- within Intellectual Property, Litigation and Mediation & Arbitration topic(s)
- in United States
- with readers working within the Pharmaceuticals & BioTech and Construction & Engineering industries
Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Rex Medical, L.P. v. Intuitive Surgical, Inc., 2024-1072, -1125 (Oct. 2, 2025), affirming a District of Delaware judgment reducing a jury's $10 million reasonable-royalty award to nominal damages of $1. The Court treated the district court's action on damages as a JMOL of no damages rather than a conditional remittitur, reviewed under Third Circuit law, and affirmed on a fact-specific but instructive record. In parallel, the Court also affirmed liability and rejected invalidity challenges.
The damages collapse began pretrial, when the district court excluded Rex's expert for failing to apportion a portfolio settlement (the Covidien license) to the only remaining asserted patent. Citing Apple v. Wi‑LAN and related authority, the Court agreed the expert's methodology was untethered to the facts as he did not allocate value between the two cornerstone U.S. patents in the portfolio (including the asserted '650 patent), or among additional U.S. and foreign patents, and relied on generalized assertions about portfolio value concentration. The Court held that comparable-license methodologies must account for technological and economic differences and allocate among licensed assets. This one did not.
At trial, with both side's damages experts excluded, Rex relied on lay testimony and the Covidien license itself. That showing fell short. The Court emphasized several deficiencies, including insufficient evidence for the jury to apportion the $10 million lump sum to the '650 patent alone, no explanation of relative value between the '650 patent and the no longer asserted '892 patent, and insufficient evidence regarding the value and status of other licensed patents. Large sales figures and market opportunity numbers were in the record, but the Court found no bridge connecting those figures to a non-speculative royalty for the '650 patent. Lay testimony also confirmed there was no established royalty rate, and that the Covidien sum was not sales-based.
The Court thus reaffirmed that § 284 does not compel a non-zero award in the absence of a legally sufficient evidentiary basis. On this record, any award between $1 and $10 million would have required impermissible speculation. The Court therefore affirmed JMOL of no damages and the denial of a new damages trial.
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