REX MEDICAL, L.P. v. INTUITIVE SURGICAL, INC.
Before Dyk, Prost, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: Damages testimony was excluded for failing to apportion the value of the patent portfolio to isolate the value of the asserted patent.
Rex sued Intuitive alleging Intuitive’s surgical stapler infringed one of Rex’s patents: the ’650. A jury found the asserted claim in Rex’s patent was valid and infringed and awarded damages of $10 million. Intuitive moved for judgement as a matter of law (JMOL) on infringement, invalidity, and damages. The district court denied the motion as to infringement and invalidity but granted the motion as to damages and reduced the award to $1. Rex appealed.
The Federal Circuit affirmed. It held that the district court properly excluded Rex’s expert. Rex’s expert relied on a comparable lump-sum license agreement covering a portfolio of patents, including the ’650 patent and eight other patents, seven US applications, and nineteen patents or applications from outside the US. But the expert failed to apportion the value attributable to the ’650 patent. The court emphasized that damages experts must reliably allocate value among licensed patents when using portfolio licenses. The court found that the expert’s methodology was “untethered to the facts of this case.” With no other evidence presented, the jury was unable to reasonably infer a royalty for the ’650 patent alone. Thus, the Federal Circuit held that any damages award would be speculative and affirmed the district court’s decision to award only nominal damages.
Editor: Sean Murray
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