The Federal Circuit in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., No. 14-1370 (Fed. Cir. Aug. 7, 2015), saved a patentee and reversed a district court’s holding that claims specifying clamping pressures were indefinite. The trial court found that neither the specification nor the understanding in the art specified a method of measuring the clamping pressures applied by an ultrasonic surgical blade.
The Federal Circuit reversed finding that the specification disclosed that the claimed pressures were average pressures on tissue. The Court found next that skilled artisans would rely on basic concepts of physic and mathematics to understand that the pressures recited by the claims could be determined by measuring the clamping force at the midpoint of the tissue pad and clamping arm and blade. Whew!
Still, while patentees may assume that PHOSITAs are capable of applying basic concepts of physics and math, best practices counsel disclosure in the patent specification of the measurement methods and conditions from which the performance or measurement based claim limitations result – doing so can save significant time and expense.