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Federal Circuit Affirms JMOL Of No Damages In Surgical Stapler Patent Dispute
10/15/2025On October 2, 2025, the United States Court of Appeals for the Federal Circuit (Judges Dyk, Prost, and Stoll) (“Federal Circuit”) affirmed the District of Delaware’s judgment in a patent infringement action holding that Rex Medical, L.P. (“Rex”) failed to present sufficient, reliable evidence to support any damages. The Federal Circuit treated the district court’s reduction of a $10 million jury award to $1 nominal damages as a grant of judgment as a matter of law (JMOL) of no damages. The Federal Circuit also affirmed the district court’s claim construction and the jury’s findings of infringement and written description adequacy.
In January 2019, Rex sued Intuitive Surgical, Inc., Intuitive Surgical Operations, Inc., and Intuitive Surgical Holdings, LLC (collectively, “Intuitive”) for infringement of two related patents, U.S. Patent Nos. 9,439,650 and 10,136,892, which share a specification. Rex accused Intuitive’s SureForm line of surgical staplers and associated products. After Intuitive petitioned for inter partes review of the ’892 patent, Rex withdrew that patent from the case, leaving only the ’650 patent.
A central issue in the case was the calculation of damages and, in particular, the question of an allegedly comparable license. Specifically, Rex sought to introduce testimony from its damages expert concerning a $10 million license agreement with third-party Covidien that covered a portfolio of Rex’s foreign and domestic patents and patent applications. The expert had explained in his report that most of the value to the Covidien license was to either the ’892 patent or the ’650 patent, but he did not allocate the license payment between those two patents, nor to any other licensed patents or applications in the license agreement. Days before trial, the district court excluded Rex’s damages expert based on that failure to apportion value among the patents in the Covidien license.
Without its expert witness, Rex relied on the Covidien license and lay witness testimony from Rex’s President, who had helped negotiate the Covidien license. Although he discussed several factors that Rex considered in reaching its license agreement with Covidien, Rex did not present testimony discussing the relationship between the ’650 and ’892 patents, nor between the ’650 patent and the other patents in the Covidien License. The jury found infringement and no invalidity, and awarded $10 million in damages, the same amount as the Covidien license. Post‑trial, the district court entered judgment of infringement and validity but reduced the award to $1—essentially no damages—concluding that there was insufficient evidence to support any amount beyond nominal damages.
On appeal, the Federal Circuit affirmed the district court’s exclusion of Rex’s damages expert and the district court’s effective grant of JMOL of no damages, explaining that, because the record does not provide evidence from which the jury could find or infer a damages number specifically for the ’650 patent, the jury would have had to speculate how much of the $10 million should be allocated to the asserted ’650 patent. In doing so, the Federal Circuit clarified that an award of damages is not required under 35 U.S.C. § 284 if there is no evidentiary basis to support a reasonable royalty.
The Federal Circuit also addressed Intuitive’s cross-appeal on claim construction, infringement, and lack of written description.
With respect to claim construction, the Federal Circuit affirmed the district court’s plain-meaning construction of the term “lower portion” in claim 6 and rejected Intuitive’s proposal to limit the term to only the lowest horizontal bar of an “I-beam.” Claim 6 recites a “beam” with upper and lower portions and a web, and does not confine the beam to a specific “I-beam” geometry or narrowly define the bounds of the lower portion through figure-based embodiments.
With respect to infringement, the Federal Circuit held that substantial evidence supported the finding that Intuitive’s accused product meets the limitation “configured to cause the staple pusher to move a staple.” The record showed that a protruding part of the lower portion contacts an intermediate shuttle, which in turn moves the staple pusher. The claim’s “comprising” language did not require direct contact or exclude intermediate components; indirect causation through an intervening element sufficed.
With respect to Intuitive’s written description challenge, the Federal Circuit concluded that the patent’s disclosure was sufficient to satisfy 35 U.S.C. § 112(a) and reiterated that the written description requirement does not demand disclosure of every possible embodiment, so long as the specification reasonably conveys possession of the claimed invention.
The Federal Circuit’s affirmance serves as a significant reminder of the importance of proper apportionment in damages analyses that rely on comparable licenses. The ruling highlights that failure to provide a reliable, fact-based damages methodology addressing the patents-in-suit can result in no damages, even where infringement is found.
