Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

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.

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ALSO THIS WEEK

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.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder

Contributor:

Trevor Gruwell, Associate