IP Law Daily, PATENT—Fed. Cir.: $10 million jury damages award cut to $1 despite proven infringement of surgical stapler patent, (Oct 2, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

District court correctly excluded the patentee's damages expert for failing to apportion the asserted patent's value from a broader license.

In a precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed the reduction of a $10 million jury damages award to $1 in an infringement lawsuit between competing medical device makers Rex Medical, L.P., and Intuitive Surgical, Inc. Although the court confirmed that Intuitive infringed the asserted claim of Rex's surgical stapler patent and rejected challenges to the claim's validity under 35 U.S.C. § 112, it upheld the district court's exclusion of Rex's damages expert on the ground that his analysis failed to separate the value of the asserted patent from other rights included in a broader license. The appellate court also denied Rex's request for a new trial, concluding that without admissible expert testimony or other reliable evidence, the jury's damages award could not stand (Rex Medical, L.P. v. Intuitive Surgical, Inc., Nos. 2024-1072, 2024-1125 (Fed. Cir. Oct. 2, 2025)).

Background. The plaintiff/appellant, Rex Medical, L.P., is a medical device company specializing in surgical stapling technologies. The defendant/cross-appellant, Intuitive Surgical, Inc., is the well-known developer of robotic-assisted surgical equipment, including the da Vinci surgical system and related stapling instruments. Both parties operate in the competitive market for advanced surgical stapling devices, but had no licensing or partnership arrangement before this litigation.

The dispute centered on Rex’s U.S. Patent No. 9,439,650 (the ’650 patent), entitled Apparatus for Stapling Tissue. The patent issued in 2016 relates to surgical stapling systems including jaws, staple-carrying portions, anvils, and a beam structure designed to drive staples through tissue. Claim 6, the only surviving claim at trial, recites an apparatus in which the beam includes upper and lower portions with a web positioned between them, configured to engage the jaws and advance the staple pusher during surgical use.

Rex filed suit in January 2019 in the District of Delaware, alleging that Intuitive’s SureForm staplers infringed the ’650 patent and U.S. Patent No. 10,136,892 (the ’892 patent). After Intuitive petitioned for inter partes review of the ’892 patent, Rex dismissed it from the case, and separate IPR proceedings later canceled additional claims of the ’650 patent, leaving only Claim 6 for trial.

Before trial, the district court excluded the testimony of Rex’s damages expert, Douglas Kidder, who had calculated a reasonable royalty by relying on a $10 million settlement and license agreement that Rex had previously entered into with Covidien, a medical device company and former competitor in the stapling market. That license covered the patent-in-suit and several other U.S. and foreign patents. The court found that Kidder failed to apportion the value of the asserted '650 patent from the broader portfolio included in the Covidien license. Without expert damages testimony, Rex relied on lay testimony from its president. The jury nonetheless awarded $10 million in damages and found infringement. On post-trial motions, the district court granted JMOL, reducing the damages to $1, holding that Rex had presented no legally sufficient evidence of damages. Rex appealed the exclusion of its expert and the reduction to nominal damages, while Intuitive cross-appealed on infringement and validity.

Exclusion of damages expert. The Federal Circuit upheld the exclusion of Kidder’s testimony, applying the reliability principles articulated in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). The court stressed that when an expert relies on a license covering multiple patents, he must adequately apportion the royalty to reflect only the economic value of the asserted patent.

The court cited Apple Inc. v. Wi-LAN Inc., 25 F.4th 960 (Fed. Cir. 2022), where it held that damages opinions based on un-apportioned licenses are unreliable absent case-specific justification. Similarly, in Jiaxing Super Lighting Elec. Appliance, Co. v. CH Lighting Tech. Co., 146 F.4th 1098 (Fed. Cir. 2025), the Federal Circuit confirmed that failing to allocate value among patents in a portfolio renders expert opinions inadmissible. Here, Kidder did not separate the value of the '650 patent from other U.S. and foreign patents in the Covidien agreement. Thus, the Federal Circuit concluded that the district court acted well within its discretion to exclude the testimony.

JMOL of nominal damages. On damages, the Federal Circuit characterized the district court’s ruling as a JMOL rather than a remittitur. Under Promega Corp. v. Life Technologies Corp., 875 F.3d 651 (Fed. Cir. 2017), JMOL is appropriate where there is no legally sufficient evidentiary basis for the jury’s verdict. Because Rex presented no reliable apportionment evidence, the $10 million award could not stand.

The court rejected Rex’s contention that some damages must be presumed under 35 U.S.C. § 284, holding that while the statute guarantees a “reasonable royalty,” damages cannot be speculative. Citing Devex Corp. v. General Motors Corp., 667 F.2d 347, 363 (3d Cir. 1981), the Federal Circuit reaffirmed that an award of zero or nominal damages is proper when the patentee fails to meet its burden. The decision also drew from Oiness v. Walgreen Co., 88 F.3d 1025 (Fed. Cir. 1996), which emphasized that damages may not rest on conjecture. The court therefore affirmed the $1 nominal damages award.

Infringement. Intuitive challenged the jury's infringement finding, focusing on the construction of "lower portion" in Claim 6 and the "configured to cause" limitation. It argued that the term "lower portion" should be limited to the lowest horizontal bar of an I-beam structure. The Federal Circuit disagreed, holding that Claim 6 does not require an "I-beam" but broadly covers a beam with upper and lower portions. Following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the court held that limitations from embodiments should not be imported into the claims.

On the "configured to cause" language, the court held that substantial evidence supported the jury's finding. Expert testimony established that the lower portion of the beam engaged a shuttle that advanced the staple pusher. An intermediary component did not defeat infringement, as "comprising" language in the claim permitted additional structures. The ruling aligned with Trim-Lok, Inc. v. Herfel, 869 F.3d 1372 (Fed. Cir. 2017), which held that claim language does not exclude additional, unrecited elements.

Written description. Further, Intuitive argued that Claim 6 was invalid for lack of written description under 35 U.S.C. § 112(a), asserting that the patent failed to describe a beam-and-shuttle configuration. The Federal Circuit rejected this challenge, noting that the written description requirement is satisfied if the specification reasonably conveys possession of the claimed invention to a person of skill in the art.

Citing Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), the appellate court emphasized that inventors need not describe every possible embodiment. The court analogized to Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001), where the specification was deemed adequate despite not describing every variant. Additionally, the Federal Circuit noted that Intuitive’s argument essentially repackaged its non-infringement theory. Consistent with Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001), the court confirmed that “comprising” language allows claims to encompass devices with additional components such as a shuttle.

Conclusion. Thus, in sum, the Federal Circuit affirmed the district court’s exclusion of Rex’s damages expert, upheld the judgment as a matter of law reducing the jury’s $10 million damages award to $1, denied Rex’s request for a new trial, confirmed that Intuitive infringed Claim 6 of the ’650 patent, and rejected Intuitive’s validity challenge under the written description requirement of 35 U.S.C. § 112.

The Case is Nos. 24-1072, 24-1125.

Judge: Stoll, K.

Attorneys: Erik Milch (Proskauer Rose LLP) for Rex Medical, L.P. Melanie L. Bostwick (Orrick, Herrington & Sutcliffe LLP) for Intuitive Surgical, Inc., and Intuitive Surgical Holdings, LLC.

Companies: Rex Medical, L.P.; Intuitive Surgical, Inc.; Intuitive Surgical Holdings, LLC

Cases: FedCirNews DelawareNews GCNNews