Bd. of Regents v. Bos. Sci. Corp.

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BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEMS, and TISSUEGEN, INC., Plaintiffs, v. BOSTON SCIENTIFIC CORPORATION, Defendant.

C. A. No. 18-392

United States District Court, D. Delaware

June 5, 2024

Stamatios Stamoulis, STAMOULIS &amp WEINBLATT LLC, Wilmington, DE; Michael W. Shore, Chijioke E Offor, Alex Q. Jacobs, THE SHORE FIRM, Dallas, Texas; Brian D. Melton, John P. Lahad, Corey M. Lipschutz, SUSMAN GODFREY L.L.P, Houston, Texas Counsel for Plaintiffs

Brian E. Faman, Michael J. Faman, FARNAN LLP, Wilmington, DE; Michael P. Kahn, AKIN GUMP STRAUSS HAUER & FELD LLP, New York, NY; Rachel J. Elsby, AKIN GUMP STRAUSS HAUER & FELD LLP, Washington D.C; Chad Drown, Timothy E. Grimsrud, Katherine S. Razavi, Lauren J.F. Barta, Doowon R. Chung, N. Chethana Perera, FAEGRE DRINKER BIDDLE & REATH LLP, Minneapolis, MN; David J.F. Gross, FAEGRE DRINKER BIDDLE & REATH LLP, East Palo Alto, CA; Evan J. Kline-Wedeen, FAEGRE DRINKER BIDDLE & REATH LLP, Chicago, Illinois; Christopher J. Burrell, FAEGRE DRINKER BIDDLE & REATH LLP, Washington, D.C. Counsel for Defendant

MEMORANDUM OPINION

GREGORY B.WLIAMS U.S. DISTRICT JUDGE

After a bifurcated trial, the jury returned a verdict for Plaintiffs Board of Regents, the University of Texas Systems, and Tissuegen, Inc. (collectively, “Plaintiffs”), against Defendant Boston Scientific (“Defendant”). D.L 332; D.I. 334. The jury found that Defendant directly and indirectly infringed U.S. Patent No. 6,596,296 (the “'296 patent”) and awarded Plaintiffs $42 million in damages. Id. The jury also found that Defendant's infringement was willful. Id. Now pending before the Court are Defendant's Motions for a New Trial and Judgment as a Matter of Law (D.I. 345) and Plaintiffs' Motion for Enhanced Damages and Pre- and PostJudgment Interest (D.I. 349). Having reviewed the motions and all relevant briefing, the Court finds that: (1) Defendant's Motion for a New Trial is DENIED; (2) Defendant's Motion for Judgment as a Matter of Law is GRANTED as to willful infringement and is otherwise DENIED; (3) Plaintiffs' Motion for Enhanced Damages is DENIED; (4) Plaintiffs' Motion for Pre-Judgment Interest is GRANTED in the amount of $7,436,328; and (5) Plaintiffs' Motion for Post-Judgment Interest is GRANTED at a rate of 4.87% computed daily and compounded annually.

1. INTRODUCTION

On November 20, 2017, Plaintiffs initiated this litigation against Defendant alleging, among other things, infringement of the '296 patent. D.I. 1. The '296 patent, titled “Drug Releasing Biodegradable Fiber Implant” claims a biodegradable fiber format that can be used in the delivery of drugs. According to Plaintiffs, Defendant infringed the '296 patent by producing and selling Synergy™ stents which, like Plaintiffs' patented technology, utilized a biodegradable polymer fiber to deliver drugs. D.I. 124, ¶¶ 65-66, 80. Plaintiffs asserted claims against Defendant for direct and induced infringement of claims 1, 11, 17, and 26 of the '296 patent (hereinafter, the “Asserted Claims”). Id. at ¶ 79. In response, Defendant alleged that one or more of the asserted claims of the '296 patent is invalid. D.I. 238 at 24-25.

On December 12, 2022, the Court issued an order to bifurcate trial into two phases. D.I. 260. Following the first phase of trial, the jury ruled in favor of Plaintiffs on infringement of the '296 patent and denied Defendant's claims of invalidity. D.I. 331. After phase two, the jury found for Plaintiffs on their claims that Defendants induced infringement of the '296 patent and that Defendant's infringement of Plaintiffs' patented technology was willful. D.I. 333. Finally, the jury found that Defendant's infringement entitled Plaintiffs to reasonable royalty damages totaling $42 million. Id. at 4. Judgment was entered on February 15,2023. D.I. 342.

Defendant now moves for a new trial under Rule 59(a) on the grounds that Plaintiffs engaged in improper conduct during their opening statements, introduced improper evidence and argument throughout the trial, and invited the jury to render a verdict based on improper considerations during closing. D.I. 345. Defendant also moves for judgment as a matter of law under Rule 50(b) on the grounds that the Asserted Claims are anticipated and lack written description as a matter of law; no reasonable jury could have found infringement based on the Court's constructions of “fiber” and “immiscible;” Plaintiffs failed to present sufficient evidence to support their damages theory; and no reasonable jury could have found willful infringement. Id.

Given the jury's finding of willful infringement, Plaintiffs seek enhancement of the jury's damages award under 35 U.S.C. § 284. D.I. 350. Additionally, Plaintiffs seek pre-judgment interest pursuant to the “de facto rule” of federal courts and post-judgment interest under 28 U.S.C. § 1961. Id. at 1.

Defendant opposes Plaintiffs' motion for enhanced damages and contends that Plaintiffs' request for pre-judgment interest should be denied as premature or, alternatively, reduced. D.L 355 at 2.

2. LEGAL STANDARD

a. Judgment as a Matter of Law

A court may enter JMOL against the non-moving party where it “finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on [an] issue.” FED. R. CIV. P. 50(a)(1). However, JMOL is appropriate “only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find liability.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). Entry of JMOL is a remedy to be invoked only “sparingly.” CGB Occupational Therapy, Inc. v. RHA Health Servs. Inc., 357 F.3d 375, 383 (3d Cir. 2004).

Following a jury trial, a renewed motion for JMOL under Rule 50(b) may be granted only if the movant demonstrates “that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by] the jury's verdict cannot in law be supported by those findings.” Pannu v. lolab Corp., 155 F.3d 1344,1348 (Fed. Cir. 1998) (alteration in original) (internal quotation marks omitted). Substantial evidence requires such relevant evidence that a reasonable mind might accept it as adequate to support the finding under review. See Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398,407 (Fed. Cir. 2018). In determining whether substantial evidence supports the jury verdict, the Court cannot make credibility determinations, weigh the evidence, or substitute its own conclusions for that of the jury where the record evidence supports multiple inferences. See Lightning Lube, 4 F.3d at 1166. The standards that govern a Rule 50(b) motion, however, “vary according to whether the movant has the burden of proof.” Fireman's Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171,1177 (3d Cir. 1976).

To grant JMOL in favor of a party with the burden of proof, the court “must be able to say not only that there is sufficient evidence to support the finding [sought by the moving party] ... but additionally that there is insufficient evidence for permitting any different finding.” Id. (quoting 9 WIGMORE ON EVIDENCE § 2495 at 306 (3d ed. 1940)); see also Amgen Inc. v.' Hospira, Inc., 944 F.3d 1327, 1333 (Fed. Cir. 2019) (“[W]here the movant b[ears] the burden of' proof on an issue, JMOL is only granted where ‘there is insufficient evidence for permitting any different finding.'” (quoting Fireman's Fund, 540 F.2d at 1177)); Deere & Co. v. Ageo Corp, et al, C. A. No. 18-827-CFC, 659 F.Supp.3d 418 (D. Del. March 28, 2023).

b. Motion for New Trial

Under Fed.R.Civ.P. 59, “a new trial should only be granted when a ‘miscarriage of justice would result if the verdict were to stand,' the verdict ‘cries out to be overturned,' or the verdict ‘shocks the conscience.'” Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, 503 F.Supp.3d 156, 166 (D. Del. 2020); see also Intellectual Ventures I, LLC v. Canon Inc., 104 F.Supp.3d 629, 637 (D. Del. 2015) (“[T]he court should grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand.”).

3. DISCUSSION

For the reasons stated below, the Court (1) grants Defendant's motion for judgment as a matter of law as to willfulness and denies Defendant's motion for judgment as a matter of law as to invalidity, infringement, and damages; (2) denies Defendant's motion for a new trial; (3) denies Plaintiffs' motion for enhanced damages; and (4) grants Plaintiffs' motion for pre- and post-judgment interest.

a. Judgment As a Matter of Law

i. Defendant is not entitled to JMOL on the issue of whether Song anticipates the asserted claims.

Defendant contends that Song anticipates the asserted claims, and “there is no record evidence that supports the jury's finding otherwise.” D.L 364 at 12. For the following reasons, the Court disagrees.

“A single prior art reference anticipates a patent claim if it expressly or inherently describes each and every limitation set forth in the patent claim.” Trintec Indus Inc. v. TopU.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). While a single reference may expressly anticipate a claim where the reference explicitly discloses each and every claim limitation, the prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be expressly anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.Cir.1984). “Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one...