Federal Circuit IP
Rex Medical, L.P. v. Intuitive Surgical, Inc.
Rex Medical, L.P. v. Intuitive Surgical, Inc., No. 2024-1072, 2025 WL 2799030
(Fed. Cir. Oct. 2, 2025) (Stoll, J., Dyk, J., Prost, J.)
Issue:
At issue was whether the expert properly apportioned value from a multi-patent license and whether the district court erred in denying JMOL of noninfringement and invalidity.
Facts/Procedural Posture:
Rex sued Intuitive in D. Del. for infringing U.S. Patent No. 9,439,650, directed to a system for stapling tissue during surgery. Days before trial, the district court excluded Rex’s damages expert for failing to apportion value from a prior license covering multiple patents. A jury found infringement and validity and awarded $10 million in damages. The court reduced the damages to $1 nominal damages and denied JMOL of noninfringement and invalidity. Both sides appealed. The Federal Circuit affirmed $1 nominal damages (treating it as JMOL of no damages) and affirmed denial of JMOL on non-infringement and invalidity.
Holdings:
Plaintiff’s expert was properly excluded for failing to apportion the “comparable” multi-patent license. The district court did not err in denying JMOL of noninfringement and invalidity, where it properly applied the plain meaning to a disputed claim term and construed a claim term subject to “comprising” language.
Reasoning:
The court reasoned that plaintiff’s expert was properly excluded because he failed to address the extent to which the asserted patent, also found in prior license, contributed to the lump-sum payment in that agreement and failed to allocate license fees among the several licensed patents covered by that agreement. Without reliable apportionment, his testimony was properly excluded. The remaining lay testimony was too speculative to permit the jury to assign value to the ’650 patent alone, justifying JMOL of no damages.
On the cross-appeal, the panel upheld the finding of infringement based on the construction of “lower portion” in the appealed claim, rejecting defendant’s argument that a single embodiment supported a narrower construction where the claim was more broadly written. The Court found substantial evidence supported the finding that the accused products met the “configured to cause” limitation. Nothing in the language of claim 6, which includes the word “comprising” due to its dependence from claims 4 and 5, required the “lower portion” of the beam to contact the staple pusher directly, so the fact that the beam in the accused products contacted a shuttle that in turn contacted a staple pusher was sufficient, because “comprising” creates a presumption that recited elements are only a part of the device. The Court rejected defendant’s argument that the specification lacked a sufficient written description for failing to describe a “beam plus shuttle” configuration because the question is whether specification shows the inventor had possession of the subject matter in claim 6, not whether there is an adequate description of the accused products.
Key Takeaways:
Damages experts must apportion multi-patent licenses to the asserted patent’s contribution; otherwise, damages can be reduced to nominal amounts. The Court will not import claim limitations from isolated specification statements or figures, particularly if they describe only embodiments of a broader claimed invention. Finally, “comprising” claims can cover products with intermediate components.