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Judge Andrews Grants New Trial on Anticipation Due to Lack of Evidence Corroborating Alleged Date of Conception

Judge Andrews recently considered several post-trial motions in a case relating to data storage systems including de-duplication of data. The Court largely denied the motions for judgment as a matter of law and new trial, but found one basis on which to grant the Defendant’s motion for a new trial. One anticipatory reference predated the patent-in-suit by several months, but the inventor testified that he had conceived of the invention earlier. Due to a lack of corroborating evidence, however, the Court found that it had been error to allow the jury to determine whether the reference was or was not prior art. EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA, Memo. Op. at 12-18 (D. Del. Sept. 1, 2016). The Plaintiff, Judge Andrews explained, “failed to meet its burden of production with respect to an earlier date of conception. [Plaintiff] did not produce independent corroborating evidence of [the inventor’s]. The [allegedly corroborating] whiteboard photographs are not independently corroborative of [the inventor’s] testimony because [the inventor] took the photographs and had control of the camera, the photograph file names, and the metadata . . . [and] uncovered the photographs in 2015. Further, there is no evidence that [the inventor] showed the whiteboard markings or photographs of them to anyone other than his co-inventors around the time the markings were made.” Id. at 16 (internal citations omitted). The evidence provided, therefore, was both not “independent” and could not be reliably dated and were therefore insufficient to corroborate the testimony regarding conception. Id. at 16-17. Accordingly, Judge Andrews found, the jury “should have been instructed that the [reference at issue] is prior art,” and a new trial was warranted. Moreover, Judge Andrews found that the Defendant was entitled to judgment that the reference at issue disclosed certain elements of the claims and that the Plaintiff was not entitled to judgment that any claim element was missing; accordingly, the Court ordered a new trial on anticipation.

EMC Corp., et al. v. Pure Storage, Inc., C.A. No. 13-1985-RGA (D. Del. Sept. 1, 2016).

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