Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Barry v. DePuy Synthes Companies, et al.
Nos. 2023-2226, -2234 (Fed. Cir. (E.D. Pa.) Jan. 20, 2026). Opinion by Stark, joined by Taranto. Dissenting opinion by Prost.
Barry sued DePuy for induced infringement of three patents related to techniques and tools for treating spinal deformities. Prior to trial, the district court construed a claimed “handle means” as “a part that is designed especially to be grasped by the hand,” which includes “both a single handle and a linked handle array.”
Barry relied on two experts at trial: Dr. Yassir, who opined that use of the accused tools infringed the asserted patents, and Dr. Neal, a survey expert who addressed the frequency of use of the accused tools. After Barry rested his case, DePuy raised Daubert motions to exclude the portion of Dr. Yassir’s testimony relating to the “handle means” limitation and to exclude all of Dr. Neal’s testimony. DePuy also moved for judgment as a matter of law (JMOL). While trial was still ongoing, the district court granted DePuy’s motions in full.
The district court ruled that Dr. Yassir’s testimony was inadmissible because it “varied from and contradicted” the court’s construction of “handle means.” And the district court concluded that Dr. Neal’s survey methodology did not meet the reliability standards required under Daubert and Federal Rules of Evidence 403 and 702(a). After excluding both experts, the court determined that Barry could not prove infringement and thus granted DePuy’s motion for JMOL. Barry appealed.
In a divided opinion, the Federal Circuit reversed the exclusion of the expert testimony, reversed the grant of JMOL, and remanded for a new trial at which both experts will be permitted to testify.
As to Dr. Yassir’s testimony, the majority ruled that “Dr. Yassir’s testimony did not contradict the court’s claim construction. It was, instead, an application of that construction that a reasonable factfinder could have either accepted as persuasive or rejected as implausible.” The majority explained that “disputes over the application of the court’s construction are fact disputes to be resolved by the factfinder, not evidentiary issues to be decided by the court in its role as gatekeeper.”
The majority emphasized that “an effective cross-examination will almost always reveal the type of tensions and ambiguities the Dissent characterizes, wrongly in our view, as contradictions.” “Hence, adopting the Dissent’s approach—allowing a district court to treat arguable inconsistencies revealed only on cross-examination as a basis to exclude the entirety of an infringement expert’s opinion and analysis on a disputed issue, notwithstanding that the expert’s opinions survived a pre-trial Daubert challenge and were not objected to at trial as contradicting the court’s construction—could broadly undermine fair and orderly pretrial preparation and trial conduct.”
Similarly, as to Dr. Neal’s survey-related testimony, the majority ruled that “while the many criticisms the district court had of Neal and his survey may well have persuaded a reasonable jury not to place any substantial weight on his testimony, they do not justify excluding it.” “DePuy’s challenges, and the purported flaws the district court found in Neal’s survey and methodology, go to the weight the jury might accord to that evidence and not to its admissibility.”
Lastly, because the district court’s grant of JMOL was predicated on the lack of evidence in the record after the court excluded the two experts, the Federal Circuit reversed the grant of JMOL.
Judge Prost dissented because, in her view, Dr. Yassir “contradicted the court’s claim construction,” and because “Dr. Neal’s testimony regarding his survey was riddled with methodological flaws.” Relying on the en banc court’s recent EcoFactor decision “reassert[ing] the ‘essential prerequisite’ of a court’s reliability determination for expert testimony to be considered by a jury,” Judge Prost departed from the majority’s approach. In her view, “the majority’s approach—where everything’s a fact or weight issue for the jury—contravenes the principles embraced in EcoFactor and the 2023 amendments, and in [her] view will undermine district courts’ abilities to exercise their important gatekeeping function.”
US Patent No. 7,679,637 LLC v. Google LLC
No. 2024-1520 (Fed. Cir. (W.D. Wash.) Jan. 22, 2026). Opinion by Moore, joined by Hughes and Stoll.
Appellant US Patent No. 7,679,637 LLC sued Google for infringing certain claims of a patent related to web conferencing systems that include “time-shifting capabilities enabling participants to observe a session in real time, delayed while the session is still in progress, or after the session has completed.” Google moved to dismiss the complaint for failure to state a claim, arguing that the asserted claims are patent ineligible under 35 U.S.C. § 101.
The district court granted the motion, ruling that the claims are patent ineligible because they are directed to an abstract idea and do not include an inventive concept that makes the claims patent eligible.
The Federal Circuit affirmed. Addressing Alice step one, the Federal Circuit held that “the claims are directed to the patent-ineligible abstract idea of allowing asynchronous review of presentations, rather than any specific technological improvement, because they do not describe how the alleged goal of asynchronous review is achieved.” The court emphasized that the claims are result-oriented, and “the written description does not disclose any improvement to the underlying components.”
Appellant argued that Google’s own video-conference patents similarly use “functional claiming,” but the Federal Circuit rejected the argument: “The subject matter eligibility of Google’s patent claims is not before us and has no bearing on our analysis of the [Appellant’s] patent.”
Turning to Alice step two, the Appellant argued two inventive concepts, but the Federal Circuit disagreed that either one “transforms the nature of the claims into a patent-eligible application.” For the Appellant’s first concept, the Federal Circuit ruled that, “as the specification makes clear, the claimed client applications are conventional, well-known components, operating according to their ordinary functions to manipulate conventional data streams,” which “cannot amount to an inventive concept.” For the Appellant’s second concept, the court ruled that “the specification confirms the timescale modification component was a conventional component implemented using off-the-shelf algorithms from related audio contexts.”
Lastly, the Appellant argued that, as a procedural matter, the district court erred by deciding patent eligibility at the motion to dismiss stage and should have granted Appellant leave to amend its complaint. The Federal Circuit disagreed, explaining that “no amendment to the complaint can alter what the [Appellant’s] patent itself states regarding the conventionality of the client applications, data streams, and time-scale modification components discussed in the eligibility analysis detailed above.”