Barry v. Depuy Synthes Prods.

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DR. MARK BARRY, Plaintiff, v. DEPUY SYNTHES PRODUCTS, INC., et al., Defendants.

Civ. No. 17-3003

United States District Court, E.D. Pennsylvania

July 31, 2023

MEMORANDUM

Paul S. Diamond, J.

On June 26, 2023, after seven days of trial in this patent infringement suit, I granted Defendants' Motion for Judgment as a Matter of Law. (Doc. No. 253.) That decision turned largely on my earlier exclusion under Daubert of the testimony of Plaintiff's survey expert Dr David Neal. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993); Fed.R.Civ.P. 50(a). At that time, I indicated that I would issue Memoranda explaining my decisions more fully. (Doc. Nos. 252, 253.) I issued the Daubert Memorandum on July 28, 2023. (Doc. No. 270.) I issue this Memorandum to explain my Rule 50(a) analysis.

I. BACKGROUND

A. Proving Patent Infringement

A patent infringement analysis involves: (1) claim construction, and (2) the application of the construed claim to the accused method or system. Advanced Med. Optics, Inc. v. Alcon, Inc., 361 F.Supp.2d 404, 408 (D. Del. 2005) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996)); EMC Corp. v. Pure Storage, Inc., 154 F.Supp.3d 81, 95 (D. Del. 2016).

Claim construction, is “simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.” Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (quoting Embrex, Inc., v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000)). “Patent claims are construed from the perspective of one of ordinary skill in the art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). In the instant case- involving systems and methods of correcting spinal deformities-a person of ordinary skill in the art would have: “(1) an undergraduate degree in Mechanical or Biomedical Engineering, or its equivalent, or a medical degree, or its equivalent; and (2) at least two to three years of experience with fixation implants and methods and systems for scoliosis or spinal deformity correction.” (Doc. No. 171-4 at 2.)

Once a district court has construed the relevant claim terms, “that legal determination governs for purposes of trial. No party may contradict the court's construction to a jury.” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009).

The second step of the infringement analysis involves a determination of whether the accused system or method contains each limitation of the properly construed claims. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1357-58 (Fed. Cir. 2005); see Trinity Indus., Inc. v. Road Sys., Inc., 121 F.Supp.2d 1028, 1033 (E.D. Tex. 2000) (“Claim limitations are the words in a patent claim that delineate the necessary elements of the patented invention.”).

The patent owner has the burden of proving infringement by a preponderance of the evidence. EMC Corp., 154 F.Supp.3d at 95.

B. Patents at Issue

Plaintiff Dr. Mark Barry is a retired pediatric orthopedic surgeon and “an inventor of the patents in this case.” (Trial Day 1 Tr. at 107:23-25, 110:8-9.) Once again, the Patents-in-suit relate to the correction of spinal deformities. In severe spinal deformity cases, such as scoliosis, the vertebrae twist and rotate out of alignment. (Doc. No. 215 at 5.) Three of Dr. Barry's patents cover methods or systems to correct such deformities by using sets of linked tubes attached to the vertebrae to rotate en bloc-more than one tube at the same time-the vertebrae back into alignment (i.e., “derotating” the spine). (Id.; Doc. No. 20 ¶¶ 1, 10, 14, 15, 19, 25, 29; see Doc. No. 181); U.S. Patent No. 7,670,358; U.S. Patent No. 8,361,121; U.S. Patent No. 9,668,787. Below is an example of a construct that can be used for linked en bloc rotation:

(Image Omitted)

(PTX140 at 58.)

Barry did not invent unlinked en bloc derotation: “[e]n bloc derotation worked even prior to [Dr. Barry's] investigational studies.” (Trial Day 2 Tr. at 96:3-7; see Trial Day 4 Tr. at 104:6-7 (when surgeons do not link derotator tubes together, they will not infringe Dr. Barry's patents).)

In 2017, Barry brought this action against DePuy, alleging infringement of his three patents. The EXPEDIUM® Vertebral Derotation System and the VIPER® 3D MIS Correction Set, which DePuy manufactures and sells, are “used to derotate en bloc multiple levels of vertebrae.” (Doc. No. 20 ¶¶ 47, 49, 54.) Barry alleged that DePuy willfully induced the performance of infringing methods and construction of infringing instruments. (See Id. ¶ 59; Doc. No. 215 at 4.) In Count I, Barry alleged willful infringement of (method) claims 4 and 5 of the '358 Patent, both of which depend on claims 1 and 2 of that Patent. (Doc. No. 215-2 at 2, 3); see Barry v. Medtronic, Inc., 914 F.3d 1310, 1317-18 (Fed. Cir. 2019). In Count II, he alleged willful infringement of (system) claim 2 of the '121 Patent. (Doc. No. 215-2 at 2, 3.) In Count IV, he alleged willful infringement of (method) claim 6 of the '787 Patent. (Id.) Claims 4 and 5 of the '358 Patent, claim 2 of the '121 Patent, and claim 6 of the '787 Patent thus constitute the “Asserted Claims” in this case. Below is a representative figure depicting Dr. Barry's invention:

(Image Omitted)

(Figure 1 of the '358 Patent, the '121 Patent, and the '787 Patent.)

1. “Linking” Requirements

A surgeon who performs linked en bloc derotation-i.e., linking levers “vertically” along each side of the spine-could infringe claims 4 and 5 of the '358 Patent, so long as all other limitations of those claims are also met. (Trial Day 4 Tr. at 189:4-15; see PTX140 at 58); Freedman Seating, 420 F.3d at 1357-58.

Unlike claims 4 and 5 of the '358 Patent, claim 2 of the '121 Patent and claim 6 of the '787 Patent further require linking “horizontally” across the spine. Claim 2 of the '121 Patent requires a “linking member” (#42 in Fig. 1) and a “cross-linking member” (#40 in Fig. 1). U.S. Patent No. 8,361,121, cols. 7-8.

In 2019, after conducting a Markman hearing, I issued my Claim Construction Order and concluded that the plain and ordinary meanings of “linking member” and “cross-linking member” apply in this case. (Doc. No. 84 at 28-31; see also Doc. No. 171-3); Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). A person of ordinary skill in the art would understand “cross-linking member” to mean “going from one side of the spine to the other, so one tool to the other tool.” (Trial Day 4 Tr. at 172:17-21.) Claim 6 of the '787 Patent requires “linking together [four] elongated levers in both a craniocaudal [head-to-tail] direction and a transverse [across the spine] direction.” U.S. Patent No. 9,668,787, col 8; (Trial Day 4 Tr. at 163:18-23.)

A surgeon who performs derotation using a “box” construct-i.e., linking levers vertically along each side of the spine and linking the top levers and bottom levers together horizontally across the spine-could infringe all Asserted Claims in this case, provided that all other claim limitations are also met. (Trial Day 4 Tr. at 106:10-15, 189:4-17; see PTX140 at 58; Doc. No. 215-3 at 3); Freedman Seating, 420 F.3d at 1357-58. Below is an example of a “box” construct:

(Image Omitted)

(PTX140 at 58.)

2. “Handle Means” Requirements

Claims 4 and 5 of the '358 Patent and claim 2 of the '121 Patent require a “first handle means” and a “second handle means.” U.S. Patent No. 7,670,358, cols. 6-8; U.S. Patent No. 8,361,121, cols. 7-8. I construed “handle means” as “a part that is designed especially to be grasped by the hand”-the construction urged by Dr. Barry. (Doc. No. 84 at 15; see also Doc. No. 171-3.) I also concluded that “handle means” encompasses both: (1) a single handle from which multiple shafts extend; and (2) multiple handles (each attached to individual shafts) linked together. (Doc. No. 84 at 14-15.)

Claim 6 of the '787 Patent does not include “handle means.” U.S. Patent No. 9,668,787, col 8.

C. Plaintiff's Case-in-Chief

The gravamen of Barry's Complaint is that Defendants indirectly infringed the '358 Patent, the '121 Patent, and the '787 Patent by inducing surgeons to directly infringe those Patents through the use of DePuy's systems. Barry thus alleged as follows:

DePuy induces infringement of Dr. Barry's claimed methods and systems through programs and efforts at instruction and education, with knowledge of Dr. Barry's patents. For example, DePuy uses sales representatives and training programs to detail the benefits and manner of creating surgical constructs that it knows would infringe Dr. Barry's patents.

(Doc. No. 34-1 at 2.) Barry's indirect infringement claims are not viable unless he can prove that they are based on direct infringement by surgeons. See, e.g., Takeda Pharm. USA, Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed. Cir. 2015) (“The mere existence of direct infringement by physicians, while necessary to find liability for induced infringement, is not sufficient for inducement.”); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993) (liability for inducing infringement “is dependent upon the existence of direct infringement”).

1. Proving Direct Infringement

Dr Barry alleged that “[n]umerous surgeons have reported using” the accused DePuy systems in a manner that infringes his patents. (Doc. No. 215 at 14.) To prove infringement of the Asserted Claims, Barry had to prove: (1) that surgeons perform every method step of claims 4 and 5 of the '358 Patent and claim 6 of the '787 Patent; and (2) that an accused DePuy system contains every limitation in claim 2 of the '121 Patent. See ...