IP Law Daily, PATENT—D. Del.: Boston Scientific fails to overturn infringement verdict in favor of University of Texas, (Jun 7, 2024)

By Kevin M. Finson

However, the jury’s willfulness finding was reversed because there was nothing in the record to show “wanton, malicious, and bad-faith” behavior on the part of the infringer.

A jury verdict finding that medical device company Boston Scientific Corporation willfully infringed a patent claiming a biodegradable fiber format used in the delivery of drugs was not supported by trial evidence and would be reversed, the U.S. District Court in Wilmington has held. However, expert testimony and other trial evidence supported the jury’s infringement verdict and $42 million damages award in favor of the University of Texas and Tissuegen, Inc. (Board of Regents, The University of Texas Systems v. Boston Scientific Corp., No. 1:18-cv-00392-GBW (D. Del. June 5, 2024)).

The Board of Regents, University of Texas Systems and Tissuegen, Inc. (collectively, Univ. of Texas) were the owners of U.S. Patent No. 6,596,296 (the ’296 patent), which claimed a biodegradable fiber format used in the delivery of drugs. Univ. of Texas brought suit for infringement against Boston Scientific Corporation (Boston Scientific). After trial, a jury ruled in favor of the Univ. of Texas on infringement, induced infringement, and willful infringement and against Boston Scientific on its claims of invalidity. The jury awarded reasonable royalty damages in the amount of $42 million. Boston Scientific moved for new trial and judgment as a matter of law.

Judgment as a matter of law. The court found that there was no evidence in the record from which the jury could have found willful infringement. While there was a showing that Boston Scientific was aware of the patented invention, the court pointed out that knowledge of the patent did not amount to a showing of the “wanton, malicious, and bad-faith” behavior required for willful infringement. As to each and every other finding that the jury made leading to infringement, however, the court found that the jury was within its rights to believe the testimony of the Univ. of Texas’s witnesses, and so judgment as a matter of law was denied as to those issues.

New trial. Boston Scientific argued for a new trial based on allegedly improper and inflammatory statements made by the Univ. of Texas’s counsel on closing argument by making reference to IPR proceedings not in the record and describing the “clear and convincing” standard in the context of other uses of that standard, such as involuntary commitment or removal of children from parental care. The court held that in the context of the entire record and the court’s curative instructions given at the time of closing arguments, these statements were not so egregious as to warrant a new trial.

The court granted judgment as a matter of law on the issue of willfulness and otherwise denied the motion.

The Case is No. 1:18-cv-00392-GBW.

Judge: Williams, G.

Attorneys: Stamatios Stamoulis (Stamoulis & Weinblatt LLC) for Board of Regents, the University of Texas Systems and Tissuegen, Inc. Brian E. Farnan (Farnan LLP) for Boston Scientific Corp.

Companies: Tissuegen, Inc.; Boston Scientific Corp.

Cases: Patent DelawareNews