#federalcircuit

Patent lawsuits often involve technical information, expert witnesses, and complex legal issues. One recent case that has received attention is Barry v. DePuy Synthes. In this case, the Federal Circuit provided important guidance about the difference between a judge’s role under Daubert and a jury’s role in deciding facts.

Gideon Korrell discusses this case as an example of how courts can review expert evidence while still allowing juries to make decisions about disputed facts.

Understanding the Barry v. DePuy Synthes Decision

The case of Barry v. DePuy Synthes involved questions about patent validity and the use of expert testimony. Like many patent cases, expert witnesses played an important role in explaining technical information and helping the court understand the evidence.

One of the main issues was whether certain expert opinions should be excluded under the standards set by Daubert v. Merrell Dow Pharmaceuticals. The Daubert standard requires judges to act as gatekeepers by making sure expert testimony is reliable and relevant before it is presented to a jury.

The Federal Circuit looked at how much authority a court should have when reviewing expert testimony and whether disagreements about evidence should be decided by a judge or left to a jury.

The Difference Between Gatekeeping and Factfinding

One of the most important lessons from this case is the difference between admissibility and credibility.

According to Gideon Korrell, judges are responsible for deciding whether expert testimony meets basic standards of reliability. However, once that testimony meets those standards, questions about how convincing the expert’s opinions are should usually be decided by the jury.

The Federal Circuit explained that courts should not exclude expert testimony simply because another expert has a different opinion. In many situations, these differences create factual disputes that juries are expected to evaluate and resolve.

This distinction helps keep a proper balance between the judge’s oversight role and the jury’s role in the legal process.

Key Takeaways from the Decision

Several important lessons can be learned from the Federal Circuit’s guidance.

1. Judges Should Focus on Reliability

A judge’s job is to determine whether an expert’s methods are reliable and based on accepted principles. Judges are not supposed to decide which expert is right.

2. Juries Decide Between Competing Opinions

When qualified experts offer different views of the evidence, it is usually the jury’s responsibility to decide which opinion is more convincing.

3. Excluding Testimony Should Not Replace a Trial

The decision reminds courts that Daubert should not be used to remove factual disputes from a case when the expert testimony is otherwise acceptable.

4. Patent Cases Require a Careful Balance

Patent cases often involve highly technical subjects. Courts must make sure expert testimony is reliable while still allowing juries to consider different viewpoints and evidence.

Why This Decision Matters

The guidance provided in Barry v. DePuy Synthes may affect how future courts handle expert testimony in patent cases and other complex legal disputes.

For lawyers, the decision shows the importance of building expert opinions on reliable methods and explaining technical topics clearly. For businesses involved in litigation, it serves as a reminder that disagreements between experts are not always resolved before trial.

Instead, many of these disputes may ultimately be decided by a jury after hearing all the evidence.

Conclusion

Gideon Korrell views Barry v. DePuy Synthes as an important reminder that judges and juries have different responsibilities in the legal system. The Federal Circuit made it clear that judges should carefully review expert testimony for reliability, but they should not take over the jury’s role of deciding between competing factual arguments.

On January 22, 2026, the Federal Circuit affirmed the dismissal of a patent infringement complaint against Google, concluding that the asserted claims of U.S. Patent No. 7,679,637 are ineligible under 35 U.S.C. § 101. The ruling offers a clear look into how courts continue to evaluate software patents, especially those drafted in broad, functional terms.

Gideon Korrell examines the court’s reasoning and what it reveals about modern patent eligibility standards.

Understanding the ’637 Patent and the Dispute

The ’637 patent focused on web conferencing systems that allow users to:

Watch sessions live or with a delay

Replay sessions after they end

Access different data streams (video, chat, documents) independently

Adjust playback speed while maintaining audio quality

The patent owner accused Google’s conferencing products of infringement. In response, Google filed a motion to dismiss under Rule 12(b)(6), arguing the claims were directed to ineligible subject matter. The district court agreed, and the Federal Circuit upheld that decision.

Alice Step One: Identifying the Core Issue

At the first step of the Alice framework, the court examined whether the claims were directed to an abstract idea. While the patent owner argued the claims were more specific than simply “playing back recorded content,” the court found otherwise.

Even when framed narrowly as enabling asynchronous review of web conferences, the claims failed. The key issue was not just abstraction, it was the lack of explanation. The claims described outcomes but did not explain how those outcomes were technically achieved.

Key Observations

The claims used functional phrases like “arranged to allow” and “able to perform”

There was no clear technical mechanism described

The focus remained on results rather than implementation

As Gideon Korrell often highlights, courts are increasingly looking for whether a patent teaches how to build something, not just what it should do.

Why the Specification Didn’t Help

The patent’s written description reinforced the problem. It acknowledged that:

The system components were already known

The techniques used were conventional

The invention applied existing ideas to a new context

Rather than presenting a technical improvement, the patent positioned itself as a use of known methods in web conferencing. This weakened the argument for eligibility.

Distinguishing from Prior Eligible Cases

The patent owner relied on comparisons to earlier cases where software patents were upheld. However, the court rejected those arguments.

In cases like Contour IP v. GoPro, eligibility was found because the claims described:

Specific technical steps

Concrete solutions to technical problems

Defined system architecture

In contrast, the ’637 patent lacked these details. Simply mentioning multiple data streams was not enough. The court emphasized that structure and specificity matter more than the presence of multiple components.

Alice Step Two: No Inventive Concept Found

At the second step, the court looked for an inventive concept that could transform the abstract idea into patent-eligible subject matter. The patent owner pointed to two features:

Use of multiple client applications

A component for maintaining audio quality at different speeds

Both arguments failed.

Court’s Reasoning

The client applications were standard and performed routine functions

The audio processing methods were already known in other contexts

No new algorithm or unconventional technique was disclosed

Because the patent relied on conventional elements, it did not meet the requirement for an inventive concept.

Functional Claiming and Rejected Arguments

One notable argument from the patent owner was that Google itself used similar functional language in its own patents. The court dismissed this quickly.

Each patent is evaluated on its own merits. The presence of similar language elsewhere does not establish eligibility. As Gideon Korrell notes, eligibility is not determined by industry habits but by the substance of the claims.

Dismissal at the Pleading Stage

The Federal Circuit also supported resolving the case early. It found that:

No factual disputes could change the eligibility outcome

The patent’s own disclosures confirmed conventionality

The patent owner failed to propose meaningful claim interpretations

This reinforces that courts can and often will decide eligibility without lengthy proceedings when the patent itself is clear.

Key Takeaways for Practitioners

This decision highlights several important lessons:

Avoid result-focused drafting: Claims must explain how results are achieved

Focus on technical solutions: Abstract ideas need concrete implementation

Be cautious with admissions: Acknowledging conventional elements can weaken eligibility

Expect early challenges: Courts are willing to dismiss weak claims at the outset

Final Thoughts

The Federal Circuit’s reasoning in the ’637 dispute reflects a consistent approach to software patent eligibility. Broad, functional claims that lack technical detail remain vulnerable under § 101.

Introduction

Gideon Korrell is known for his clear and practical way of dealing with complicated legal issues, especially when law and innovation come together. A lot of his work is about how courts, lawyers, and businesses can deal with changes in technology that happen quickly. Gideon Korrell focuses on solutions that work in the real world instead of just legal theory. His insights are especially useful when there is expert testimony, uncertainty about the law, or new industries where the law is still changing.

Comprehending the Discrepancy Between Innovation and Legislation

New technologies are growing so quickly that they are changing industries, economies, and legal systems faster than traditional systems can keep up. Innovation is moving faster than regulation, from AI to high-tech medical devices and digital platforms.

Gideon Korrell points out that legal uncertainty can slow innovation just as much as overregulation. When companies are unsure about compliance requirements, liability risks, or intellectual property protections, they may hesitate to move forward.

Some of the biggest problems are:

There aren't any clear rules for new technologies.

Hard to use current laws on new technologies

Conflicts between the speed of innovation and the legal review processes

Legal differences between countries

A practical legal approach concentrates on tackling these challenges with precision and flexibility.

Why Practical Solutions Matter More Than Theory

Legal theory is a good place to start, but it doesn't always work well in situations where technology is changing quickly. Korrell stresses that solutions must be useful, clear, and possible to follow.

Practical legal strategies put the most important things first:

Clarity over complexity – Laws and guidelines should be easy to interpret

Flexibility: Rules need to change as technology does.

Real-world application: Laws should be in line with how technology is really used.

Risk management: Instead of getting rid of all uncertainty, focus on reducing harm.

This method gives both lawyers and innovators more confidence in their work.

Supporting Innovation Without Compromising Accountability

Balance is one of the main principles in Korrell’s theory. Legal systems have to stimulate innovation but also ensure accountability and public safety.

An overly restrictive legal system might impede innovation while an excessively permissive one might cause harm. The key task for practical solutions is to strike a compromise.

The following instances are examples of such balancing:

Providing a space for experimental applications of technology

Fostering transparent decision making processes using algorithms

Determining the scope of responsibility in cases with many actors

Urging ethical considerations along with compliance with the law

Legal regulation should concentrate on results and be flexible, staying relevant in changing conditions.

The Role of Courts and Legal Professionals

The judicial system is vital to determining the legal implications of new technology. Korrell often emphasizes that for judges and lawyers to do justice to their responsibilities, they need to appreciate the technological context of the case at hand.

This requires:

Careful assessment of evidence provided by experts without falling back on too much technical language

Discernment between risks and facts

Acceptance of the limitations of current legal classification systems

And legal professionals need to have a grasp of the technology they work with. Technical knowledge is not necessary but being able to ask the right questions is.

Building Forward-Looking Legal Frameworks

Instead of responding to each emerging trend, Korrell believes in constructing a system of laws that are flexible enough to evolve with time. Such a system of law would also be guided by principles and not be too rigid.

Some good forward-looking strategies could be as follows:

Formulation of rules applicable to all technologies

Collaborative efforts by technology developers, regulators, and legal professionals

Periodic updating of rules based on practical experience

Long-term thinking as against knee-jerk reactions

Conclusion

The interaction between law and new technologies is among the most challenging issues in contemporary law practice. The practical perspective in Korrell’s approach shows the growing trend towards flexibility, transparency, and effectiveness in dealing with law.

Understanding Daubert After Barry v. DePuy Synthes with Gideon Korrell

Judicial claim correction has a small but important role in patent law. As Gideon Korrell explains, in a recent Federal Circuit decision, Canatex Completion Solutions, Inc. v. Wellmatics, LLC, the court clarified when mistakes in patent claims can be fixed instead of being used to invalidate a patent. This case shows how courts balance strict rules with fairness to patent owners.

Understanding Judicial Claim Correction

Judicial claim correction allows a court to fix small errors in patent claims during a case. However, this power is used very carefully to protect how patents inform the public.

The rule comes from the Supreme Court’s decision in I.T.S. Rubber Co. v. Essex Rubber Co.. Over time, courts have turned this into a strict three-part test:

The mistake must be clear from reading the patent

The correction must not be open to reasonable disagreement

The fix must be a small clerical or typing error

Courts stress that this rule is narrow. It is not meant to rewrite claims but to show what the patent always intended to say.

The Canatex Case and the Drafting Error

In the Canatex case, the patent described a mechanical device used in oil and gas work. The invention had two parts: a “first part” placed deeper underground and a “second part” closer to the surface.

The problem came from the claim language saying a mechanism would “release the connection profile of the second part.” This created two issues:

There was no clear support for a “connection profile” on the second part

The wording did not match how the device actually worked

Throughout the patent, only the first part was described as having a connection profile. The second part only had parts that hold and release that profile. Because of this mismatch, the district court first said the claims were unclear.

Why the Federal Circuit Allowed Correction

The Federal Circuit disagreed and corrected the claim. It found the mistake was clear and that only one fix made sense: changing “second part” to “first part.”

The court relied on key parts of the patent, including:

The full claim language

The written description

The drawings

All of these showed that the connection profile belonged to the first part. The court said a skilled reader would quickly see the mistake.

The court also rejected the idea that repeating the wrong word made it intentional. Just because an error appears more than once does not mean it was done on purpose.

PTO Denial vs. Judicial Authority

During the case, the patent owner asked the Patent Office to correct the mistake, but the request was denied. The Office said the change might affect the scope of the claim.

The Federal Circuit said this denial did not decide the issue. Court corrections and Patent Office corrections follow different rules. Courts look at what the claim always meant, while the Patent Office may look at changes differently.

This shows that courts have the final say on claim meaning in legal cases.

Distinguishing Earlier Case Law

The court also discussed Chef America, Inc. v. Lamb-Weston, Inc., a case often used to refuse corrections. In that case, the court did not fix the claim because more than one meaning was possible.

In contrast, the Canatex case had only one clear meaning. There was no sign that the mistake was intentional or that other meanings could work.

Practical Implications for Patent Survival

This decision gives some useful lessons for patent owners and lawyers:

Clear mistakes may not destroy a patent if the meaning is obvious

The patent’s own content is very important when asking for correction

Courts will not rewrite claims, but they will fix simple mistakes

Patent Office decisions do not control court rulings

At the same time, the case shows why careful writing is important. Even small mistakes can lead to expensive legal fights.

Conclusion

Gideon Korrell on Why the Federal Circuit Drew a Hard Line in Motorola Solutions

In Aortic Innovations LLC v. Edwards Lifesciences Corp., the Federal Circuit delivered a clear lesson on how patent language can shape outcomes. As Gideon Korrell explains, the case shows how repeated wording in a patent specification can quietly turn into a binding definition. What may seem like harmless phrasing can end up limiting claim scope and determining the result of an infringement dispute.

Understanding the Technology

The patents in this case relate to transcatheter aortic valve replacement (TAVR) devices. These devices are inserted into the heart in a compressed form and then expanded once in place.

There are two common ways these devices expand:

Balloon-expandable frames – expanded using a balloon

Self-expanding frames – made from materials that expand on their own

The claims at issue described a valve with two parts:

An inner frame (holding the valve)

An outer frame (providing structure and sealing)

The dispute centered on whether the “outer frame” could include a balloon-expandable structure or was limited to a self-expanding one.

The Claim Construction Dispute

The patent owner argued that “outer frame” should have its ordinary meaning simply a frame on the outside. However, the opposing side pointed out that the specification repeatedly used:

“outer frame”

“self-expanding frame”

“self-expanding outer frame”

in a way that suggested they meant the same thing.

The district court agreed with this view and interpreted “outer frame” as a self-expanding frame. Since the accused product used a balloon-expandable structure, this interpretation led directly to a finding of non-infringement.

Federal Circuit’s Analysis

On appeal, the Federal Circuit upheld the lower court’s decision. The key issue was whether the patent had effectively defined its own terms something known as implicit lexicography.

Why the Court Reached This Conclusion

The court relied on several important observations:

Consistent interchangeable usage

The specification repeatedly treated “outer frame” and “self-expanding frame” as the same.

No clear alternatives shown

The patent did not describe an outer frame that was not self-expanding.

Structured distinction in the invention

The patent described a system with one balloon-expandable frame (inner) and one self-expanding frame (outer).

As Gideon Korrell notes, once the court saw this pattern, the interpretation became almost inevitable. The language of the patent left little room for a different reading.

Drafting Lessons from the Case

This decision offers several practical lessons for patent drafting.

1. Be Careful with Synonyms

In everyday writing, variety improves readability. In patents, it can create confusion.

Using different terms interchangeably may signal that they mean the same thing

Courts may treat repeated phrasing as a definition

2. Clearly Identify Optional Features

If a feature is not required:

Say so directly

Provide examples where the feature is absent

Without this, courts may assume the feature is essential.

3. Treat the Specification as a Whole

Courts do not rely on isolated phrases. They look at patterns across the entire document.

Repetition matters

Consistency can become a limitation

4. Pay Attention to the Summary Section

The summary often describes “the invention” at a high level.

Broad statements here can influence claim scope

Lack of qualifiers can make features seem mandatory

Litigation Takeaways

This case also highlights how quickly claim construction can resolve a dispute.

Once the term “outer frame” was defined, infringement was no longer possible

The case effectively ended at the interpretation stage

As Gideon Korrell often emphasizes, many patent cases are decided long before trial—during drafting and claim construction.

Conclusion

The Aortic Innovations decision reinforces a simple but important idea: clarity in patent drafting matters more than stylistic variety. Repeated language can turn into a legal definition, even without explicit intent.

For practitioners, the takeaway is straightforward:

Use terms consistently, but carefully

Avoid unintended equivalence between different concepts

Draft with future interpretation in mind