fit down a five millimeter trocar.
This idea persisted despite Ethicon’s limited design
changes to only the cam mechanism and blade size, which
is not a feature that the twenty-six anticipated claims
recite. Ethicon’s design changes therefore do not preclude
the district court’s finding of prior conception.
The district court also correctly determined that the
record established Ethicon’s “reasonable continuing
activity” to reduce the invention to practice from April
1996 to the filing of the application in October 1997.
Contrary to Tyco’s assertion, there was no gap in this
activity between September 1996 and February 1997, as
the record contains lab results, reports showing due dates
and milestones, and similar types of evidence demonstrat-
ing diligent reduction to practice within the relevant time
period. Tyco does not dispute the district court’s correct
determination that the record is “devoid of any evidence
that Ethicon ‘unreasonably delayed’ the public disclosure
of its invention,” and that Ethicon therefore did not
abandon, suppress, or conceal it “once it had reduced it to
practice.” J.A. 48.
Finally, we decline to address Tyco’s further argu-
ment on cross-appeal that the applications for the Ethicon
patents, which cover the Ethicon Prototype, do not satisfy
the written description and enablement requirements
under 35 U.S.C. § 112. First, we find this inquiry to be
irrelevant to the determination of whether the Ethicon
Prototype itself qualifies as prior art under § 102(g).
Second, the parties’ experts agreed that the Ethicon
Prototype discloses all features recited in the twenty-six
claims at issue. Having established prior conception and
diligent reduction to practice, the district court correctly
found that the Ethicon Prototype anticipates those twen-
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 11
ty-six claims under § 102(g).
II. Obviousness
The district court improperly held that the Ethicon
Prototype could not be considered prior art under § 103,
and erred in finding that the Curved Blade Claims and
Dual Claims would not have been obvious.
A. Section 102(g) Prior Art as Section 103 Prior Art
The obviousness determination requires an objective
analysis, which focuses on what a person of ordinary skill
would have known at the time of invention. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Relying on Kimberly-Clark Corp. v. Johnson & John-
son, 745 F.2d 1437 (Fed. Cir. 1984), Tyco asserts that the
Ethicon Prototype cannot serve as prior art under § 102(g)
because there was no reduction to practice before Tyco’s
priority date. Tyco contends that the absence of prior
reduction to practice is dispositive of the issue, but also
argues that based on In re Clemens, 622 F.2d 1029, 1039-
40 (CCPA 1980), § 102(g) prior art cannot be prior art
under § 103 if it was “unknown to both the applicant and
the art at the time the applicant makes his invention,”
because doing so would “establish a standard for patenta-
bility in which an applicant’s contribution would be
measured against secret prior art.”
The district court erred when it inconsistently applied
§ 102(g) to the Ethicon Prototype by not requiring prior
reduction to practice for anticipation purposes but requir-
ing it for the obviousness analysis. The clear language of
§ 102(g) does not require prior reduction to practice so
long as the inventor can prove that he or she conceived of
the invention first and was diligent in later reducing it to
practice. Fox, 700 F.2d at 1304. Here, the district court
already determined that the Ethicon Prototype satisfied
this statutory provision when it held that the prototype
anticipates the other twenty-six asserted claims. In
12 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
Kimberly-Clark, we held that § 102(g) prior art estab-
lished by prior reduction to practice could constitute prior
art under § 103. 745 F.2d at 1444–45. That holding,
however, does not preclude an invention from satisfying
§ 102(g) through prior conception and later diligent reduc-
tion to practice. That was simply not at issue in Kimber-
ly-Clark. We therefore hold that neither § 102(g) nor
§ 103 make prior reduction to practice the only avenue
through which § 102(g) prior art can constitute prior art
under § 103. And Tyco’s reliance on Kimberly-Clark as
requiring otherwise is misplaced.
Furthermore, the clear language of § 102(g) and § 103
contains no requirement that a prior invention under
§ 102(g) be “known to the art” or the patentee at the time
of invention to constitute prior art under § 103. To the
extent that our predecessor court inserted such a re-
quirement into § 102(g) in In re Clemens, we discontinued
that requirement as dictum in E.I. du Pont de Nemours &
Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437 (Fed.
Cir. 1988) (“the alternative Clemens requirement that the
prior work be ‘known to the art’ is . . . implicitly dismissed
as dictum”). We are cognizant of the concern in In re
Clemens that an applicant’s contribution should not be
measured against “secret” prior art, as this could be
detrimental to the “innovative spirit the patent laws are
intended to kindle.” 622 F.2d at 1040. As we recognized
in du Pont, however, the requirement in § 102(g) that the
prior invention not be abandoned, suppressed, or con-
cealed after reduction to practice “does mollify somewhat
the ‘secret’ nature of § 102(g) prior art.” 849 F.2d at 1437.
This specific requirement in § 102(g) sufficiently
encourages public disclosure and aligns with the intent of
our patent laws. In addition, the provisions of § 103
themselves provide further support for this conclusion.
For instance, § 103(c) creates an exception (though inap-
plicable here) for when § 102(g) prior art may not qualify
as prior art for obviousness purposes. The presence of
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 13
this exception strongly indicates that the statute itself
contemplates that § 102(g) prior art may constitute prior
art under § 103. Thus, absent the application of a statu-
tory exception, § 102(g) prior art may serve as prior art
under § 103. The district court should have therefore
considered the Ethicon Prototype as prior art for obvious-
ness purposes, having already determined that the proto-
type is prior art under § 102(g).
B. Curved Blade Claims
Claims would have been obvious if they are nothing
more than a combination of familiar elements that yield
predictable results. KSR, 550 U.S. at 417. The district
court should have concluded that the Curved Blade
Claims would have been obvious in view of the Ethicon
Prototype and the Davison patent.
In finding that the Curved Blade Claims would not
have been obvious, the district court not only ignored the
Ethicon Prototype as prior art, but also improperly distin-
guished the Davison patent. For example, the court noted
that the Davison patent discloses benefits of a curved
blade different from the asserted patents’ disclosed bene-
fit of “additional blade force.” When a claimed invention
involves a combination of elements, however, any need or
problem known in the relevant field of endeavor at the
time of invention can provide a reason to combine. See
KSR, 550 U.S. at 420–21. Moreover, the prior art need
not address the exact problem that the patentee sought to
resolve. Id. The Davison patent’s disclosure of the bene-
fit of a curved blade as facilitating “treatment at awkward
angles of approach” would have provided a person of
ordinary skill in the art with sufficient motivation to use
a curved blade.
The court also determined that the Davison patent’s
preferred embodiment teaches a straight blade, and that
“only two of the fifteen blade designs show curved blades.”
Yet simply because the curved blade configurations are
14 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
not preferred embodiments does not result in the Davison
patent teaching away from use of a curved blade, “absent
clear discouragement of that combination.” Santarus, Inc.
v. Par Pharm., Inc., 694 F.3d 1344, 1356 (Fed. Cir. 2012)
(citations omitted). The Davison patent contains no such
discouragement.
The court further erred in distinguishing the Davison
patent on the basis that it does not disclose how to affix a
curved blade to the clamp arm. The Curved Blade Claims
do not require that the blade be affixed to the clamp arm.
For instance, claim 15 of the ’286 patent, which depends
from claim 7, only requires that the clamp arm be “sup-
ported adjacent to” the blade. And, even so, the Ethicon
Prototype, which the district court did not consider in its
analysis, includes such an affixed blade and clamp arm.
We therefore conclude that a person of ordinary skill
would have been able to combine these known prior art
elements to achieve a curved blade affixed to a clamp
arm. KSR, 550 U.S. at 420–21 (“A person of ordinary skill
is also a person of ordinary creativity, not an automa-
ton.”).
Tyco argues that one of the Davison patent’s embodi-
ments, Figure 8q, discourages combining the curved blade
with the clamp because the clamp would only contact the
blade at its tip and “wouldn’t be a particularly useful
clamp.” Appellee’s Br. 42. Not only does Tyco’s argument
regarding Figure 8q ignore the presumption of enable-
ment, but it also ignores that, as already explained, one of
ordinary skill is also one of “ordinary creativity” that
knows how to combine familiar prior art elements to
achieve the same functions. See KSR, 550 U.S. at 420–21;
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1355 (Fed. Cir. 2003). Tyco’s assertion that such a
clamp would not be “particularly useful” does not preclude
our finding that a person of ordinary skill would have
combined the curved blade depicted in Figure 8q, or the
curved blade shown in Figure 8p that Tyco does not
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 15
address, with the clamp in a way that would be useful.
The parties do not dispute that both the Davison pa-
tent and the Ethicon Prototype disclose ultrasonic surgi-
cal devices, a fact which situates them clearly within a
common field of endeavor. Wyers v. Master Lock Co., 616
F.3d 1231, 1237 (Fed. Cir. 2010) (holding one prior art
reference to be “clearly within the same field of endeavor”
as another). While the Ethicon Prototype employs a
straight blade instead of the claimed curved blade, the
Davison patent discloses a “curved” blade-clamp configu-
ration. A person of ordinary skill would have been readily
motivated to employ the disclosed benefits of Davison’s
curved blade in the Ethicon Prototype, which includes
treating tissue at “awkward angles of approach.”
Thus, the Curved Claims are invalid under § 103 be-
cause, in view of the Davison patent, it would have been
obvious to one of ordinary skill to replace the straight
blade of the Ethicon Prototype with a curved blade.
C. Dual Cam Claims
The Dual Cam Claims would have been obvious in
view of the Ethicon Prototype and the ’662 patent.
Tyco argues that switching from a single cam to a
dual cam mechanism in an ultrasonic device would not
have been an obvious design decision. Tyco asserts that,
because Ethicon purportedly reviewed forty re-design
ideas before making that change, the district court cor-
rectly concluded that the difference between a single cam
and dual cams is far from trivial. Tyco further contends
that the district court properly distinguished the ’662
patent as not disclosing an ultrasonic device.
Ethicon responds that it would have been obvious to
modify the single cam design of the Ethicon Prototype to a
dual cam design, as it successfully did in 1997. Ethicon
additionally argues that this switch to a dual cam mecha-
nism to accommodate a larger blade was not as significant
16 TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC.
as Tyco suggests, referring to Tyco’s expert’s testimony
that the “obvious way to turn [a single cam] into two cams
is just to split this cam right down the middle.” J.A. 3839.
Though the expert suggested that the method was “not
going to be a good way to give . . . a working dual cam
mechanism,” he later acknowledged that the dual cam in
the accused devices, which the FDA approved and Ethicon
produced commercially, resulted from that very method.
J.A. 3839, 3917. Tyco’s expert also agreed that the single
and dual cam mechanism operate in the same way, which
suggests that the switch from a single cam to a dual cam
was more trivial than Tyco alleges.
And, even if the Ethicon Prototype alone may not be
dispositive of the issue, the Dual Cam Claims are certain-
ly obvious in view of the Ethicon Prototype and the ’662
patent combined. While the ’662 patent does not disclose
an ultrasonic surgical device, and therefore does not share
the same field of endeavor, the ’662 patent is nevertheless
analogous art because it is “reasonably pertinent to the
particular problem with which the inventor is involved.”
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed.
Cir. 2010); see also Wyers, 616 F.3d at 1238 (explaining
that KSR directs us to construe the scope of analogous art
broadly). Here, the ’662 patent is reasonably pertinent
because it clearly discloses a movable “jaw structure for
surgical instrumentation,” employing a pair of pins and
slots for gripping and grasping, which is similar to the
claimed invention’s movable jaw to grasp tissue via a dual
cam mechanism. The ’662 patent explicitly discloses that
a wide variety of surgical devices can use the jaw struc-
ture for not only gripping and grasping, but also for
cutting and dissecting. That the ’662 patent does not
involve the use of ultrasonic energy is thus irrelevant. As
Ethicon’s expert testified, the issue of “mechanical open-
ing and shutting of jaws . . . is a common design issue”
that is “not unique to ultrasonic instruments.” J.A. 3039.
Furthermore, there is no evidence demonstrating any
TYCO HEALTHCARE GRP. LP v. ETHICON ENDO-SURGERY, INC. 17
meaningful relation between cam mechanisms and the
type of energy a surgical device employs.
Thus, the Dual Cam Claims are invalid under § 103
because it would have been obvious for a person of ordi-
nary skill to modify the single cam of the Ethicon Proto-
type with the dual cam mechanism of the ’662 patent.
We have considered Tyco’s remaining arguments con-
cerning invalidity and find them unpersuasive.
CONCLUSION
We affirm the district court’s determination that
twenty-six of the asserted claims are invalid under
§ 102(g). Because we reverse the court’s decision regard-
ing § 103 prior art and finding that the remaining Curved
Blade Claims and Dual Cam Claims would not have been
obvious, we vacate Tyco’s damages award. Based thereon,
we decline to reach the remaining issues on appeal and
cross-appeal.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART