Rex Med., L.P. v. Intuitive Surgical, Inc
Authored by: Jeremy J. Gustrowsky
In a recent decision, the Federal Circuit affirmed a dramatic reduction in damages in the case of Rex Medical, L.P. v. Intuitive Surgical, Inc., where a jury’s $10 million award for patent infringement was cut down to just $1. The case centered on U.S. Patent No. 9,439,650, which covers a surgical stapling device. Rex Medical accused Intuitive Surgical of infringing this patent with its SureForm stapler products. While the jury found in favor of Rex on infringement and validity, the damages issue took center stage on appeal.
The core problem arose when Rex’s damages expert was barred from testifying about a key $10 million license agreement with Covidien. The court found that the expert failed to “apportion” the value of the ‘650 patent from other patents included in the license, meaning he did not show how much of the lump sum payment was actually for the patent at issue. Without this crucial expert testimony, the jury was left with insufficient evidence to reasonably determine how much Intuitive should pay for infringing just the ‘650 patent, as opposed to the entire patent portfolio.
On appeal, the Federal Circuit agreed with the district court’s decision to exclude the expert’s testimony and affirmed the reduction of damages to a nominal $1. The court emphasized that patent damages must be based on evidence, not speculation, and that when a license covers multiple patents, a party must clearly separate out the value of the patent-in-suit. The court also rejected Intuitive’s arguments challenging the infringement finding and the validity of the patent, finding substantial evidence supported the jury’s verdict on those points.
This case is a strong reminder for patent owners: when seeking damages based on comparable licenses, it’s essential to provide clear evidence showing how much of the license value is attributable to the specific patent being asserted. Failing to do so can turn a multimillion-dollar jury award into a token victory.