Rex Medical, L.P. v. Intuitive Surgical, Inc., Appeal Nos. 2024-1072, -1125 (Fed. Cir. Oct. 2, 2025)

In this week’s Case of the Week, Rex Medical, L.P. (“Rex”) appeals from a decision out of the U.S. District Court for the District of Delaware reducing a $10 million jury award to $1 in nominal damages. The district court awarded Rex nominal damages for infringement of Rex’s Patent No. 9,439,650 (the “’650 patent”) by Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., and Intuitive Surgical Holdings, LLC (collectively, “Intuitive”). The court found that the ‘650 patent was not invalid for lack of written description and that Intuitive directly infringed claim 6 of the ‘650 patent, but that a reduction of the jury’s damages award of $10 million to $1 was proper; the jury received insufficient evidence from which it could reasonably infer a proper royalty award for infringement of the ‘650 patent, or from which it could reasonably apportion the lump sum payment made in a comparable settlement agreement between Rex and a non-party, where that non-party licensed the ‘650 patent along with nine other U.S. patents, seven U.S. patent applications, and nineteen patents or applications from countries outside the United States. The Court of Appeals for the Federal Circuit affirmed the district court on all fronts.

Days before trial in this case, the district court partially granted Intuitive’ s “Motion to Preclude Certain Expert Testimony of Douglas Kidder.”  Kidder was Rex’s damages expert, and had opined in his expert report that a hypothetical negotiation between Rex and Intuitive for a license to the ‘650 patent would have resulted in a lump sum payment of $20 million. In reaching this number, he stated that the most comparable agreement to the hypothetical license in this case was a settlement agreement between Rex and a third party, Covidien, wherein Covidien agreed to pay $10 million for the patent portfolio described above (the ‘650 patent along with nine other U.S. patents, seven U.S. patent applications, and nineteen patents or applications from countries outside the United States). However, the district court found that “Mr. Kidder…failed to adequately address the extent to which [the other patents and patent applications besides the ‘650 patent] contributed to the lump sum payment in the Covidien license” and thus held that “Mr. Kidder’s methods in relying on the Covidien license are unreliable and must be excluded.” The court instructed that, though “parties frequently rely on comparable license agreements” in determining a reasonable royalty, courts require parties relying on comparable licenses “to account for differences in the technologies and economic circumstances of the contracting parties.” The district court concluded that Mr. Kidder failed to adequately address the extent to which other patents besides the ‘650 patent contributed to Covidien’s lump sum payment to Rex, and excluded his expert testimony. Neither party’s damages expert testified at trial.

The Court of Appeals, reviewing the district court’s decision for abuse of discretion, similarly concluded that Mr. Kidders’ reliance on the Covidien license agreement as a basis for claiming $10 million in damages, without additional explanation of allocation of license fees among all the licensed patents covered by the agreement was “untethered to the facts of this case.” Accordingly, the Court found that the district court did not err in excluding Mr. Kidder’s testimony.

The Court then turned to the district court’s reduction of the jury’s damages award from $10 million to nominal damages of $1 and again affirmed. Citing Promega Corp v. Life Techs. Corp., 875 F.3d 651, 659-60 (Fed. Cir. 2017), the Court wrote: “The amount of damages ‘is a finding of fact on which the plaintiff bears the burden of proof by a preponderance of the evidence’…Damages ‘must not be left to conjecture by the jury. They must be proved, and not guessed at.’” The Court concluded that the jury received insufficient evidence “from which [it] could find or infer a damages number for a license to the ‘650 patent between ~$1 and $10 million.” It determined that there was not “any other record evidence that would allow reasonable apportionment.” As such, it affirmed the district court’s award of nominal damages in $1. The Court also found no abuse of discretion in the district court’s denial of Rex’s request for a new damages trial. “As the district court reasonably explained,” it wrote, “Rex had the opportunity to conduct discovery and to call other witnesses, such as its damages expert, and to offer other evidence potentially relevant to damages. Instead, Rex chose to hinge its damages theory on the very license that the district court had already precluded its expert from testifying about.”

The Court also affirmed the district court’s denial of JMOL with respect to infringement and invalidity of the ‘650 patent.

The opinion can be found here.

By Julia Davis

ALSO THIS WEEK

Focus Products Group International v. Kartri Sales Co., Inc., Appeal Nos. 2023-1446, -1450, -2148, -2149 (Fed. Cir. Sept. 30, 2025)

In a wide-ranging IP dispute between manufacturers and sellers of “hookless” shower curtains, the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the district court’s $4 million damages and fees award following a bench trial.  The panel’s 45-page opinion reviewed various assignments of error from the two appellants—a seller and their supplier—covering patent, trademark, trade dress, and procedural issues.

Of note on the patent side, the Court found a clear disavowal of claim scope based on the patentee’s repeated cooperation with the examiner’s implementation of a restriction requirement, such that shower curtain rings with a “flat upper edge” were excluded from the scope of two of the asserted patents.  Because the accused shower curtains only had rings with flat upper edges, the Federal Circuit reversed the lower court’s infringement finding with respect to those patents.  The panel also vacated the court’s grant of summary judgment of infringement on a third patent, on grounds that the district court’s findings did not sufficiently establish an absence of material factual disputes.  However, the patent infringement findings were reversed and vacated as to appellant Marquis only.  The two appellants had initially attempted to skirt the Federal Circuit’s page-limit requirements by dividing up the issues between their briefs and incorporating each other’s arguments by reference.  The appellants submitted revised briefs after their original briefs were stricken, but on review, the Court found that appellant Kartri’s brief did not sufficiently preserve any non-infringement arguments, and so the district court’s infringement findings as to Kartri were undisturbed notwithstanding the errors.

The Federal Circuit also affirmed the lower court’s rejection of a late venue challenge raised four months after the Supreme Court’s decision of TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017) (recognized as having effected a change in controlling law for venue in patent cases); affirmed rejection of an “unclean hands” defense that was raised on the eve of trial and otherwise insufficiently supported; vacated a trademark infringement determination because the lower court erroneously focused on similarities between the parties’ products in addition to their use of the asserted mark; found Focus did not have standing to assert another asserted trademark; vacated the trade dress infringement determination on functionality grounds; and vacated the court’s willfulness and attorneys’ fees determinations in view of the dispositions on appeal.

The opinion can be found here.

By Jason Wrubleski

U.S. Inventor, Inc. v. PTO, Appeal No. 2024-1396 (Fed. Cir. Oct. 3, 2025)

In an appeal from a district court ruling on a motion to dismiss for lack of standing, the Federal Circuit affirmed.  U.S. Inventor, Inc. and National Small Business United sought a change in procedures concerning discretionary denials of inter partes review petitions before the Patent Office.  When the Patent Office declined to make the requested changes, the plaintiffs filed an action in district court under the Administrative Procedures Act.  The district court dismissed for lack of standing.  The Federal Circuit affirmed, holding that the organizations could not demonstrate they had standing under the standard for associational standing, which requires at least one member of the association to have standing.  The injury, the Court held, was too speculative, and dependent on the acts of third parties.  The Court distinguished Apple Inc. v. Vidal, 63 F.4th 1 (Fed. Cir. 2023), in which the Court found that Apple did have standing.  But in that case, Apple had established that it was a “repeat player and on a very large scale, as it has been sued for infringement on a regular basis, for many years, and Apple regularly petitions for an IPR of patent claims in such suits.”  The likelihood of injury to Apple was thus identifiable, but the plaintiffs in the instant suit could not identify any member that could demonstrate a non-speculative injury.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.