Interesting precedential decision this morning regarding induced infringement of surgical devices ("[S]urgical 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") and expert testimony.

Below, following the experts' examination during trial, defendant renewed its motions to exclude their testimony and the DCT agreed ("Dr. Yassir’s testimony with respect to whether the Accused Tools contained the required “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 . . . Dr. Neal’s 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."). Absent the expert's evidence, the infringement contentions fell out, and so the DCT likewise granted JMOL. Here, while acknowledging that "[e]xpert opinion that contradicts the court’s claim construction is not helpful to the jury and, hence, should be excluded as unreliable under Rule 702(a)." Here, however, the CAFC majority does not agree that "Dr. Yassir’s testimony . . . [contradicted] 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"). Importantly, "DePuy did not object to any portion of Yassir’s direct examination as contradictory of the court’s construction or inadmissible" despite an in limine inadmissibility ruling to that effect.

Judge Prost dissents, however, believing that the testimony was unreliable and that CAFC should defer to the district court's gatekeeping function, particularly post-EcoFactor ("We just recently convened en banc to reassert the “essential prerequisite” of a court’s reliability determination for expert testimony to be considered by a jury. See EcoFactor, Inc. v. Google LLC . . . the majority not only legally errs, it also makes no genuine attempt to explain how the district court abused its discretion in finding a contradiction of its claim construction.").

A contentious issue that will likely raise its head again and again in many different contexts.

"In Giannelli and Aspex Eyewear, we construed the term “adapted to,” not “configured to” or “configured for,” which are at issue here . . . Here, Blue Buffalo points to nothing in the claims or written description suggesting that “configured to” should be construed more narrowly than “capable of” . . . Unlike in Giannelli and Aspex Eyewear, these disclosures do not suggest that the sidewall or tool portion are specifically designed or constructed to achieve a certain objective—only that they are capable of doing so."

"This case falls squarely under Axonics. Here, the patent owner, Smart Mobile, did not propose its understanding of the scope of the limitations at issue—“plurality of antennas” and “using the plurality of antennas”—until its response after institution . . . Then the petitioner, Apple, presented argument and evidence in its reply that even under Smart Mobile’s new interpretation, Paulraj still satisfied the limitations. . . . notably, the Board refused to consider Apple’s reply arguments because it determined those arguments were “not grounded in or supported by the Petition or within the scope of reasonable reply arguments.” . . . In so refusing, the Board erred."