Lack of Corroborative Evidence for Conception Date Justifies New Trial on Anticipation​

Following a jury verdict of $14 million, the court granted in part defendant's motion for a new trial on anticipation because it was an error to allow the jury to determine whether a patent was prior art to the patent-at-issue. "Because [plaintiff] did not present independent corroborative evidence of [the co-inventor's] testimony regarding the date of conception, [his] testimony regarding inventive facts must be disregarded. Considered as stand-alone documentary evidence, the whiteboard photographs, associated metadata, and Architecture Specification are also insufficient to meet [plaintiff's] burden to produce evidence of the date of conception of the [patent-in-suit]. . . . [B]oth [the co-inventor's] testimony and the documentary evidence are legally insufficient to prove a date of conception prior to the filing date of the [patent-in-suit]. . . . It was error to submit the issue whether [a purported prior art] patent was prior art to the [patent-in-suit] to the jury. The jury should have been instructed that the [patent] is prior art to the [patent-in-suit]. . . . The jury did not specifically find whether the [prior art] patent discloses every limitation of the asserted claims of the [patent-in-suit]. The question whether the [prior art] patent discloses the 'space efficient, probabilistic summary' of the asserted claims cannot be determined as a matter of law and is therefore a fact question for the jury. [Defendant] is thus entitled to a new trial on anticipation of the [patent-in-suit] by the [prior art] patent."

EMC Corporation, et al. v. Pure Storage Inc., 1-13-cv-01985 (DED September 1, 2016, Order) (Andrews, USDJ)