IP Law Daily, PATENT—Fed. Cir.: Court reverses University of Texas patent victory against Boston Scientific, (Jul 28, 2026)

By Patricia K. Ruiz, J.D.

The court found asserted claims anticipated by prior art and concluded the accused stent products do not infringe on the patent.

The U.S. Court of Appeals for the Federal Circuit reversed a judgment in favor of the Board of Regents of the University of Texas System and TissueGen Inc. in a patent infringement dispute with Boston Scientific Corp., holding that Boston Scientific was entitled to judgment as a matter of law on both invalidity and noninfringement. The court concluded that a prior-art patent known as Song anticipated all asserted claims of U.S. Patent No. 6,596,296. The court also determined that no reasonable jury could find that Boston Scientific’s accused stent coating satisfied the patent’s “fiber” limitation, making it unnecessary to address the university’s cross-appeal concerning willful infringement (Board Of Regents Of The University Of Texas System v. Boston Scientific Corp., No. 24-2062 (Fed. Cir. Jul. 27, 2026)).

Background. The patent-in-suit, U.S. Patent No. 6,596,296, is directed to a “Drug Releasing Biodegradable Fiber Implant” and claims compositions containing biodegradable polymer fibers with therapeutic agents dispersed within them. The University of Texas sued Boston Scientific in 2017, alleging that the company’s drug-eluting coronary stent systems infringed several patent claims. Following claim construction and a jury trial, the jury found infringement, rejected Boston Scientific’s anticipation defense, found willful infringement, and awarded damages. The district court later set aside the willfulness finding but otherwise upheld the verdict and entered judgment. Boston Scientific appealed, and the university cross-appealed the willfulness ruling.

Anticipation ruling. The Federal Circuit held that Boston Scientific was entitled to judgment as a matter of law that asserted claims 1, 11, 17 and 26 were anticipated by U.S. Patent No. 5,364,627, referred to as Song.

Regarding claim 1, the court found that Song expressly disclosed a “biodegradable polymer fiber,” including fibers formed from biodegradable polymers and used to deliver active agents. The court rejected reliance on testimony from the university’s expert distinguishing Song based on its discussion of chewing gum applications, noting that Song’s teachings were broader and expressly covered drugs and fibers exposed to solvents.

The court concluded that Song disclosed the claim requirement of two phases: a polymer portion and discrete drug-containing regions dispersed throughout the fiber. According to the court, Song expressly taught that active-agent regions need not be contiguous, and noncontiguous regions necessarily satisfied the claim’s requirement for “discrete” regions. The court further held that no reasonable jury could find that Song failed to disclose the required immiscible phases because Song expressly stated that the active agent and wall material “must be immiscible with each other.”

For dependent claims 11 and 17, the court found that Song disclosed at least one member of each claim’s Markush group. Claim 11 listed therapeutic agents including drugs, which Song expressly disclosed, while claim 17 encompassed polymers including poly(glycolic acid), which Song also expressly identified.

The court held that claim 26, which required therapeutic agents to be released “at varying rates” over time, was anticipated. The court noted that Boston Scientific’s expert provided uncontradicted testimony that drug-delivery systems inherently exhibit changing release rates over time and that the university offered no contrary evidence. The court also pointed to Song’s figures depicting openings and drug pockets of varying sizes as supporting that conclusion.

Noninfringement. Although its anticipation holding resolved the case, the court separately addressed infringement and concluded that Boston Scientific was also entitled to judgment as a matter of law of noninfringement.

The district court had construed “fiber” to mean “a thread-like structure of any length or shape.” The university’s infringement theory focused on portions of the biodegradable coating applied to the outside of the metal stent frame. According to the court, the university relied on a section of coating that would exist only after being separated from the stent structure.

The court determined that no reasonable jury could find the identified coating section to be “thread-like.” It described the accused structure as a coating that depended on the underlying stent frame, was not intended to exist independently, and resembled a tubular or ribbon-like shape rather than a thread. The court concluded that the university’s evidence failed to establish the presence of the claimed “fiber” under the district court’s construction.

Disposition. The Federal Circuit reversed the district court’s denial of Boston Scientific’s motions for judgment as a matter of law on anticipation and noninfringement. Having reached those conclusions, the court declined to address Boston Scientific’s remaining appellate arguments and did not reach the university’s cross-appeal concerning willful infringement.

The Case is No. 24-2062.

Judge: Taranto, R.

Attorneys: John Pierre Lahad (Susman Godfrey LLP) for Board of Regents of the University of Texas System. Pratik A. Shah (Akin Gump Strauss Hauer & Feld LLP) for Boston Scientific Corp.

Companies: Boston Scientific Corp.

MainStory: TopStory Patent FedCirNews GCNNews