On January 31, 2023, lawyers from Susman Godfrey and the Shore Firm obtained a $42 million jury verdict on behalf of their clients, The Board of Regents of the University of Texas System and TissueGen, Inc., against Boston Scientific Corporation prevailing in the assertion of patent infringement claims relating to a patented biodegradable polymer fiber drug delivery system incorporated into Boston Scientific’s SYNERGY™ branded coronary stents. The jury deliberated in two phases for approximately three hours after a bifurcated five-day trial before U.S. District Judge Gregory B. Williams in the District of Delaware.
The patent at issue, U.S. Patent No. 6,596,296, issued in July 2003 and claims a novel biodegradable polymer fiber that releases therapeutic agents into a patient’s tissue at a targeted location and at a variable rate. The lead inventor on the patent, Dr. Kevin Nelson, was a Professor of Biomedical Engineering at The University of Texas at Arlington before founding TissueGen, the exclusive licensee of the patent.
The Board of Regents and TissueGen sued Boston Scientific in November 2017. At trial, the Board of Regents and TissueGen proved to a six-woman, two-man jury that Boston Scientific’s SYNERGY™ stents were derived from information given to Boston Scientific executives both in person at a conference and again via an exchange of emails. The presentation identified the ’296 patent and explained its unique features in detail. Some months later, Boston Scientific disclosed to the FDA that its plan for a drug-eluting coronary stent that used a different technology was being replaced by technology the jury found to be derived from the disclosures in the ’296 patent.
According to the verdict, the jury found all four asserted claims infringed and valid in the first phase of the trial. In the second phase, the jury found Boston Scientific’s infringement to be willful and assessed the $42 million in damages, 80% of the amount requested.
“It was an honor to represent the Board of Regents and TissueGen at trial. We appreciate the jury’s careful attention to the facts of the case and the evidence presented under the calm and deliberate guidance of Judge Williams’ instructions.” Shore Firm founder Michael Shore added, “Our Firm stands ready to defend the rights of all our university, non-profit clients around the world who are often taken advantage of by large corporations who do not think a university or non-profit can afford to vindicate their rights. We just proved – again – they can, and they will.”
“We are pleased to have achieved this result recognizing the importance, novelty, and value of Dr. Nelson’s innovations and the contributions of The University of Texas System to the cutting edge of technology,” said Susman Godfrey partner John Lahad.
The win was covered by Texas Lawyer and Dallas News (subscription required).
The Shore Firm team included Michael Shore, co-lead counsel Chijioke Offor, and Alex Jacobs. The Susman Godfrey team included John Lahad, and Of Counsel Corey Lipschutz. Also providing invaluable local assistance at trial was Delaware counsel Stamatios Stamoulis of Stamoulis & Weinblatt.
The case is Board of Regents, The University of Texas System and TissueGen, Inc v. Boston Scientific Corporation, case No. 1:18-cv-00392-GBW, in the U.S. District Court for the District of Delaware.
