Board of Regents of the University of Texas System v. Boston Scientific Corp. — Stent Patent Verdict Reversed for Anticipation and Noninfringement

Background

The University of Texas owns U.S. Patent No. 6,596,296, which claims a drug-releasing biodegradable polymer fiber. UT and its licensee, TissueGen, accused Boston Scientific’s drug-eluting coronary stents of infringing claims directed to a fiber containing separate polymer and drug-bearing phases.

A Delaware jury found infringement, rejected Boston Scientific’s anticipation defense, and awarded a reasonable royalty. The district court later set aside the jury’s willfulness finding but otherwise upheld the verdict. Boston Scientific appealed, and UT cross-appealed on willfulness.

The Court’s Holding

The Federal Circuit reversed. It held that Boston Scientific was entitled to judgment as a matter of law both because the asserted claims were anticipated by the earlier Song patent and because the accused stent coating did not satisfy the patent’s “fiber” limitation.

On anticipation, Song expressly disclosed a biodegradable polymer fiber with an active agent dispersed through it and released over time. The court found that UT’s expert testimony did not create a legally sufficient dispute over the claimed discrete drug-containing regions or the requirement that the drug be released at varying rates. Song’s disclosure therefore supplied every limitation of the asserted claims.

On infringement, the governing claim construction required a fiber to be a thread-like structure. UT’s proof focused on portions of the polymer coating that might be imagined as separated from the stent’s metal frame. The court concluded that a coating or sheet does not contain a thread-like fiber merely because a narrow strip could theoretically be cut from it. No reasonable jury could find the required fiber in the accused products.

Because both grounds independently required judgment for Boston Scientific, the court did not reach UT’s cross-appeal concerning willfulness or Boston Scientific’s remaining trial-related arguments.

Key Takeaways

• A jury verdict cannot stand when the prior art expressly discloses every claim limitation and the opposing expert’s testimony addresses restrictions not found in the claims.
• Infringement evidence must track the court’s actual claim construction; a hypothetical reshaping of an accused component cannot substitute for the claimed structure.
• The same record can support judgment as a matter of law on both invalidity and noninfringement, providing independent grounds for reversal.

Why It Matters

The decision eliminates a patent-infringement judgment involving drug-eluting stent technology and illustrates the demanding evidentiary limits on preserving a jury verdict after trial. For patent owners, it underscores the importance of tying expert testimony directly to claim language and presenting an infringement theory based on the accused product as it actually exists. For accused infringers, it shows how a clear prior-art disclosure and a concrete structural claim limitation can each support dispositive post-trial relief.