Realtime Data v. T-Mobile, 6:10cv493 (3/4/13)
Judge: Ron Clark
Holding: Plaintiff's' Motion for Judgment As A Matter of Law as to Invalidity GRANTED IN PART
As I posted previously, last month a Tyler jury found all of the eleven asserted claims across three patents not infringed, and all eleven invalid. Yesterday Judge Clark ruled on the plaintiff's motions for judgment as a matter of law as to invalidity. "After careful review of the record," the Court wrote, "and taking into consideration T-Mobile’s burden to prove invalidity by clear and convincing evidence, the court will grant Realtime’s motion for JMOL in part." The Court upheld the jury's verdict that five of the claims were invalid as obvious, but reversed the jury's verdict that the other six were invalid as obvious.
Judge Clark's opinion addresses the applicable law on the burden of proving invalidity at trial, as well as the law on motivation to combine. On the latter point, in addressing the first asserted patent, Judge Clark held that the defendant's expert presented sufficient evidence to survive JMOL with one exception. As to that one combination - a reference plus the knowledge of a person of ordinary skill in the art, Judge Clark held that a close reading of the transcript led to the conclusion that this "combination" was in fact simply an attempt to assert the reference as anticipating - and anticipation with respect to that reference was not claimed or submitted to the jury. "T-Mobile 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," he wrote. The Court then noted that the issue was not an academic one because this combination was the only reference asserted against the two claims of this patent, thus it reversed the jury's verdict of invalidity as to those claims.
On the second patent, Judge Clark affirmed the jury's verdict of invalidity as to the two asserted claims.
With respect to the third patent, Judge Clark set aside the jury's finding on invalidity as to the four asserted claims as to both asserted combinations, and in the course of doing so, addressed the jury's task in light of the burden of proof:
The jury is not required to go on a scavenger hunt, piecing together T-Mobile’s case from scraps of seemingly unrelated testimony. Dr. Reader testified about a lot of information in a fairly short period of time. No reasonable jury could have found that this offhand mention of Figure 1.4, tethered to nothing more than a general description of the Hoffman reference, is clear and convincing evidence of invalidity as to this claim limitation, especially when Dr. Reader later testified it was only satisfied by the Sebastian reference.
Finally, in a section entitled "Why the court reached a different conclusion with respect to the ‘506 patent claims", the court explained why it reached a different conclusion with respect to the '530 claims when it affirmed the jury's verdict of invalidity on the claims of the '506 patent..
The ‘506 and ‘530 patents have similar claim language, and the court allows the jury verdict to stand on the ‘506 patent and not on the ‘530 patent. Therefore, it is worth reiterating briefly the difference between Dr. Reader’s testimony on the two patents. With respect to the‘506 patent, Dr. Reader specifically cited two pages from Hoffman when discussing the “receiving a data block” limitation, explained what the Hoffman passage said, and stated that the devices mentioned in Hoffman received a data block by “capturing” with these devices. Although he did not specifically say that a data block could be received from an external source, the passages explained from Hoffman can be interpreted as such. Again, the key is that Dr. Reader actually explained what the Hoffman reference meant in the context of the claim limitation, rather than leaving the jury to pull together far-flung testimony (Hoffman/Sebastian combination) or pick through a patent passage not deemed important enough for Dr. Reader to explain (Dye/Aakre combination).