Split CAFC Says Disputed Aspects of Testimony by Doctor’s Experts are for Jury to Parse

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Tuesday, January 20, concluding that a district court abused its discretion in granting 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 panel included Judges Stark, Taranto and Prost and Judge Stark dissented.

Barry’s U.S. 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,” according to the opinion. He alleged that certain products manufactured by DePuy, specifically “derotation devices”, infringed the patents when used by surgeons in certain ways. Barry produced an expert report on infringement from Dr. Yassir, which showed how the accused products could be used to infringe the patents and meet every limitation of the claims, and Dr. Neal, a survey expert who developed a survey in conjunction with Dr. Yassir to determine how often surgeons used the accused tools in the infringing configurations.

The district court ultimately granted DePuy’s motions to exclude the expert reports because it found that Dr. Yassir’s testimony as to the contested construction of the term “handle means” was inadmissible 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.” And with respect to Dr. Neal’s survey, the 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.” Without these reports the court found Barry could not prove infringement and it thus granted DePuy’s motion for JMOL.

But in its analysis, the CAFC majority found 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,” said the CAFC. The majority further stated that the disputed statements in Yassir’s testimony amounted to an “application of the court’s construction, not a contradiction of it,” and 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.”

Judge Prost disagreed with the majority, calling Barry’s experts’ testimony “unreliable” overall, and Dr. Neal’s survey “riddled with methodological flaws, specifically concerning the representativeness of his sample and the design of his questions.” Prost opined that the majority’s approach contravenes the recent en banc ruling in EcoFactor v. Google and “will undermine district courts’ abilities to exercise their important gatekeeping function.”

But the majority rejected that interpretation of its ruling, explaining that it agreed with Prost that “whether 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.” The majority simply found that Yassir’s testimony did not contradict the court’s construction and that the district court’s finding was thus erroneous and its ruling an abuse of discretion.

The CAFC also found 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 granted DePuy’s renewed motion at trial. The district court originally found the numerous design flaws it identified  “go to the weight, not the admissibility, of the survey,”  but at trial said “It is plain that Neal’s methodology is so flawed that both his survey and testimony – which he bases on that survey – must be excluded as unreliable.” The CAFC said this was an abuse of discretion and that “[w]hile 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.”

Prost again disagreed with the majority, asserting that “the majority again treats the district court’s admissibility concerns as only involving jury issues, not matters for the court.” According to Prost, “[t]his blanket—and incorrect—characterization harkens back to the very approach that prompted recent amendments to Rule 702.”

The CAFC ultimately reversed the district court’s exclusion of the two experts, reversed its its grant of JMOL, and remanded for a new trial “at which both experts may testify.”