Rex Medical, L.P. v. Intuitive Surgical, Inc. et al

Filing 282

MEMORANDUM OPINION. Signed by Judge Maryellen Noreika on 9/20/2023. (dlw)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
REX MEDICAL, L.P.,
Plaintiff,
v.
INTUITIVE SURGICAL, INC.,
INTUITIVE SURGICAL OPERATIONS,
INC., and INTUITIVE SURGICAL
HOLDINGS, LLC,
Defendants.

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C.A. No. 19-005 (MN)

MEMORANDUM OPINION
Michael J. Farnan, Brian E. Farnan, FARNAN LLP, Wilmington, DE; Erik B. Milch, COOLEY LLP,
Reston, VA; Allison Elkman, COOLEY LLP, Washington, D.C.; Dena Chen, Deepa Kannappan,
COOLEY LLP, Palo Alto, CA – Attorneys for Plaintiff
Nathan R. Hoeschen, Karen E. Keller, SHAW KELLER LLP, Wilmington, DE; George Lombardi,
WINSTON & STRAWN LLP, Chicago, IL; Claire A. Fundakowski, Joseph C. Masullo, WINSTON &
STRAWN LLP, Washington, D.C.; Kelly C. Hunsaker, Michael Rueckheim, WINSTON & STRAWN
LLP, Redwood City, CA; Evan Lewis, WINSTON & STRAWN LLP, Houston, TX – Attorneys for
Defendants

September 20, 2023
Wilmington, Delaware

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NOREIKA, U.S. DISTRICT JUDGE
The Court presided over a three-day jury trial from October 17, 2022 to October 19, 2022.
(See D.I. 259, 260, 261). At the end, the jury found Defendants Intuitive Surgical, Inc., Intuitive
Surgical Operations, Inc., and Intuitive Surgical Holdings, LLC (collectively, “Defendants” or
“Intuitive”) to have infringed one claim of one patent of Plaintiff Rex Medical, L.P. (“Plaintiff” or
“Rex Medical”). (See D.I. 245). In addition, the jury found the claim not invalid and awarded
Plaintiff $10,000,000 in damages. (See id.). Presently before the Court is Defendants’ renewed
motion for judgment as a matter of law or, alternatively, for a new trial and/or remittitur.
(See D.I. 266).

In addition, Plaintiff moves for prejudgment and post-judgment interest.

(See D.I. 264). For the reasons set forth below, the Court will grant-in-part and deny-in-part
Defendants’ motion and will deny Plaintiff’s motion as moot.
I.

BACKGROUND
Plaintiff and Defendants are in the business of making and selling medical technology. At

issue in this case is one of Rex Medical’s patents: U.S. Patent No. 9,439,650 (“the ’650 patent”).
The invention of the ’650 patent is generally directed to a device for stapling tissue during surgery.
(See JTX-001; see also D.I. 54 ¶ 30). Defendants develop and sell surgical stapling products.
(See D.I. 260 at 360:19-370:21). The accused products are Intuitive’s SureForm surgical staplers
and reloads, including the SureForm 60 stapler, the SureForm 45 stapler, the SureForm 45 CurvedTip stapler, and the associated reloads (collectively, “the Accused Products”). (D.I. 211, Ex. 1
¶ 14).
On January 2, 2019, Plaintiff filed suit alleging that Defendants infringed the ’650 patent
as well as U.S. Patent No. 10,136,892 (“the ’892 patent”). (See D.I. 1; see also D.I. 54 (Second
Amended Complaint)). On January 6, 2020, the parties filed a joint stipulation, agreeing that
Plaintiff’s count asserting infringement of the ’892 patent (Count II) should be dismissed with
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prejudice. (See D.I. 48). The Court ordered dismissal of Count II with prejudice the same day.
(See D.I. 49). Afterwards, the only issue left for trial was direct infringement of the ’650 patent.
(See D.I. 211 ¶ 6).
From October 17, 2022 to October 19, 2022, the Court presided over a jury trial.
(See D.I. 259, 260, 261). The jury found that Defendants directly infringed claim 6 of the ’650
patent. (See D.I. 245). In addition, the jury found claim 6 was not invalid for lack of written
description and awarded Plaintiff $10,000,000 in damages. (See id.).
On November 3, 2022, the Court entered judgment on the jury verdict under Rule 58(b) of
the Federal Rules of Civil Procedure. (See D.I. 256). On November 28, 2022, Defendants renewed
their motion for judgment as a matter of law on the issues of infringement, invalidity, and damages,
or, in the alternative, moved for a new trial and/or remittitur.

(See D.I. 266).

On

November 28, 2022, Plaintiff moved for prejudgment and post-judgment interest. (See D.I. 264).
The parties’ briefing on post-trial motions was completed on January 27, 2023. (See D.I. 264, 267,
275, 276, 278, 279).
II.

LEGAL STANDARDS
A.

Judgment as a Matter of Law

Judgment as a matter of law may be entered against a non-moving party if the Court “finds
that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on
[an] issue.” Fed. R. Civ. P. 50(a)(1). Judgment as a matter of law is appropriate “only if, viewing
the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair
and reasonable inference, there is insufficient evidence from which a jury reasonably could find
liability.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). Entry of
judgment as a matter of law is a remedy to be invoked only “sparingly.” CGB Occupational
Therapy, Inc. v. RHA Health Servs. Inc., 357 F.3d 375, 383 (3d Cir. 2004).
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Following a jury trial, a renewed motion for judgment as a matter of law under Rule 50(b)
may be granted only if the movant demonstrates “that the jury’s findings, presumed or express,
are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by]
the jury’s verdict cannot in law be supported by those findings.” Pannu v. Iolab Corp., 155 F.3d
1344, 1348 (Fed. Cir. 1998) (alteration in original) (quoting Perkin–Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984)). Substantial evidence is such relevant
evidence that a reasonable mind might accept as adequate to support the finding under review.
See Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 407 (Fed. Cir. 2018).
In determining whether substantial evidence supports the jury verdict, the Court may not make
credibility determinations, weigh the evidence, or substitute its own conclusions for that of the
jury where the record evidence supports multiple inferences. See Lightning Lube, 4 F.3d at 1166.
B.

Motion for a New Trial

A new trial may be granted to all or any of the parties and on all or part of the issues in an
action in which there has been a trial by jury, “for any reason for which a new trial has heretofore
been granted in an action at law in federal court.” Fed. R. Civ. P. 59(a)(1)(A). Common reasons
for granting a new trial are: (1) the jury’s verdict is against the clear weight of the evidence and a
new trial is necessary to prevent a miscarriage of justice; (2) there exists newly discovered
evidence that would likely alter the outcome of the trial; (3) improper conduct by an attorney or
the Court unfairly influenced the verdict; or (4) the jury’s verdict was facially inconsistent.
See Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., 85 F. Supp. 3d 768, 775
(D. Del. 2015).
The decision of whether to grant a new trial is a question committed to the Court’s
discretion. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980). Unlike the standard
for judgment as a matter of law, the Court need not view the evidence in the light most favorable
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to the verdict winner when ruling on a motion for a new trial. See Ateliers, 85 F. Supp. 3d at 77576. “[N]ew trials because the verdict is against the weight of the evidence are proper only when
the record shows that the jury’s verdict resulted in a miscarriage of justice or where the verdict, on
the record, cries out to be overturned or shocks [the] conscience.” Williamson v. Consol. Rail
Corp., 926 F.2d 1344, 1353 (3d Cir. 1991).
III.

DISCUSSION
A.

Defendants’ Motion
1.

Patent Infringement

“To prove infringement, the patentee must show that an accused product embodies all
limitations of the claim either literally or by the doctrine of equivalents.” Cephalon, Inc. v. Watson
Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013). “A two-step analysis is employed in making
an infringement determination.” Intell. Ventures I, LLC v. Canon Inc., 104 F. Supp. 3d 629, 638
(D. Del. 2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)).
“First, the court must construe the asserted claims to ascertain their meaning and scope.” Id.
Second, the trier of fact must “compare the properly construed claims with the accused infringing
product” to determine whether the product embodies the claims as construed. Id. “This second
step is a question of fact.” Id. (citing Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir.
1998)).
The jury unanimously found that Defendants infringed claim 6 of the ’650 patent.
Defendants argue that no reasonable jury could have found infringement. For the reasons set forth
below, the Court disagrees.
a.

“Lower Portion”

First, Defendants contend that Plaintiff’s infringement expert, Mr. Juergens, improperly
identified different portions of the accused SureForm I-beam as the claimed “lower portion.”
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(D.I. 267 at 11-12). Claim 6 recites a beam comprising an upper portion and lower portion where
“at least one of the lower portion or the upper portion” is “configured to cause the staple pusher to
move a staple” and “configured to cooperatively engage” the jaws. (JTX-001, cl. 6). The Court
construed “lower portion” before trial. (See D.I. 259 at 106:2-107:5; see also D.I. 220 at 106:25109:14 (requesting briefing on the term at the Pretrial Conference)). After reviewing the parties’
briefing on the term, the Court noted that “the dispute appears to be whether the scope of this term
may include additional material or structures that extend in a perpendicular direction from the
[lowermost] section of the beam.” (D.I. 259 at 106:15-18). The Court found “nothing in the
intrinsic evidence to require narrowing the construction” to preclude such material. (Id. at 106:2223). Thus, the Court found that “the term may include additional materials or structures that extend
in a perpendicular direction beyond the lowermost section of the beam,” but noted that “whether
the material of the Accused Products extends so far as to no longer be part of the ‘lower portion’”
was an issue of fact for the jury. (Id. at 106:25-107:5).
At trial, Mr. Juergens opined that the Accused Products meet the relevant limitations of
claim 6 in part because the lower portion is configured to cause the staple pusher to move a staple
and to cooperatively engage the jaws.

(D.I. 260 at 291:4-299:9).

Applying the Court’s

construction, he identified the “lower portion” as including the lowermost section of the accused
I-beam and some material that extends in a perpendicular direction beyond that lowermost section.
(See id. at 291:4-293:18). Then he explained to the jury how the “lower portion” performs the
required functions. For example, Mr. Juergens testified that the “section of the lower portion . . .
which sticks up into the channel . . . is the portion that actually contacts . . . the sled which then in
turn contacts the staple pusher to move the staple as the beam move[s] from the proximal to the
distal [location].” (Id. at 294:18-25).

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Defendants take issue with the fact that Mr. Juergens identified two “different” parts of the
“lower portion” of the I-beam as performing each specified function. That is, Mr. Juergens
identified the lowermost part as the part of the I-beam “configured to cooperatively engage” the
jaws and identified the section above the lowermost part as the part of the I-beam that is
“configured to cause the staple pusher to move a staple.” (See D.I. 267 at 11). As Plaintiff points
out, however, nothing in the claim language or the Court’s construction precludes two different
parts of the lower portion from performing each of these functions. Rather, the claim merely
requires that the “lower portion” perform both. The jury heard substantial testimony from
Mr. Juergens that the lower portion performs both functions and it was entitled to credit that
testimony. (See D.I. 260 at 291:4-299:9).
b.

“Configured to Cause”

Second, Defendants argue that Plaintiff failed to show that the Accused Products meet the
claim limitation “at least one of the lower portion or the upper portion configured to cause the
staple pusher to move a staple” because (a) Plaintiff failed to show that the lower portion actually
causes the staple pusher to move a staple and (b) Mr. Juergens’ testimony was inconsistent with
the Court’s construction of “configured to cause.” (See D.I. 267 at 13-17 (quoting JTX-001, cl. 6)).
With respect to whether Plaintiff showed that the lower portion in fact causes the staple
pusher to move the staple, the jury heard substantial evidence that in the Accused Products, the
protruding part of the lower portion contacts the shuttle which in turn causes the staple pusher to
move a staple. (See D.I. 260 at 293:19-297:14). For example, Mr. Juergens explained that the Ibeam’s web is “chamfered” such that contact between the web and the shuttle is minimized and
the protruding piece of the lower portion is “a significant driving factor” contributing to the
mechanical force generated by the beam onto the shuttle. (Id. at 295:6-297:14, 350:4-351:7).
Defendants contend that Mr. Juergens’ testimony was based on “speculation.” (See D.I. 267 at
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16). Mr. Juergens, however, based his testimony on his observations of the physical product as
well as Defendants’ own produced videos. (E.g., D.I. 259 at 227:6-230:13; D.I. 260 at 294:16295:23; D.I. 259 at 233:24-234:5; JTX-039; PTX-030; PTX-118; PTX-112). The jury was entitled
to credit Mr. Juergens’ opinion and find that the protruding portion does in fact cause the staple
pusher to move a staple.
With respect to Defendants’ assertion that Mr. Juergens’ opinion contradicts the Court’s
construction, the Court finds that it does not. The Court construed the term “at least one of the
lower portion or the upper portion configured to cause the staple pusher to move a staple” as “at
least one of the lower portion or the upper portion is designed, constructed or set up to cause the
staple pusher to move a staple.” (D.I. 76 at 8). Defendants argue that Plaintiff has failed to show
infringement under this construction because Mr. Juergens did not know whether the accused
“lower portion” was intentionally designed to cause the staple pusher to move a staple. The Court,
however, did not construe “configured to cause” as requiring intention on the part of the product
developers. 1 Thus, Plaintiff was not required to present evidence on such intention. 2 As noted
above, the jury heard substantial evidence that the design actually enables or causes the staple

1

As Plaintiff points out, such a construction might allow “any defendant [to] avoid
infringement of a ‘configured to’ claim by providing self-serving testimony that it did not
subjectively intend to design the element to operate that way.” (D.I. 276 at 14).

2

The cases Defendant cites are inapposite. In both Acuity and Aspex, the issue was whether
the claim language merely required “the hypothetical ability to do something.” See Acuity
Brands Lighting, Inc. v. Ultravision Techs., LLC, No. 19-2207-MN, 2021 WL 3187439, at
*7 (D. Del. July 28, 2021); see also Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
672 F.3d 1335, 1349 (Fed. Cir. 2012) (“[T]he phrase ‘adapted to’ is most naturally
understood to mean that the arms and magnetic members are designed or configured to
accomplish the specified objective, not simply that they can be made to serve that
purpose.”). Here, Plaintiff did not argue that the accused lower portion is hypothetically
capable of causing the staple pusher to move a staple. Rather, Plaintiff put forth substantial
evidence that it in fact does so.
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pusher to move the staple. (See D.I. 260 at 293:19-297:14). That is sufficient for the jury to find
that the lower portion is configured to do so.
In addition, Defendants argue that (a) it is the shuttle and/or the web that is configured to
cause the staple pusher to move a staple and (b) the lower portion is configured to engage the lockout mechanism and thus cannot also be configured to cause the staple pusher to move a staple.
(See D.I. 267 at 15-16). Even if these statements were true, they do not preclude the jury from
finding that the lower portion is also configured to cause the staple pusher to move a staple.
Regardless, the jury was entitled to weigh the evidence and credit Mr. Juergens’ opinion that the
lower portion is a “significant driving factor” in moving the shuttle and is configured to cause the
staple pusher to move staples. The Court sees no reason to disturb the jury’s verdict.
c.

“Alignment”

Finally, Defendants argue that Plaintiff presented no evidence that Intuitive’s I-beam
maintains “alignment.” (D.I. 267 at 17). Independent claim 4 requires that “the second distance
and the alignment” are “maintained by a beam.” (JTX-001, cl. 4). At trial, Mr. Juergens testified
in detail that the I-beam maintains parallel alignment such that each staple “sit[s] opposite each
little . . . pocket[] in the anvil, so that when the stapler is fired those staples hit those pockets and
get curled down into a properly shaped staple configuration.” (See D.I. 260 at 278:18-284:1). He
explained and demonstrated his opinion using Intuitive’s own documents and the physical product.
(See id. (referring to JTX-010, JTX-002, JTX-003)). Defendants now repeat their expert’s opinion
presented at trial; that is, that the accused I-beam does not meet this limitation because it does not
maintain lateral alignment (i.e., keeps the jaws from moving left to right). The claim language,
however, does not limit the term “alignment” in such a way. Mr. Juergens explained the difference
between parallel and lateral alignment at length and ultimately opined that the I-beam maintains

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parallel alignment and thus meets this claim limitation. (See D.I. 260 at 281:25-284:1). The jury
was entitled to assess the credibility of the witnesses 3 and credit Mr. Juergens’ opinion.
In addition, Defendants contend that Mr. Juergens’ opinion improperly conflates “second
distance” and “alignment.” (D.I. 279 at 9). Mr. Juergens, however, explained the distinction
between the two terms: alignment is when they jaws are “parallel to each other” and the distance
is “once they’re parallel, are they this far apart or that far apart.” (D.I. 260 at 279:1-280:20). Thus,
the jury was entitled to weigh the evidence presented and find that the Accused Products meet this
claim limitation.
*

*

*

In sum, substantial evidence supports the jury’s finding that Defendants infringed the ’650
patent. Therefore, the Court must deny Defendants’ renewed motion for judgment as a matter of
law on infringement.
2.

Patent Validity

An issued patent is presumed valid. See 35 U.S.C. § 282. To overcome this presumption,
a party must show by clear and convincing evidence that the patent is invalid. See Hewlett–
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1467 (Fed. Cir. 1990). At trial, Defendants
challenged the validity of claim 6 of the ’650 patent for failure to meet the written description
requirement. The jury found that Defendants failed to prove by clear and convincing evidence that
the asserted claim of the ’650 patent is invalid. (See D.I. 245). Defendants now argue that no
reasonable jury could have found that Defendants failed to meet their burden. For the reasons set
forth below, the Court disagrees.

3

For example, the jury was entitled to discredit Mr. Wixey’s testimony after hearing that,
despite being an engineer, he did not understand what vertical as opposed to lateral
alignment meant. (See D.I. 260 at 398:22-400:2).
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For a patent to be valid, its specification must contain a written description that “clearly
allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is
claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(second alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). “In other words, the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id.
Defendants argue that they have put forth clear and convincing evidence that the ’650
patent lacks adequate written description because the patent fails to disclose (a) a shuttle and (b) a
cable being coupled to a beam which in turn closes the jaws. (D.I. 267 at 18-19). The Court finds
that the jury was entitled to find that Defendants failed to meet their burden with respect to both
arguments.
First, with respect to the shuttle, Defendants contend that the ’650 patent “discloses a single
embodiment describing a ‘lower portion’ ‘configured to’ engage a jaw and to cause a staple pusher
to move a staple” and states that “nothing” in the patent includes a shuttle involved in those
functions as well. (D.I. 267 at 18). The question, however, is not whether the specification
provides an adequate description of the Accused Products, but whether the specification provides
an adequate description of the claimed invention. See Moba, B.V. v. Diamond Automation, Inc.,
325 F.3d 1306, 1321 (Fed. Cir. 2003); Inline Connection Corp. v. EarthLink, Inc., 684 F. Supp. 2d
496, 534 (D. Del. 2010). Furthermore, “an applicant is not required to describe in the specification
every conceivable and possible future embodiment of his invention.” Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001).

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Defendants’ expert, Dr. Howe, briefly opined that the ’650 patent “lacks written
description” with respect to the “configured to cause” element. (See D.I. 260 at 438:3-441:19).
The closest his testimony comes to supporting Defendants’ argument is the following:
Q: So where is the shuttle in Figure 15?
A: There is no shuttle.
Q: Does Rex Medical’s patent use the word shuttle at all?
A: No, it’s very clear that these inventors didn’t have the idea of a
shuttle. Their invention didn’t involve shuttles in any way.
(Id. at 440:17-23). The jury was entitled to find that this is not clear and convincing evidence.
This is true particularly because the jury heard evidence to the contrary. Defendants’ own engineer
testified that “this shuttle pusher and staple configuration has been around for probably years” and
is “very typical in any endoscopy stapler,” describing it as a “commonly used mechanism.” (Id.
at 387:9-16). Plaintiff’s expert, Mr. Juergens, testified that the patent has adequate written
description in part because “shuttles were known at the time.” (D.I. 261 at 531:11-532:25).
Dr. Howe agreed that “in 2001, a shuttle was known to a person of skill in the art . . . [f]or use in
tissue stapling devices.” (D.I. 260 at 473:10-14). In some circumstances, as is the case here,
“[b]ecause the specification is viewed from the perspective of one of skill . . . a patentee may rely
on information that is ‘well-known in the art’ for purposes of meeting the written description
requirement.” Bos. Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (citing
Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-68 (Fed. Cir. 2006)). Thus, the jury had
sufficient basis for finding that Defendants failed to meet their burden.
Second, Defendants contend that the ’650 patent describes “only one cable ‘operatively
coupled’ and ‘configured to move’ the jaws” and thus does not disclose “a device where a cable is
coupled to a beam, and a beam closes the jaws.” (D.I. 267 at 19). Again, the patent need not
describe every possible embodiment. See Rexnord, 274 F.3d at 1344. Mr. Juergens testified that

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there is adequate written description with respect to this element based on Figures 9, 10 and 12
which he opined show “clear possession” of “intermediary structures” 4 where “multiple gears
and cables” were operatively coupled to the jaws. (D.I. 261 at 527:1-529:18). Dr. Howe only
briefly testified that the ’650 patent “does not” disclose a beam being used to close the jaws
because it is a “different mechanism” than what is shown in the patent. (D.I. 260 at 447:10-448:9).
The jury was entitled to weigh the evidence and find that Defendants failed to put forth clear and
convincing evidence of invalidity.
Defendants have provided no basis on which the Court may grant judgment as a matter of
law of invalidity of the ’650 patent.
3.

Damages

The jury awarded Plaintiff $10,000,000 as a reasonably royalty. Defendants argue that
there is no evidence to support the jury’s damages award and request the Court enter judgment as
a matter of law of no damages or, in the alternative, remittitur of nominal damages. For the reasons
below, the Court agrees that Plaintiff has failed to prove its damages, and thus the Court will remit
the damages award to nominal damages of $1.
Prior to trial, Defendants moved to preclude Plaintiff’s damages expert, Mr. Kidder, from
testifying. (See D.I. 165). Defendants argued, in part, that Mr. Kidder’s opinion regarding a
reasonable royalty was unreliable because he failed to apportion the Covidien license to account
for other patents. See Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 971 (Fed. Cir. 2022) (“When
relying on comparable licenses to prove a reasonable royalty, we require a party to ‘account for

4

The Court construed “operatively coupled” to have its plain and ordinary meaning and
clarified, in response to the parties’ dispute, that the term “may include structures in which
the gear and/or the cable is operatively coupled to the first jaw and/or the second jaw
through a series of intermediary structures that ultimately move the first jaw and second
jaw from the first configuration to the second.” (D.I. 259 at 105:16-105:22).
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differences in the technologies and economic circumstances of the contracting parties.’” (quoting
VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1330 (Fed. Cir. 2014))). The Covidien license
stems from prior litigation between Rex Medical and third-party Covidien. In 2019, Rex Medical
sued Covidien, asserting infringement of the ’650 patent and the ’892 patent. (See D.I. 166 at 4).
Prior to settlement negotiations, Rex Medical dropped the ’650 patent from its case, leaving only
the ’892 patent at issue. (See id.). Rex Medical and Covidien then settled the litigation and entered
into a license agreement (i.e., “the Covidien license”) that covers the ’650 patent and ’892 patent
along with eight other U.S. patents, seven U.S. patent applications, and nineteen patents or
applications from countries outside of the United States. (Id. at 4-5; JTX-007).
The ’650 patent was the only patent asserted in this case. In his expert report, Mr. Kidder
used the Covidien license as a starting point to assess the result of the hypothetical negotiation
between the parties and to estimate a reasonable royalty. (See D.I. 166, Ex. 7 ¶ 59). The Court
ruled on Defendant’s Daubert motion as follows:
Defendants contend that Mr. Kidder used unreliable methods
because (1) he failed to apportion the value of the Covidien license
between the ’650 and ’892 patents and (2) he failed to adequately
address the value of the patents licensed other than the ’650 and ’892
patents. (See D.I. 166 at 6-10). In Apple, the defendant’s damages
expert, Mr. Kennedy, had relied on “comparable agreements” that
defendant was a party to in order to estimate a reasonable royalty.
Apple Inc., 25 F.4th at 971-72. One of the agreements listed one of
the patents at issue as an “Asserted Patent” along with five other
asserted patents. Id. at 973. The court observed, “Mr. Kennedy
failed to address the extent to which these other patents contributed
to the royalty rate in the Vertu license. Yet he opined that excluding
these patents (and the rest of [defendant’s] portfolio) from the
hypothetical negotiation would have netted Apple only a 25 percent
discount.” Id. The court thus held that “Mr. Kennedy’s silence on
these equally situated patents is troubling and makes his opinion
unreliable.” Id. at 973-74.
Here, Mr. Kidder assesses the relative value of the patents with the
following:

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Most of the value to a license to Rex Medical’s patent
portfolio to Covidien and/or Intuitive is contained in
a license to either the ’892 Patent or the ’650 Patent.
The fact that Rex Medical has only asserted the ’892
Patent and the ’650 Patent against Covidien and
Intuitive indicates that these two patents have the
most value to these two companies. Additionally, as
discussed previously, the ’892 Patent and the ’650
Patent describe different design choices but the same
stapling innovation. The Rex Medical patent
portfolio thus appears to follow the extreme skew in
values for most patent portfolios – most, if not all, of
the value is contained in the most valuable patent or
patents. Thus, the additional value obtained by
Covidien for rights to patents other than the ’650 and
’892 Patents likely accounted for little-to-no value to
Covidien. . . . This agreement suggests that a starting
point for a Georgia-Pacific analysis is [the lump sum
paid by Covidien], subject to some adjustment due to
the fact that Covidien obtained rights to patents other
than the ’650 Patent.
(See D.I. 166, Ex. 7 ⁋⁋ 69-71) (internal citations omitted). Plaintiff
argues that Mr. Kidder properly apportioned between the ’650
patent and the other patents in the Covidien license. With respect to
Defendants’ first contention, Plaintiff argues that Mr. Kidder
properly explained his apportionment between the ’650 and ’892
patents because “[i]n Mr. Kidder’s opinion, the rights to one of the
patents granted the majority of the value; rights to the second patent
added only minor design modifications.” (D.I. 182 at 9). Plaintiff,
however, cites to nothing in Mr. Kidder’s report in support of this
assertion, and the Court is unable to find this explanation in
Mr. Kidder’s reports. Rather, Mr. Kidder admitted that he “didn’t
allocate the [lump sum] at all between the ’650 and ’892 patent[s].”
(D.I. 166, Ex. 1 at 49:6-13). With respect to Defendants’ second
contention, Plaintiff points to Mr. Kidder’s opinion that the other
patents “likely accounted for little-to-no value to Covidien.”
(See D.I. 182 at 11 (quoting D.I. 166, Ex. 7 ⁋ 69)). Mr. Kidder based
his opinion on the fact that the ’650 and ’892 patents were the only
patents originally asserted and cover “different design choices but
the same stapling innovation.” (See D.I. 166, Ex. 7 ⁋ 69).
Mr. Kidder, however, admitted that he never “analyze[d] whether
any of Rex Medical’s licensed foreign patents cover the same
stapling innovation as the ’650 or ’892 patents” and never
“analyze[d] whether any of Rex Medical’s licensed foreign patents
cover any of Covidien’s products.” (D.I. 166, Ex. 1 at 55:10-56:7).

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Mr. Kidder thus cannot reliably opine that the other patents account
for “little-to-no value to Covidien.” Mr. Kidder has failed to
adequately address the extent to which ’892 and the other patents
contributed to the lump sum payment in the Covidien license.
Therefore, the Court finds that Mr. Kidder’s methods in relying on
the Covidien license are unreliable and must be excluded.
(D.I. 230 ¶¶ 10-11).
Although the Court precluded Mr. Kidder from testifying about the Covidien license, the
Court repeatedly made clear that it did “not wholesale preclude [Mr. Kidder] from testifying [] if
he has additional testimony that is relevant to damages.” 5 (D.I. 260 at 275:6-13). At trial, however,
Plaintiff chose not to call Mr. Kidder at all. Rather, Plaintiff chose to put forth its damages case
primarily through the fact testimony of Mr. Carter, the President of Rex Medical, who was
involved in negotiating the Covidien license. 6 Despite the fact that the Court had already identified
issues with respect to the comparability of the license, Plaintiff made the $10,000,000 Covidien
license the foundation of its damages case. (See, e.g., D.I. 261 at 577:4-12; see also id. at 488:4492:11; D.I. 276 at 10 (arguing the jury’s verdict “was directly rooted in the $10 million Covidien
paid and the unrebutted witness testimony”)). Plaintiff requested $10,000,000 in damages, and
the jury awarded that amount. (D.I. 261 at 577:4-578:15; D.I 245).
Now, Defendants argue that the jury award is not supportable because Plaintiff failed to
offer any evidence of apportionment of the Covidien license at trial that would allow it to serve as

5

In fact, the Court denied Defendants’ Daubert motion in part. (D.I. 230 ¶ 12).

6

Defendants objected to the Covidien license being introduced through Mr. Carter’s
testimony on the grounds that he lacked sufficient personal knowledge about how the
$10,000,000 figure was determined. (D.I. 259 at 16:19-19:22). The Court overruled the
objection, reasoning that both parties agreed the license was relevant and that Mr. Carter
had sufficient knowledge to discuss the license because he negotiated it. (Id. at 22:1122:20).
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a basis for damages and there is no other evidence to support the jury’s $10,000,000 award. The
Court agrees the award is not supportable.
There was no evidence at trial that would allow the jury – or the Court – to ascertain the
value of the ’650 patent based on the Covidien license. The only witness to testify about the
Covidien license was Mr. Carter. His testimony pertaining to the amount paid by Covidien
consisted of the following:
Q: How did the Covidien license happen?
A: Well we reached out to Covidien many years ago to discuss
licensing opportunities, however they didn’t take our company very
seriously. So we filed a complaint in [mid-2019] asserting two
patents, the ’650 and the ’892 patent.
...
Q: What were the patents asserted against Covidien?
A: The ’650 and the ’892.
Q: Were there any foreign patents asserted against Covidien?
A: No, there were not.
Q: Besides the ’650 and the ’892 patent, were any other patents
asserted against Covidien?
A: No, there were not.
...
Q: Did you know what were Covidien sales?
A: No, I did not.
...
Q: What factors did Rex Medical consider?
A: Well, we considered that Covidien would settle very early in the
litigation process when there was uncertainty, they were very
cooperative, they wanted special language in the license, they didn’t
challenge our patents in the Patent Office –
...
A: . . . to try to get it invalidated and they saw real value in licensing
the ’650 and the ’892 Patents.
Q: How do you know Covidien saw real value in Rex Medical?
A: Because they paid us $10 million, this wasn’t just a cost of
litigation settlement, they said we value those two patents and we’re
going to pay you [$]10 million.
(D.I. 259 at 165:10-169:11).

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This testimony fails to provide any basis from which a factfinder could assign any portion
of the $10,000,000 to the ’650 patent alone. Even if there is enough in the record to apportion the
license with respect to the non-asserted patents 7 (i.e., those other than the ’650 and ’892 patents),
there is nothing in the record that addresses the extent to which the ’650 patent – as opposed to the
’892 patent – contributes to the $10,000,000 sum. 8 In fact, Mr. Carter admitted that he could not
assign any value to the ’650 patent. (Id. at 200:10-14). Plaintiff has thus failed to establish that
the license is comparable to the hypothetical negotiation. See, e.g., Omega Patents, LLC v.
CalAmp Corp., 13 F.4th 1361, 1379-81 (Fed. Cir. 2021) (testimony that “certain licenses included
a royalty of $5.00 per unit regardless of ‘which patent’ was included because ‘no patent was any
more valuable than the others’” failed to “account[] for the technological and economic differences
between th[e] licenses” (alterations in original)). So, for the same reason that the Court precluded
Mr. Kidder from testifying about the license, given the evidence at trial about that agreement, the
jury could not rely on the license to determine a reasonable royalty either. 9

7

For example, there is testimony that the ’650 and ’892 were the only patents asserted in the
Covidien litigation and that many of the other patents had lapsed or expired. (D.I. 259 at
166:6-14; 176:22-177:9). There was, however, also evidence that one foreign licensed
patent was filed in 2002 and issued in 2010. (See id. at 177:6-180:12; DTX-539; JTX007).

8

Based on the evidence presented at trial, it is entirely possible that the entire value of the
Covidien license is attributable to the ’892 patent alone. Furthermore, the fact that, at the
time Rex Medical and Covidien entered settlement negotiations, the ’650 patent had been
dropped from the litigation seems to suggest that the ’892 patent may have held more value
to Covidien. (See D.I. 166 at 4).

9

Furthermore, Plaintiff failed to offer any evidence as to the value of the patented
technology in the Accused Products as compared to the non-patented features. Claim 6 is
the sole asserted claim in this case. Claim 6 depends on claims 4 and 5 which have both
been invalidated. (See D.I. 166 at 17). Plaintiff has failed to provide evidence from which
a factfinder could attribute a specific value not only to the ’650 patent as a whole but also
to the sole asserted claim of the patent.
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The remaining evidence adduced at trial fails to provide any basis for a factfinder to tie a
dollar amount to the value of the ’650 patent or support the $10,000,000 award. For example,
Plaintiff cites to testimony including about the “market opportunity Defendants saw” and the
“stipulated fact regarding accused product sales.” (D.I. 276 at 7 (citing D.I. 260 at 354:19-358:24,
476:2-4)). 10 This evidence fails to provide anything more than an entirely speculative basis for
assigning value to the asserted patent. Therefore, the Court finds that the jury award is unsupported
by the evidence.
Defendants request judgment as a matter of law of no damages or remittitur to nominal
damages. Plaintiff argues that, if the Court offers Defendants any relief, the Court should hold a
new trial on the damages issue and allow it to reopen discovery. The Court sees no reason to give
Plaintiff a second chance at discovery and trial. 11 Plaintiff has failed to meet its burden to prove
its damages. A plaintiff is not entitled to an award of damages when none have been proven.
See TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1291 (Fed. Cir. 2020) (“The statute does not require
an award of damages if none are proven that adequately tie a dollar amount to the infringing acts.”);
see also Promega Corp. v. Life Techs. Corp., 875 F.3d 651, 666 (Fed. Cir. 2017) (“[A] district
court does not abuse its discretion by declining to give [a] plaintiff multiple chances to correct
deficiencies in its argument or the record.”).

10

Plaintiff also cites to testimony “regarding Plaintiff’s agreements” and the “patented
invention and benefits,” as well as that “no single prior art described the claimed invention”
and that “preexisting devices were inferior.” Plaintiff, however, does not tie this testimony
to any particular value of the ’650 patent.

11

Plaintiff had the opportunity to conduct discovery and to call other witnesses, such as its
damages expert, to offer other evidence potentially relevant to damages. (See D.I. 261 at
511:2-23). Instead, Plaintiff chose to hinge its damages theory on the very license that the
Court had already precluded its expert from testifying about.
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Here, the record is wholly lacking in evidence that would allow the Court to determine the
value of a reasonable royalty for the ’650 patent. Therefore, the Court will remit the jury’s award
to nominal damages of $1. See TecSec, 978 F.3d at 1291-92 (“[W]e have previously stated that
‘in a case completely lacking any evidence on which to base a damages award, the record may
well support a zero royalty award.” (quoting Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1328
n.7 (Fed. Cir. 2014))); AOS Holding Co. v. Bradford White Corp, No. 18-412-LPS, 2021 WL
5411103, at *38 (D. Del. Mar. 31, 2021) (awarding “only nominal damages of $1” for a certain
portion of infringement for which Plaintiff failed to put forth any evidence).
4.

New Trial

If the Court upholds any of the jury’s liability findings, Defendants request a new trial in
the alternative for various reasons. The Court finds that none of Defendants’ cited reasons merit
granting a new trial.
First, Defendants contend that, even if the Court finds that judgment as a matter of law is
not warranted on any of the issues it requests, the Court should grant a new trial because the “the
jury’s liability findings are against the great weight of the evidence.” (D.I. 267 at 19). As noted
above, the Court has found that the jury’s infringement and validity findings are supported by
substantial evidence. Therefore, the Court sees no reason to disturb the jury’s verdict with respect
to those issues. See Williamson, 926 F.2d at 1353 (“[N]ew trials because the verdict is against the
weight of the evidence are proper only when the record shows that the jury’s verdict resulted in a
miscarriage of justice or where the verdict, on the record, cries out to be overturned or shocks [the]
conscience.”).
Second, Defendants argue that the jury’s verdict was improperly influenced by Mr. Carter’s
testimony, during which he mentioned a $30,000,000 damages number and provided “hearsay
testimony to the jury about when certain licensed patents expired.” (D.I. 267 at 19). The testimony
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Defendant complains of goes to the damages award, which the Court has remitted. Thus, the issue
of whether to grant a new trial with respect to this issue is moot.12
Finally, Defendants argue that a new trial is warranted because Plaintiff’s counsel argued
the wrong legal standard for written description in its closing argument by referring to
Mr. Juergens’ testimony about what was known in the prior art in 2001. (D.I. 267 at 20). The
jury, however, may consider the context of the state of knowledge at the time of invention in
making its written description determination. See Zoltek Corp. v. United States, 815 F.3d 1302,
1308 (Fed. Cir. 2016). Regardless, the Court read instructions to the jury which included the
correct standard for written description. (D.I. 261 at 557:6-558:18). Furthermore, Defendants’
own counsel arguably warped the legal standard during their own closing argument. (See id. at
593:16-18 (arguing “[y]ou can look through that patent word by word and you won’t see a shuttle”
in making its written description case to the jury)). Therefore, the Court does not find that the
jury’s verdict was unfairly influenced.
In sum, the Court does not find that a new trial is warranted and thus will deny that portion
of Defendants’ motion.
B.

Plaintiff’s Motion

Given that the Court has remitted the award to nominal damages, the Court will deny
Plaintiff’s motion for prejudgment and post-judgment interest (D.I. 264) as moot.
IV.

CONCLUSION
For the foregoing reasons, Defendants’ renewed motion for judgment as a matter of law or

in the alternative, motion for a new trial and/or remittitur (D.I. 266) is GRANTED-IN-PART to

12

Furthermore, as noted at trial, the testimony regarding the $30,000,000 figure was
immediately struck from the record, and the Court did not find that the brief testimony was
likely to risk prejudicing the jury. (D.I. 259 at 173:6-13; 270:12-23).
20

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the extent it seeks remittitur of nominal damages and DENIED-IN-PART in all other respects, and
Plaintiff’s motion for prejudgment and post-judgment interest (D.I. 264) is DENIED as moot. An
appropriate order will follow.

21