Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc.
774 F.3d 968
| Fed. Cir. | 2014Background
- Tyco sued Ethicon for infringement of Tyco’s ’050, ’286, and ’544 patents on ultrasonic surgical devices.
- The district court found Ethicon Prototype anticipates 26 claims under §102(g) but not §103, and held Curved Blade/Dual Cam Claims non-obvious.
- The court held remaining claims would not be obvious and awarded Tyco damages of $176 million.
- Ethicon appeals on §103/§102(g) interplay; Tyco cross-appeals on anticipation under §102(g).
- Prior art considered: Ethicon Prototype, Davison patent, and ’662 patent; Ethicon Prototype conceived before Tyco’s January 1997 date with reduction to practice by October 1997.
- On appeal, the court held Ethicon Prototype is §102(g) prior art; erred in excluding it from §103 analysis; Curved Blade and Dual Cam Claims are obvious in light of the cited art; damages vacated.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Ethicon Prototype §102(g) prior art and anticipatory? | Tyco argues prototype predates Tyco’s date and was reduced to practice diligently. | Ethicon contends conception followed by diligent reduction supports §102(g) anticipation. | Yes; Ethicon Prototype anticipates the 26 claims under §102(g). |
| Can Ethicon Prototype serve as §103 prior art when §102(g) applies? | Tyco asserts §102(g) prior art cannot be used for §103 unless pre-conception reduction to practice. | Ethicon argues §102(g) prior art can be used for §103 analysis. | Yes; prototype may be used in §103 analysis. The district court erred by excluding it.5 |
| Are Curved Blade Claims obvious in view of Ethicon Prototype and Davison? | Tyco says obvious combination of curved blade benefits with Ethicon Prototype. | Ethicon contends no predictable combination would render it obvious. | Obvious; Curved Blade Claims invalid under §103." |
| Are Dual Cam Claims obvious in view of Ethicon Prototype and ’662 patent? | Tyco argues switching to dual cam is obvious modification. | Ethicon argues obvious redesign to accommodate larger blade. | Obvious; Dual Cam Claims invalid under §103. |
Key Cases Cited
- Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984) (§102(g) prior art may serve as §103 prior art (anticipation/obviousness context))
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness standard; common sense approach to combining prior art)
- Fox Group, Inc. v. Cree, Inc., 700 F.3d 1300 (Fed. Cir. 2012) (conception and diligence considerations under §102(g))
- In re Clemens, 622 F.2d 1029 (CCPA 1980) (prior art known to the art; caution on ‘unknown to the art’ concept)
- E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed. Cir. 1988) (overriding concerns on prior art and concealment/abandonment)