Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Board of Regents of the University of Texas System, et al. v. Boston Scientific Corp.
No. 2024-2062, -2063 (Fed. Cir. (D. Del.) July 27, 2026). Opinion by Taranto, joined by Bryson and Cunningham.
The Board of Regents of the University of Texas (UT) owns a patent directed to an implant containing a drug-releasing biodegradable polymer fiber in which a therapeutic agent is dispersed. According to the patent, the invention can be used with “commercially available stents to deliver drugs at the placement site” in a patient.
UT sued Boston Scientific Corporation (BSC) for infringement by BSC’s drug-eluting coronary stent systems. At trial, a jury found that BSC willfully infringed the asserted claims, rejected BSC’s contention that the claims were invalid for anticipation, and awarded damages to UT. After trial, the district court set aside the willfulness finding as legally unsupported but otherwise upheld the verdict and entered judgment accordingly. BSC appealed the judgment, and UT cross-appealed the district court’s rejection of the jury’s willfulness verdict.
The Federal Circuit reversed, holding that BSC was entitled to judgment as a matter of law of (1) invalidity for anticipation by the “Song” prior-art reference, and (2) noninfringement.
As to anticipation, the Federal Circuit focused on three claim limitations: a “biodegradable polymer fiber,” composed of two “phases,” with the phases being “immiscible.” For the first limitation, the court ruled that “multiple disclosures in Song compel a finding that the reference teaches a ‘biodegradable polymer fiber.’” Also, although the district court had credited testimony by UT’s expert, the Federal Circuit ruled that the testimony “cannot support a finding that Song does not teach the biodegradable polymer fiber element.”
For the second limitation, the Federal Circuit concluded that “no reasonable jury could have found that Song does not disclose both ‘phases.’” The court based its ruling primarily on Song’s express disclosure. The court also distinguished UT’s expert testimony, which addressed “a particular aspect of how the drug is released from the fiber—an aspect not claimed.” The Federal Circuit ruled that “because UT’s expert testimony … does not address a claim requirement, it does not provide sufficient evidence” to support the jury verdict.
For the third limitation, UT did not separately argue on appeal that Song fails to disclose “immiscible” phases, which the Federal Circuit found “not surprising” because Song expressly disclosed the requirement.
The Federal Circuit also analyzed the asserted dependent claims and concluded that they too were anticipated by Song, and that no reasonable jury could find otherwise.
Turning next to the infringement verdict, the Federal Circuit held that no reasonable jury could find that the accused portion of BSC’s stent met the claim requirement of a “fiber.” The district court construed “fiber” as “a thread-like structure of any length or shape,” and UT’s infringement theory pointed to “a part of the stent’s coating, and not the stent itself.” The Federal Circuit ruled that no reasonable jury could find the section of coating relied on by UT to be “thread-like,” explaining that “it is not reasonable to characterize that artificially separated section of the stent coating as a ‘thread-like’ structure.”
Accordingly, the Federal Circuit reversed and held that BSC was entitled to judgment as a matter of law of both invalidity and noninfringement.