Patent Law Updates | New Settlements and Verdicts
July 14, 2008
TX District Court Denies Boston Scientific’s Motion to Overturn $501M Jury Award in Drug-Eluting Stent Patent Case
Saffran v. Boston Scientific Corp.
No. 2-05-CV-547 (TJW), U.S. District Court for the Eastern District of Texas, 7/9/2008
The U.S. District Court for the Eastern District of Texas denied Boston Scientific Corp.’s (“BSC”) motion for a new trial after a jury awarded $501.26 million in actual damages and prejudgment interest to a medical doctor who owned a patent relating to drug-eluting stent. BSC had asked the district court to order a new trial on damages because the jury verdict was against the great weight of evidence. Specifically, BSC argued that patent-holder Dr. Bruce Saffran’s damages theory was largely based on the assumption that the subject matter claimed in the patent was a significant invention that was necessary to make a drug-eluting stent. BSC claimed that it provided evidence and testimony that more than one hundred companies chose not to license the patent at issue and that Saffran made no significant contributions to the industry. But the district court rejected BSC’s arguments, ruling that the jury found Saffran’s evidence more credible, and the court may not supplant its judgment for the jury’s finding where the evidence in the record supported the jury’s verdict. Consequently, the district court held that the damages award should stand.
Bruce N. Saffran, Ph.D., M.D. is the patent owner of the ’760 patent entitled “Method and Apparatus for Managing Macromolecular Distribution.” He accused BSC of infringing his patent by engaging in the business of manufacturing, assembling, and selling drug-eluting stents, including, but not limited to, Taxus Express, a Paclitaxel-Eluting Coronary Stent System.
In its answer, BSC raised the affirmative defenses of non-infringement and invalidity. After jury trial, the jury determined that defendant BSC infringed, directly and/or contributorily, claims 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 13, 15, 16, 17, and 18 of the ‘760 patent, but did not find that any of the asserted claims were invalid. The jury awarded, and the district court affirmed in a subsequent Final Judgment on February 14, 2008, reasonable royalty of $431.87 million in actual damages, and $69.39 million in pre-judgment interest, for a total award of $501.26 million.
BSC then filed a motion for new trial on damages. Specifically, BSC argued that the damages verdict was against the great weight of the evidence. The crux of BSC’s position is that Saffran’s damages theory was largely based on the assumption that the subject matter claimed in the ‘760 patent was a significant invention that is necessary to make a drug-eluting stent. BSC claimed that it provided evidence and testimony that more than one hundred companies chose not to license the ‘760 patent and that Saffran made no significant contributions to the industry.
But the district rejected BSC’s arguments, stating that the verdict was not against the great weight of the evidence. Both parties provided evidence and testimony supporting their positions. The jury found Saffran’s evidence more credible and the court may not supplant its judgment for the jury’s verdict where the evidence in the record can support the jury’s verdict.
BSC further asserted that Saffran was allowed to offer evidence that BSC willfully infringed the ‘760 patent, but that BSC was not able to rebut that testimony. The district court however rejected this argument, stating that BSC failed to show that the district court precluded it from offering rebuttal testimony or evidence.
BSC also alleged that the district court committed error by not including BSC’s proposed curative instruction in the court’s final instructions to the jury. However, BSC never raised that objection to the court’s jury instructions at trial. Consequently, BSC waived its objection.
Additionally, BSC asserted that the district court made prejudicial comments to the jury concerning BSC’s trial misconduct. Again, the district court rejected this argument, stating that it had never had counsel so recklessly disregard its orders before trial. The district court repeatedly warned BSC against violating its orders, but counsel for BSC paid little, if any, heed to the court’s instructions and warnings. BSC repeatedly violated the district court’s orders warranting an instruction from the court. BSC failed to timely amend its invalidity contentions, tried to elicit improper opinion testimony from fact witnesses, and exceeded the scope of direct examination on cross-examination. BSC made a strategic decision not to present evidence to the jury in its invalidity case.
At trial, BSC repeatedly violated the court’s orders in limine despite repeated warnings from the district court. In an effort to guarantee compliance with the court’s orders, the court notified the jury that BSC had violated the court’s orders. During final jury instructions, the court instructed the jury that it, not the court, was the sole fact finder in this case and that the jury should not construe any comments to indicate any view of the court as to which party should or should not win the case.
On the basis of the foregoing, the district court denied BSC’s motion for new trial, and maintained the jury award of $501.26 million in favor of Saffran.
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