Mark A. Barry v. DePuy Synthes Companies, Appeal Nos. 2023-2226, -2234 (Fed. Cir. Jan. 20, 2026)

In our Case of the Week, a divided Federal Circuit panel reviewed an E.D. Pa. court’s exclusion of two experts’ testimony on infringement and damages issues in a case involving handheld surgical tools for treating spinal deformities.  The majority found the district court abused its discretion in excluding the testimony, reversed its grant of judgment as a matter of law for the defendants, and remanded for a new trial.  Circuit Judge Prost entered a dissent, arguing that the exclusions should have been upheld in both instances.

The case involved three patents owned by Dr. Mark A. Barry, an orthopedic surgeon, directed to vertebral derotation tools that can be linked to facilitate simultaneous correction of multiple misaligned vertebra.  As relevant to the appeal, two of the patents recited the term “handle means,” which the district court construed to mean “a part that is designed especially to be grasped by hand.”  Barry’s infringement expert, a Dr. Yassir, testified at trial on cross-examination that various parts of the accused tools qualified as “handle means,” including “parts that cannot be assembled without grasping them by hand,” and at one point agreed that “everything is a handle means” because “everything is linked” together.

On DePuy Synthes’ renewed Daubert motion following the presentation of testimony, the district court excluded Dr. Yassir’s testimony as having “varied from and contradicted” the court’s claim construction, and therefore unhelpful to the trier of fact.  The district court also excluded damages-related testimony of Barry’s survey expert, a Dr. Neal, who opined on the likely number of infringing uses based on a survey of 164 respondent surgeons.  The district court reasoned that Dr. Neal failed to establish the representativeness of his survey sample vis a vis the wider universe of surgeons for whom he extrapolated his results, and that the survey questions were also flawed.  Without the two experts’ testimony, the court found that Barry had failed to carry his burden of proof and granted judgement as a matter of law for DePuy Synthes.

Circuit Judge Stark, writing for the majority of himself and Judge Taranto, found that the district court abused its discretion in both instances.  As to Dr. Yassir, the majority opined that Dr. Yassir’s testimony applied the lower court’s claim construction—and did not contradict it—as he expressly opined that the various “handle means” he identified were designed especially to be grasped by hand.  The majority also found that the flaws identified with Dr. Neal’s testimony went to its weight, and not to its admissibility.  In both instances, the majority noted that the jury was free to discount or disregard either expert’s testimony if it found it unpersuasive, reciting the Supreme Court’s guidance from Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), that “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.”

Circuit Juge Prost entered a 12-page dissenting opinion, arguing that Dr. Yassir in fact contradicted the district court’s claim construction, for example because an opinion that “everything” is “handle means” is inconsistent with the court’s construction that such components must be designed “especially” to be grasped by hand.  Judge Prost noted that unhelpful testimony does not become admissible merely because the expert claims to be applying the court’s construction.  He also opined that the exclusion of Dr. Neal’s testimony was within the court’s discretion as a gatekeeper.  In both instances, Judge Prost argued that the majority applied the wrong standard of review by considering how the jury “could have” received the testimony instead of examining the bases for the court’s decisions, and that the majority’s result was also inconsistent with 2023 amendments to Federal Rule of Evidence 702 intended to tighten admissibility requirements.

The opinion can be found here.

By Jason A. Wrubleski

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US Patent No. 7,679,637 LLC v. Google LLC, Appeal No. 2024-1520 (Fed. Cir. Jan. 22, 2026)

In a case asserting infringement of an online videoconferencing patent, the Federal Circuit affirmed dismissal based on patent ineligibility under 35 U.S.C. § 101.  U.S. Patent No. 7,679,637 is directed to web conferencing systems that enable participants to view portions of a live presentation asynchronously, for example viewing already presented materials while the live presentation continues. Additionally, the patent includes “time-shifting capabilities” permitting users to “observe the session at different playback rates while maintaining substantially consistent perceived audio quality.”  The Federal Circuit applied the traditional two step analysis under Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), finding the claims to be directed to an abstract idea and “result-oriented,” with no disclosed inventive concept.

Appellant US Patent No. 7,679,637—named for the patent it owned and asserted—argued that dismissal was premature and that the district court should have granted leave to amend its complaint. The Federal Circuit rejected these arguments, reasoning amendment would be futile because no amendment to the operative complaint could change the underlying patent. The Court also rejected Appellant’s contention that the district court improperly relied on material extraneous to the pleadings; rejected Appellant’s invitation to examine Google’s patents directed to similar subject matter (finding “[t]he subject matter eligibility of Google’s patent claims is not before us”); and found that Appellant had failed to preserve an argument that claim construction was required before dismissal.

The opinion can be found here.

By Trevor Gruwell

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.