IP Law Daily, PATENT—D. Del.: Summary judgment denied in coronary stent dispute, (Oct 7, 2022)

By Kevin M. Finson, J.D.

A reasonable jury could find for either side because the parties and their experts disputed the physical properties of the accused product.

Boston Scientific, a manufacturer of coronary stents, was not entitled to summary judgment of non-infringement or no willful infringement of a patent owned by the University of Texas, the federal district court in Wilmington, Delaware, has held. A reasonable jury could credit the testimony of either side’s experts about the physical properties of the accused products and Boston Scientific’s knowledge of the patent at issue and could therefore reasonably find for either side (Board of Regents, The University of Texas System v. Boston Scientific Corp., October 6, 2022, Williams, G.).

Board of Regents The University of Texas System and TissueGen, Inc. (UT) were owners of U.S. Patent No. 6,596,296 (the ’296 patent). UT alleged that Boston Scientific Corp. (BSC) infringed several claims of its patent through sale of BSC’s “Synergy” brand coronary stents. BSC moved for summary judgment of non-infringement and non-willfulness.

Infringement. BSC argued that it was entitled to summary judgment of non-infringement because the accused products did not contain a “fiber or polymer fiber”, because they did not meet the “immiscible” limitation, and because the accused products did not have “discrete drug-containing regions” within the polymer fiber. On the fiber question, the parties disputed whether a coating was in any sense “thread-like,” as well as the proper claim construction.

The court reconsidered its prior decision to construe “polymer fiber” in accordance with its plain and ordinary meaning and set a mini-Markman hearing to resolve the issue. As to immiscibility, the parties disagreed on whether the documentation at issue supported “slight miscibility” or “immiscibility” and even disagreed on the physical facts of the interaction of the two substances, which the court held clearly made immiscibility a jury question. On the “drug-containing regions issue,” the court found that UT’s expert testimony supported the idea that the accused product did have separate phases, one of which contained a drug, and the weight to be given to this expert was a jury question. All of these questions showed clear disputes about physical properties of the accused product and were clearly jury questions, so summary judgment was denied.

Willfulness. BSC argued that UT could not show BSC had knowledge of the ’296 patent prior to suit, that it or engaged in any post-suit infringement that was intentional or willful. The court reviewed the evidence put forward by UT, including testimony, declarations, and emails of BSC executives that could be read to describe the technology and patent at issue, and held that a rational juror could choose to credit UT’s evidence, not believe BSC’s evidence, and find that the infringement was willful. The court noted that there was nothing in the record to suggest the sort of behavior that would justify an award of enhanced damages, but that a finding of willfulness was only a part of the enhancement analysis and that there was certainly enough evidence of willfulness to go to the jury. Summary judgment on the issue of willfulness was denied.

The Case is No. 18-392-GBW.

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

Companies: University of Texas System Board of Regents; TissueGen, Inc.; Boston Scientific Corp.

Cases: Patent DelawareNews