Board of Regents of the University of Texas System v. Boston Scientific Corp.

Board of Regents of the University of Texas System v. Boston Scientific Corp. The Federal Circuit held that Boston Scientific was entitled to JMOL that asserted claims 1, 11, 17, and 26 were anticipated by the Song prior-art patent. The court also held that Boston Scientific was entitled to JMOL of noninfringement because no reasonable jury could find the accused stent coating met the construed 'fiber' limitation. The decision underscores that expert testimony cannot preserve a verdict where the prior art expressly discloses the claimed limitations or where the infringement theory depends on an artificial slicing of an accused product inconsistent with the claim construction. Reversed the district court's denial of JMOL on anticipation and noninfringement; did not reach UT's cross-appeal on willfulness; costs awarded to Boston Scientific. The asserted claims required a biodegradable polymer fiber having first and second immiscible phases, with the second phase comprising discrete drug-containing regions dispersed throughout the fiber. On anticipation, the court held Song expressly disclosed biodegradable polymer fibers, immiscible polymer and active-agent components, noncontiguous/discrete active-agent regions, and the Markush alternatives recited in dependent claims 11 and 17. For claim 26, the court held the one-sided record required a finding that Song disclosed release at varying rates over time, relying on Boston Scientific's unrebutted expert testimony and Song's figures showing openings and drug pockets of varying sizes. On noninfringement, the court applied the district court's construction of 'fiber' as a 'thread-like structure' and held UT's theory—based on a cut-out portion of dried coating removed from a metal stent frame—could not support a reasonable infringement finding. Because invalidity and noninfringement independently resolved the case for Boston Scientific, the court did not address UT's willfulness cross-appeal or Boston Scientific's other trial-error arguments. § 102 claim construction infringement precedential § 102 claim construction infringement precedential § 102 claim construction infringement