Rex Medical, L.P. v. Intuitive Surgical, Inc., et al., Nos. 2024-1072, -1125 (Fed. Cir. (D. Del.) Oct. 2, 2025). Opinion by Stoll, joined by Dyk and Prost.
Rex sued Intuitive for infringement of patents generally relating to surgical stapling products. Days before a jury trial began, the district court precluded Rex’s damages expert from testifying about a specific license agreement for failure to apportion. The jury found that Intuitive infringed the only claim remaining in the case and that the claim was not invalid, and awarded Rex $10 million. After trial and post-trial motions, the district court entered a final judgment that Intuitive directly infringed and that the claim was not invalid for lack of written description. The court also reduced the damages award to a nominal award of $1. Rex appealed and Intuitive cross-appealed.
The Federal Circuit affirmed. First, relying on its decision in Apple Inc. v. Wi-LAN, Inc., the Federal Circuit explained that “expert testimony should be excluded when it fails to allocate license fees among the licensed patents covered by an agreement.” Here, the expert merely opined that most of the value in the license to Rex’s patent portfolio “is contained in a license to either the ’892 patent or the ’650 patent.” The Federal Circuit thus held that the district court did not err in excluding his testimony because he “fail[ed] to allocate license fees among the licensed patents covered by [the agreement at issue].”
The Federal Circuit then affirmed the district court’s reduction of the damages award from $10 million to nominal damages of $1—which the court interpreted as a JMOL of no damages—and its denial of Rex’s request for a new damages trial. The Federal Circuit explained that while the amount of damages “is normally provable by facts in evidence or as a factual inference from the evidence,” the patent damages statute “does not require an award of damages if none are proven that adequately tie a dollar amount to the infringing acts.” The Federal Circuit specified that damages “must not be left to conjecture by the jury. They must be proved, and not guessed at.” Because neither party presented any expert testimony related to damages, Rex primarily relied on testimony from a lay witness to prove damages. The Federal Circuit explained, however, that the lay witness presented no evidence that would allow the jury to overcome Rex’s deficiencies in failing to apportion. In doing so, the Federal Circuit noted that the outcome here was “fact-specific,” and that had “Rex (or Intuitive) put forth other evidence from which a jury could reasonably determine damages for infringement of the ’650 patent without speculation, JMOL of no damages would be inappropriate and a new trial might be appropriate.”
The Federal Circuit next addressed Intuitive’s cross-appeal. As to its arguments on noninfringement, the court ruled that the district court properly construed the term “lower portion” and thus held that Intuitive’s noninfringement arguments under its proposed construction failed. The court next ruled that, for the “configured to cause” term, substantial evidence supported the jury’s finding that Intuitive’s accused products practiced the limitation. As to its arguments on invalidity for lack of written description, the Federal Circuit explained that because Intuitive’s contention “merely revives its non-infringement argument in the cloak of a validity challenge,” it likewise failed.
Focus Products Group International, LLC, et al. v. Kartri Sales Co., Inc., et al., Nos. 2023-1446, -1450, -2148, -2149 (Fed. Cir. (S.D.N.Y.) Sept. 30, 2025). Opinion by Chen, joined by Moore and Clevenger.
Focus sued Kartri and Marquis for infringement of several patent, trademark, and trade dress rights related to shower curtains having embedded rings, instead of hooks, to attach the curtain to a rod. Kartri and Marquis moved to dismiss or transfer venue, which the district court denied. Subsequently, the district court granted summary judgment of patent infringement and denied Kartri and Marquis’s unclean hands defense. After a bench trial, the district court found infringement of Focus’s marks and trade dress, and that Kartri and Marquis’s infringement of the asserted patents and trade dress was willful such that an award of attorney’s fees was proper. Kartri and Marquis appealed.
First, the Federal Circuit affirmed the denial of Kartri and Maquis’s motion to transfer venue. The Federal Circuit explained that while TC Heartland constituted a change in controlling law that might allow an otherwise untimely objection to venue, Kartri and Marquis “simply took too long” to object to venue by waiting four months to do so.
The Federal Circuit then considered the district court’s grant of summary judgment of infringement for three patents related to embedded shower rings. For two of the patents, the Federal Circuit reversed the district court’s grant based on what it held was a clear disavowal in the prosecution history. Although the statements relied on were made by the examiner as opposed to the applicant, the court explained that the applicant accepted the narrower claim scope by adding new claims in response to a restriction requirement, withdrawing claims without objection in response to the examiner rejections, and ignoring specific invitations from the examiner to object to the examiner’s reasoning. The court thus explained that while “it is the applicant, not the examiner, who must give up or disclaim subject matter,” here, by cooperating with the examiner and keeping with the restriction requirement, the applicant made “clear that it accepted the narrowed claim scope.”
As to the third patent, the Federal Circuit agreed with the district court’s construction of the term “projecting edge,” but determined that infringement was not justified at the summary judgment stage, and thus vacated. The Federal Circuit found persuasive that the accused ring looked “essentially identical” to a figure in the asserted patent that did not include the “projecting edge” required by the claims.
The Federal Circuit next considered the trademark and trade dress issues. First, as to the HOOKLESS® mark, the Federal Circuit held that the district court erred in determining there was a “likelihood of confusion” because the district court erroneously relied on a comparison between the products themselves for the “similarity of the marks” analysis. Instead, the district court should have “analyze[d] the similarity of the products in light of the way in which the marks are actually displayed in their purchasing context.” As to the “EZ ON” mark, the Federal Circuit held that the district court erred in holding that Focus had standing to bring suit over that mark because the licensing agreement relied on by Focus did not actually transfer ownership.
Regarding trade dress, the Federal Circuit held that the district court erred in determining that Focus’s unregistered trade dress rights in the overall appearance of shower curtains sold under the HOOKLESS® and EZ ON brands were nonfunctional. The Federal Circuit faulted the district court for failing to consider Supreme Court precedent holding that a prior utility patent “is strong evidence” an asserted trade dress is functional. The court thus remanded and instructed the district court to conduct such an analysis.
The Federal Circuit separately addressed whether Kartri and Marquis waived any arguments by filing noncompliant appeal briefs that divided issues between their briefs and then attempted to incorporate each other’s brief by reference. The court deemed some issues waived and others preserved. The Federal Circuit also affirmed the district court’s rejection of Katri and Marquis’s unclean hands defense, vacated and remanded the district court’s finding of willfulness in light of its other reversals and vacaturs, and held that the district court did not abuse its discretion when it deemed this case exceptional and awarded attorney’s fees.
US Inventor, Inc., et al. v. USPTO, No. 2024-1396 (Fed. Cir. (D.D.C.) Oct. 3, 2025). Opinion by Reyna, joined by Lourie and Stark.
US Inventor filed a petition for rulemaking to establish criteria to limit the authority of the USPTO to institute inter partes or post-grant review under the AIA. After the USPTO denied its petition, US Inventor filed a district court complaint alleging violations of the APA and AIA. The court dismissed US Inventor’s complaint for lack of standing. US Inventor appealed.
The Federal Circuit affirmed the dismissal of US Inventor’s complaint for lack of associational standing. The Federal Circuit explained that standing requires showing (1) that the plaintiff “suffered an injury in fact,” (2) “a causal connection between the injury and the conduct complained of,” and (3) that the injury is “likely” to be “redressed by a favorable decision.” Associational standing also requires that “(1) at least one of their members would have standing to sue; (2) the interests they seek to protect are germane to the organizations’ purposes; and (3) neither the claim asserted nor the relief requested requires the participation of individual members.”
The Federal Circuit held that US Inventor failed to satisfy the first associational standing requirement because they did “not show that any of their members suffers a non-speculative injury in fact from the USPTO’s denial of appellants’ petition for rulemaking.” Instead, the Federal Circuit determined that US Inventor’s alleged injury is “conjectural or hypothetical” because it was based on an extended chain of events that would have to occur before any potential harm could be done. Those events include: (1) a third party must file a petition for IPR or PGR; (2) the IPR or PGR petition must satisfy minimum standards for institution; (3) the Board must exercise the Director’s discretionary authority to grant institution; and (4) institution must increase the probability that the Board would cancel the challenged claims as compared to alternative proceedings. The Federal Circuit explained that US Inventor lacked associational standing at least because these steps were within the control of a third party, making the events highly speculative and involving “a significant degree of guess work.”