ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.
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