Prior Art Reference not Identified as Anticipatory Cannot Support Invalidity Verdict Under Guise of Obviousness

The court granted in part plaintiff's motion for judgment as a matter of law reversing the jury's verdict of invalidity based on obviousness as to six claims across two of Plaintiff's data storage patents. "[Defendant's expert] attempted to testify that the combination of the Tanaka reference with the knowledge of the person of ordinary skill in the art rendered all asserted claims of [a patent-in-suit] invalid. A close reading of the transcript, however, leads to the conclusion that this 'combination' of prior art is little more than an attempt to assert the Tanaka reference as anticipating. . . . Although he gave lip service to the idea of combining Tanaka with the knowledge known to a POSITA, nowhere in his testimony does he actually point out the specific gaps in the Tanaka reference that would have to be filled by the POSITA’s knowledge. . . . [W]hen asked to ‘sum up with respect to the [patent-in-suit] in light of Tanaka and the knowledge of a person of ordinary skill,’ [the expert] responds that ‘Tanaka discloses everything in the asserted claims and renders those claims invalid.’ [The expert] does not say that ‘Tanaka in combination with the POSITA’ renders the claims invalid; rather, he says that Tanaka by itself renders the claims invalid. This is anticipation, not obviousness. Anticipation with respect to the Tanaka reference was not claimed by [defendant], and was not submitted to the jury. [Defendant] cannot sneak an invalidating reference through the back door when its failure to comply with the rules concerning invalidity contentions and disclosures would bar the front door to that reference."

Realtime Data, LLC d/b/a IXO v. MetroPCS Texas, LLC, et. al., 6-10-cv-00493 (TXED March 4, 2013, Order) (Clark, J.).