Mathematically Feasible Combinations of Prior Art Do Not Provide Clear & Convincing Evidence of Invalidity Unless Presented to the Jury as ...

Specific Combinations That Invalidate Specific Claims

"[T]he court informed [defendant] that, without limiting the combinations of allegedly invalidating references it could present, it would have to identify each specific combination of prior art items that it asserted made one or more of the asserted claims obvious. To permit a party to list . . . nine prior art references, and allow an expert to tell the jury that some combination of two or more of them is what makes a claim invalid is gamesmanship of the highest order. On appeal, after seeing what did not work well, the party would have, mathematically, some 502 potential combinations of two or more references from which to choose. Some of them may actually invalidate a claim, but is it clear and convincing evidence to the jury if that combination was not explained to them?"

Hearing Components, Inc. v. Shure, Inc., 9-07-cv-00104 (TXED March 6, 2009, Order)