US Court of Appeals rules district court abused discretion in ruling motions in DePuy Synthes case

US Court of Appeals rules district court abused discretion in ruling motions in DePuy Synthes case

Remanding the matter to a fresh trial, it leaves the decision to the jury’s discretion

The US Court of Appeals for the Federal Circuit has held that a district court abused its discretion in ruling motions to exclude two of Dr. Mark A. Barry’s experts and granting judgment as a matter of law (JMOL) to DePuy Synthes Companies.

The bench included Judge Leonard P Stark, Judge Richard G Taranto, and Judge Sharon Prost, wherein dissension came from Judge Prost.

Dr. Barry’s US Patent Nos. 7,670,358; 8,361,121; and 9,668,787 cover “surgical techniques and tools for treating spinal deformities, such as scoliosis, that cause vertebrae, which are the small bones forming the backbone, to twist out of alignment.”

The doctor alleged that certain products manufactured by DePuy, specifically ‘derotation devices’, infringed his patents when used by surgeons in certain ways.

While producing the report on infringement from Dr. Yassir, he explained how the accused products could be used for infringing the patents and meet every limitation of the claims. Dr. Barry further presented the documents by Dr. Neal, a survey expert, who, in conjunction with Dr. Yassir, determined how surgeons often used the tools in the infringing designs.

Earlier, the district court had granted DePuy’s motions to exclude the expert reports. It noted that Dr. Yassir’s testimony on the contested construction of the term ‘handle means’ was inadmissible. This was because, “‘It varied from and contradicted the court’s construction of ‘handle means’, thereby rendering it improper and unhelpful to the jury as the trier of fact.”

Regarding Dr. Neal’s survey, the district court held that his “survey methodology and results did not meet the standards of reliability required under Daubert, Federal Rule of Evidence 702(a), and Federal Rule of Evidence 403.” Since, without the reports, Dr. Barry could not prove infringement, it granted DePuy’s motion for JMOL.

However, the Court of Appeals observed that Dr. Yassir’s testimony did not contradict the district court’s claim construction.

Judge Stark and Judge Taranto stated, “It was, instead, an application of that construction that a reasonable factfinder could have either accepted as persuasive or rejected as implausible.”

They added that the disputed statements in Dr. Yassir’s testimony meant “an application of the court’s construction, not its contradiction. The 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.”

On the other hand, Judge Prost disagreed, terming Dr. Barry’s testimony “unreliable” and Dr. Neal’s survey “riddled with methodological flaws, specifically concerning the representativeness of his sample and the design of his questions.”

Judge Prost opined that the majority’s approach contravenes the recent en banc ruling in the EcoFactor v. Google case, and “will undermine district courts’ abilities to exercise their important gatekeeping function.”

But the two judges rejected the interpretation of the ruling, explaining that they agreed with Prost that “whether Dr. Yassir’s opinion contradicted the court’s construction of ‘handle means’ was a question of admissibility and, thus, was for the district court and not the jury to decide.”

They stated that Dr. Yassir’s testimony did not contradict the court’s construction and that the district court’s finding was erroneous and its ruling an abuse of discretion. The judges added that the district court’s decision to exclude Dr. Neal’s survey was an abuse of discretion.

While the district court denied DePuy’s pretrial Daubert motion to exclude Dr. Neal and his survey, the Court of Appeals granted DePuy’s renewed motion at trial.

The district court had held that the numerous design flaws identified “go to the weight, not the admissibility, of the survey.” But during the trial, it said, “It is plain that Dr.Neal’s methodology is so flawed that both his survey and testimony, based on the survey, must be excluded as unreliable.”

The Court of Appeals has now stated that it was an abuse of discretion, adding, “While the many criticisms the district court had of Dr. 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.”

At this, Judge Prost again disagreed. The judge asserted, “The majority again treats the district court’s admissibility concerns as only involving jury issues, not matters for the court. This blanket and incorrect characterization harkens back to the very approach that prompted recent amendments to Rule 702.”

Nevertheless, the Court of Appeals reversed the district court’s exclusion of the two expert doctors and its grant of JMOL. While ruling that both experts may testify further, the two judges remanded the matter for a new trial.