Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 1 of 22 PageID #: 22491
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`EMC CORPORATION, EMC
`INTERNATIONAL COMPANY, and EMC
`INFORMATION SYSTEMS
`INTERNATIONAL,
`
`V.
`
`PURE STORAGE, INC.,
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`Plaintiffs,
`
`Defendant.
`
`Civil Action No. 13-1985-RGA
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`MEMORANDUM OPINION
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`Jack B. Blumenfeld, Esq., Jeremy A. Tigan, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP, Wilmington, DE; Joshua A. Krevitt, Esq., Paul E. Torchia, Esq., Steven M. Kalogeras,
`Esq., Katherine Q. Dominguez, Esq., Laura F. Corbin, Esq., GIBSON, DUNN & CRUTCHER
`LLP, New York, NY; Stuart M. Rosenberg, Esq., GIBSON, DUNN & CRUTCHER LLP, Palo
`Alto, CA; Jordan H. Bekier, Esq., GIBSON, DUNN & CRUTCHER LLP, Los Angeles, CA;
`Paul T. Dacier, Esq., Krishnendu Gupta, Esq., William R. Clark, Esq., Thomas A. Brown, Esq.,
`EMC CORPORATION, Hopkinton, MA, attorneys for Plaintiffs.
`
`John W. Shaw, Esq., David M. Fry, Esq., SHAW KELLER LLP, Wilmington, DE; Robert A.
`Van Nest, Esq., Matthew Werdegar, Esq., R. Adam Lauridsen, Esq., Corey Johanningmeier,
`Esq., David Rizk, Esq., KEKER & VAN NEST LLP, San Francisco, CA; Joseph FitzGerald,
`Esq., PURE STORAGE, INC. Mountain View, CA, attorneys for Defendant.
`
`September _I_, 2016
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 2 of 22 PageID #: 22492
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`~~.~
`ANDREWS, US. DISTRICT JUDGE:
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`Presently before the Court are EMC's Motion for a Permanent Injunction (D.I. 491) and
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`Pure Storage's renewed Motion for Judgment as a Matter of Law ("JMOL") or, in the
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`Alternative, for a New Trial (D.I. 484). The motions have been fully briefed. (D.I. 492, 496,
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`509, 511, 523, 524). The Court has jurisdiction pursuant to 28 U.S.C. §§ 1331and1338(a). For
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`the reasons that follow, the Court will deny Pure Storage's motion with respect to JMOL, grant
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`in part and deny in part Pure Storage's motion with respect to a new trial, and dismiss as moot
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`EMC's motion for a permanent injunction.
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`I. BACKGROUND
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`Plaintiff EMC Corporation initiated this litigation on November 26, 2013, alleging that
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`Defendant Pure Storage, Inc. ("Pure") infringed U.S. Patent Nos. 6,904,556 ("the '556 patent");
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`7,373,464 ("the '464 patent"); 7,434,015 ("the '015 patent"); and 8,375,187 ("the '187 patent"). 1
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`(D.I. 1). On June 6, 2014, EMC Corporation filed an amended complaint, joining EMC
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`International Company, and EMC Information Systems International as plaintiffs (Plaintiffs
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`collectively, "EMC"). (D.I. 37). Pure answered the amended complaint on June 13, 2014. (D.I.
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`38). The Court resolved the parties' claim construction disputes in two opinions issued January
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`9, 2015 and February 2, 2016. (D.I. 115, 362). On February 11, 2016, the Court granted
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`summary judgment ofnoninfringement of the '187 patent and summary judgment of
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`infringement of certain claims of the '015 patent. (D.I. 381, 388). The parties proceeded to trial
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`on the '556, '464, and '015 patents beginning on March 7, 2016. (D.I. 461-67). On March 15,
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`2016, the jury rendered a verdict for EMC on the '015 patent, finding the asserted claims of the
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`'015 patent (claims 1, 2, 7, 15, and 16) valid. (D.I. 453). The jury found that the asserted claims
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`1 EMC also alleged infringement of U.S. Patent No. 6,915,475, but subsequently withdrew the '475 patent from the
`litigation.
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`2
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 3 of 22 PageID #: 22493
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`of the '556 and '464 patents were not infringed. (Id.). The jury awarded reasonable royalty
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`damages in the amount of $14 million to EMC and found that EMC was not entitled to lost
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`profits. (Id.). At trial, Pure moved for judgment as a matter oflaw pursuant to Rule 50(a) of the
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`Federal Rules of Civil Procedure. (D.I. 445). The Court denied that motion. (D.I. 455). The
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`Court entered judgment consistent with the jury's verdict on March 17, 2016. (D.I. 456).
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`The motions presently before the Court relate to the '015 patent. (D.I. 484, 491). The
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`'015 patent is entitled "Efficient Data Storage System" and discloses systems and methods for
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`providing efficient data storage. ('015 patent, (54), 1:18-20). The '015 patent systems and
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`methods eliminate data redundancy using deduplication techniques. (See id.; D.l. 461 at 149-
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`50). Deduplication reduces the demand for storage space in a data storage system by eliminating
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`duplicate copies of data. (D.I. 215 at 10; D.I. 461at149-50; D.I. 464 at 97-100).
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`II. LEGAL STANDARDS
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`A. Judgment as a Matter of Law
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`Judgment as a matter of law is appropriate if "the court finds that a reasonable jury would
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`not have a legally sufficient evidentiary basis to find for [a] party" on an issue. FED. R. Crv. P.
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`50(a)(l). "Entry of judgment as a matter oflaw is a 'sparingly' invoked remedy, granted only if,
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`viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of
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`every fair and reasonable inference, there is insufficient evidence from which a jury reasonably
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`could find liability." Marra v. Phila. Haus. Auth., 497 F.3d 286, 300 (3d Cir. 2007) (citation and
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`internal quotation marks omitted).
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`In assessing the sufficiency of the evidence, the Court must give the nonmovant, "as [the]
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`verdict winner, the benefit of all logical inferences that could be drawn from the evidence
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`presented, resolve all conflicts in the evidence in his favor and, in general, view the record in the
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`light most favorable to him." Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.
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`3
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 4 of 22 PageID #: 22494
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`1991). The Court may "not determine the credibility of the witnesses [nor] substitute its choice
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`for that of the jury between conflicting elements in the evidence." Perkin-Elmer Corp. v.
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`Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984). Rather, the Court must determine
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`whether the evidence reasonably supports the jury's verdict. See Gomez v. Allegheny Health
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`Servs. Inc., 71F.3d1079, 1083 (3d Cir. 1995); 9B Charles Alan Wright & Arthur R. Miller,
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`Federal Practice and Procedure§ 2524 (3d ed. 2008) ("The question is not whether there is
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`literally no evidence supporting the party against whom the motion is directed but whether there
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`is evidence upon which the jury might reasonably find a verdict for that party.").
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`Where the movant bears the burden of proof, the Third Circuit applies a stricter standard.
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`Fireman's Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171, 1177 (3d Cir. 1976) (internal
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`quotation marks omitted). To grant judgment as a matter of law in favor of a party that bears the
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`burden of proof on an issue, the Court "must be able to say not only that there is sufficient
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`evidence to support the [movant's proposed] finding, even though other evidence could support
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`as well a contrary finding, but additionally that there is insufficient evidence for permitting any
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`different finding." Id. (internal quotation marks omitted).
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`B. Motion for a New Trial
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`Federal Rule of Civil Procedure 59(a)(l)(A) provides, in pertinent part: "The court may,
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`on motion, grant a new trial on all or some of the issues-and to any party- ... after a jury trial,
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`for any reason for which a new trial has heretofore been granted in an action at law in federal
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`court .... " Among the most common reasons for granting a new trial are: (1) the jury's verdict
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`is against the clear weight of the evidence, and a new trial must be granted to prevent a
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`miscarriage of justice; (2) newly discovered evidence exists that would likely alter the outcome
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`of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or
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`4
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 5 of 22 PageID #: 22495
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`(4) the jury's verdict was facially inconsistent. See Zarow-Smith v. NJ Transit Rail Operations,
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`Inc., 953 F. Supp. 581, 584-85 (D.N.J. 1997).
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`The decision to grant or deny a new trial is committed to the sound discretion of the
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`district court. Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980); Olejins Trading, Inc.
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`v. Han Yang Chem Corp., 9 F.3d 282, 289 (3d Cir. 1993). Although the standard for granting a
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`new trial is less rigorous than the standard for granting judgment as a matter oflaw-in that the
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`Court need not view the evidence in the light most favorable to the verdict winner-a new trial
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`should only be granted where "a miscarriage of justice would result if the verdict were to stand"
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`or where the verdict "cries out to be overturned" or "shocks [the] conscience." Williamson, 926
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`F.2d at 1352-53.
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`III. ANALYSIS
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`A. Venti Reference and Moulton Patent
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`1. JMOL-Venti Reference
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`Pure argues that it is entitled to JMOL that the Venti reference anticipates the asserted
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`claims of the '015 patent. (D.I. 496 at 19-22; D.I. 524 at 12-14). At trial, EMC disputed that
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`the Venti reference discloses the "determining" step of the asserted independent claims and the
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`"confirming" step of dependent claim 7. 2 (D.I. 466 at 156-60). Specifically, EMC argues that
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`there are three reasons why Venti does not anticipate. First, EMC argues that Venti does not
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`disclose the determining step because it does not disclose a space-efficient, probabilistic
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`summary that is used in data writes. (Id. at 157-58, 207, 209-10; D.I. 509 at 25-26). Second,
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`EMC argues that Venti does not disclose a determination made with "possible uncertainty"
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`2 The "determining" step of the asserted claims of the '015 patent is: "determin[ing/e] whether one of the plurality of
`data segments has been stored previously using a summary, wherein the summary is a space efficient, probabilistic
`summary of segment information." ('015 patent, 9:58-61, 10:64-67, 12:1-4). The "confirming" step is:
`"confirming whether the one of the plurality of data segments has been stored previously using a relatively high
`latency memory." (Id. at 10:13-15).
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`5
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 6 of 22 PageID #: 22496
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`because it discloses a determination using SHA-1 hash identifiers, for which the probability of a
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`collision is "vanishingly small."3 (DTX560 at p. 3315; D.I. 464 at 361-62; D.I. 465 at 140-42;
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`D.I. 466 at 159-60, 202-03; D.I. 509 at 24-25). Third, EMC argues that Venti does not disclose
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`the confirming step of claim 7 because, even ifVenti discloses a space-efficient, probabilistic
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`summary that is used in data writes, that summary is used only in an initial determining step and
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`not in a confirming step. (D.I. 466 at 159-60, 221; D.I. 509 at 26).
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`EMC's first argument fails. No reasonable jury could have found that the "Index Cache"
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`described in Venti, identified by Pure as the claimed "space efficient, probabilistic summary," is
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`not used in data writes. (See D.I. 464 at 368-75). Pure's expert testified that the data structure
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`disclosed in Venti that holds the claimed space efficient, probabilistic summary is the Index
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`Cache. (Id. at 368). EMC's expert testified that the Index Cache does not perform the
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`determining step because it is not used for write operations and therefore is not a part of storing
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`new data to the device. (D.I. 466 at 157-58, 207-10; see also D.I. 464 at 371). However, a
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`reasonable jury could not have credited EMC's expert's opinion testimony that the Index Cache
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`is "actually not used in writes." (D.I. 466 at 210). EMC's expert offered no support for his
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`opinion, and it is contradicted by Table 1 ofVenti, which gives performance information on
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`"Duplicate Writes" involving the Index Cache. (See id. at 209-1 O; DTX560 at Table 1,
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`p. 3320 ("Table 1 gives the preliminary performance results for read and write operations in a
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`variety of situations.")); see also Brooke Grp. Ltd. v. Brown & Williamson Tobacco Corp., 509
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`U.S. 209, 242 (1993) ("When an expert opinion is not supported by sufficient facts to validate it
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`in the eyes of the law, or when indisputable record facts contradict or otherwise render the
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`opinion unreasonable, it cannot support a jury's verdict.").
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`3 A "collision" occurs when the hashing algorithm generates identical identifiers for different data. (See D.I. 465 at
`126).
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`6
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 7 of 22 PageID #: 22497
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`EMC's second argument is more persuasive. The jury could have reasonably concluded
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`that Pure failed to prove by clear and convincing evidence that Venti discloses the "probabilistic
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`summary" recited in the determining step of the asserted claims. A reasonable jury could have
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`concluded that Venti does not disclose the claimed "probabilistic summary" because "Venti
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`assumes that each hash function is unique, and thus would treat a hit as a conclusive
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`determination that the block is already stored." (D.l. 509 at 25 (emphasis omitted); see D.I. 466
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`at 159-60). There is no dispute that the SHA-1 hash identifiers disclosed in Venti are
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`mathematically probabilistic, but that the probability of a collision is less than 10-20
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`. (DTX560 at
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`p. 3315; D.l. 464 at 60-62; D.l. 465 at 140-42). Pure argues, "EMC wrongly interprets the
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`Court's construction allowing for possible uncertainty to instead require uncertainty." (D.l. 524
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`at 13 n.13 (emphasis omitted)). Pure argues, further, that even ifthe claims were interpreted to
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`require uncertainty, "Venti still anticipates-because [EMC's expert] admitted that Venti
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`discloses mathematically uncertain hashes with a non-zero collision probability." (Id. at 13).
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`EM C's position that the determining step of the asserted claims requires the possibility of
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`some uncertainty is consistent with the Court's construction of "determine" and "probabilistic
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`summary." (See D.I. 115 at 4-7). As the Court noted, the patent "contemplate[s] both
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`conclusive and inconclusive determinations." (Id. at 6). The Court further explained that "the
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`specification and claims demonstrate that determinations are qualified with 'positively' when
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`decided conclusively. A determination that is not 'positive,' therefore, must have some
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`independent meaning-a determination cannot be conclusive both when it is, and is not,
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`described as 'positive."' (Id. at 5-6). The asserted claims' determining steps do not specify
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`"positively determining." (See '015 patent, 9:58-61, 10:64-67, 12:1-4). Thus, a reference that
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`7
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 8 of 22 PageID #: 22498
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`discloses only determinations made with certainty does not disclose the full scope of the asserted
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`claims, which demand the possibility of uncertainty in the determining step.
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`Regarding Pure's argument that the SHA-1 hashes used in Venti are mathematically
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`probabilistic, EMC' s expert testified, and the Venti reference itself explains, that "the probability
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`of a collision is vanishingly small." (DTX560 at p. 3315; D.I. 464 at 360-62; D.I. 465 at 140-
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`42; D.I. 466 at 202-04). Indeed, even Pure's expert described the hashes calculated by the
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`SHA-1 algorithm as "unique." (D.I. 464 at 361; see also D.l. 465 at 125-26 (Pure's expert
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`agreeing that what makes the claimed summary "probabilistic" is "the likelihood that there might
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`be a collision, that the match is actually not duplicate data, and that we can't discard it because
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`we might then be throwing out nonduplicate data")). The jury reasonably could have found that
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`SHA-I hashes do not yield determinations made with possible uncertainty and therefore do not
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`satisfy the determining step. Thus, a reasonable jury could have found that Pure failed to meet
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`its burden to prove that the Venti reference anticipates the asserted claims of the '015 patent.
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`EMC's third argument fails. A reasonable jury would have had to find that Pure proved
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`by clear and convincing evidence that Venti discloses the confirming step of claim 7. EMC's
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`expert testified that the system disclosed in Venti does not do a confirming step. (D.I. 466 at
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`159-60, 221 ). Pure argues, however, that EM C's expert "only discusses Venti's disclosed
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`operation when a matching hash is found in the system," in which case there is no dispute that no
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`further check is done to confirm that the data is duplicate. (D.I. 496 at 22). Pure maintains that
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`the Venti reference discloses a confirming step after the system determines that data is new.
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`(Id.). Pure's expert testified that the system disclosed in Venti does a preliminary check in the
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`Index Cache to determine whether a block is new, followed by a confirmatory check in the full
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`index. (D.I. 465 at 10-13). EMC's expert did not rebut that testimony. (See D.I. 466 at 159-
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`8
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 9 of 22 PageID #: 22499
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`60). That Venti does not disclose a confirming step when it determines that data is duplicate
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`does not imply that it does not disclose a confirming step when it determines that data is new.
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`As Pure's expert testified, Venti does disclose the claimed confirming step. (D.I. 465 at 10-13;
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`see DTX560 at pp. 3318, 3320). Thus, there was insufficient evidence to support a finding that
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`Venti does not disclose the confirming step of claim 7.
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`For the reasons discussed above, a reasonable jury would have had to find that the "Index
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`Cache" described in Venti is used in data writes and that Venti discloses the confirming step of
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`claim 7. The jury reasonably could have concluded, however, that Pure had not proven by clear
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`and convincing evidence that Venti discloses the "probabilistic summary" recited in the
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`determining step of the asserted claims. Thus, Pure is not entitled to JMOL that the Venti
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`reference anticipates.
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`2. JMOL-Moulton Patent
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`Pure argues that it is entitled to JMOL that the Moulton patent anticipates the asserted
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`claims of the '015 patent. (D.I. 496 at 23-24; D.I. 524 at 14). EMC argues that, like Venti,
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`Moulton does not disclose a determination made with possible uncertainty because it discloses
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`(1) using hash identifiers with very small collision probabilities and (2) discarding data without a
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`confirming step when identifiers match. (D.I. 509 at 26-27; see DTX556 at 14:24-30; D.I. 465
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`at 130-34; D.I. 466 at 162-63). EMC also argues that Moulton does not disclose a "space(cid:173)
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`efficient" probabilistic summary. (D.I. 509 at 27 (citing D.I. 466 at 162)).
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`A reasonable jury would have had to conclude that Pure met its burden to prove that
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`Moulton discloses a summary that is space efficient. Pure' s expert testified that the "Existing
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`Hashes 214" in Moulton was a space efficient data structure that satisfied the "space efficient,
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`probabilistic summary" claimed in the '015 patent. (D.I. 465 at 27-31; see DTX556 at Fig. 5).
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`9
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 10 of 22 PageID #: 22500
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`EMC's expert testified that the "Database of Hash Values and Corresponding Data 212" in
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`Moulton is not space efficient. (D.I. 466 at 162; see DTX556 at Fig. 5). EMC's expert did not
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`rebut Pure's expert's testimony regarding "Existing Hashes 214." (See D.I. 466 at 162). The
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`jury therefore could not have reasonably concluded that Moulton does not disclose a space
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`efficient summary.
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`The jury could have reasonably concluded that Pure did not prove by clear and
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`convincing evidence that the Moulton patent discloses the "probabilistic summary" recited in the
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`determining step of the asserted claims because Moulton does not disclose making a
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`determination with possible uncertainty. Moulton discloses using hash identifiers calculated
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`using a variety of algorithms including MD4, MD5, SHA and SHA-1. (DTX556 at (57)). The
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`Moulton patent describes hashing functions as
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`inherently probabilistic and any hashing function might possibly produce incorrect
`results when two different data objects happen to have the same hash value.
`However, the system and method herein disclosed mitigates this problem by using
`well known and researched hashing functions that reduce the probability of a
`collision down to levels acceptable for reliable use (i.e. one chance in a trillion
`trillion), far less than error rates otherwise tolerated in conventional computer
`hardware operations.
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`(Id. at 14:21-30). In light of this description in the Moulton patent and EMC's expert's
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`testimony, the jury could have concluded that the Moulton patent does not disclose making a
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`, determination with possible uncertainty. (See D.I. 466 at 160-64; see also D.I. 465 at 131-32).
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`The jury was not compelled to credit Pure's expert's contrary testimony that the hashing
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`functions identified in the Moulton patent are inherently probabilistic. (D.I. 465 at 29). Thus,
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`the jury could have reasonably concluded that Pure did not prove by clear and convincing
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`evidence that the Moulton patent discloses the claimed probabilistic summary.
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`10
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 11 of 22 PageID #: 22501
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`For the reasons stated above, a reasonable jury could have found that Pure failed to meet
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`its burden to prove that the Moulton patent anticipates the asserted claims of the '015 patent.
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`Pure is therefore not entitled to JMOL that the Moulton patent anticipates the asserted claims of
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`the '015 patent.
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`3. New Trial-Venti Reference and Moulton Patent
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`Pure argues that it is entitled to a new trial on anticipation by the Venti reference and the
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`Moulton patent because "the Court erred in refusing to admit Dr. Li's, Dr. Patterson's, and Dr.
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`Miller's testimony about their understanding of Ven ti-and in the case of Dr. Patterson, also
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`Moulton-as skilled artisans who were familiar with the reference at the time." (D.I. 496 at 24
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`n.25 (citing D.I. 462 at 90, 106, 107)). Specifically, Pure maintains that Drs. Li, Patterson, and
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`Miller "would have testified, for example, to disclosure of another kind of probabilistic
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`uncertainty-arising from the use of a subset of identifiers." (Id.). At trial, however, Pure
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`argued that the point of its objected-to questioning of Dr. Li regarding the Venti reference would
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`be to show that the Venti reference "was well-known ... and it was out there and even the
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`inventor saw it a month before he said he conceived his invention." (D.I. 462 at 88). Pure
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`maintained that Dr. Miller's testimony would not "go into the elements of Ven ti." (D .I. 464 at
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`10). The scope of Dr. Patterson's testimony before the jury was agreed-upon by the parties
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`without input from the Court. (See D.I. 465 at 3). Pure is therefore not entitled to a new trial on
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`anticipation by the Venti reference and the Moulton patent on the ground that Drs. Li, Patterson,
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`and Miller did not testify about their understanding of the disclosures of the Venti reference and
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`the Moulton patent.
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`B. Sun Patent
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`Pure argues that it is entitled to JMOL that the Sun patent anticipates the asserted claims
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`of the '015 patent. (D.I. 496 at 6-18). Alternatively, Pure argues that it is entitled to a new trial
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`11
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 12 of 22 PageID #: 22502
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`on the issue of whether the Sun patent is prior art to the '015 patent. (Id. at 18-19). Pure
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`contends that there was no legally sufficient evidence based on which the jury could have found
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`that the Sun patent is not prior art to the '015 patent. (Id. at 7). EMC argues that the jury
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`reasonably and correctly concluded that the Sun patent is not prior art to the '015 patent because
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`the '015 inventors conceived of their inventions prior to the filing date of the Sun patent
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`application. (D.I. 509 at 9). EMC argues that even ifthe Sun patent were prior art, it would not
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`anticipate. (Id.).
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`1. Prior Art
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`The date of invention of a patent in suit is presumed to be the filing date of the patent
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`application unless an earlier date of invention is proved. Bausch & Lomb, Inc. v. Barnes(cid:173)
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`Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986). When a defendant challenging a
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`patent's validity introduces alleged prior art dated before the filing date of the patent in suit, the
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`patentee may present evidence of an earlier priority date. Mahurkar v. C.R. Bard, Inc., 79 F.3d
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`1572, 1576-78 (Fed. Cir. 1996). The patentee may establish an earlier priority date by
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`producing evidence that the inventor conceived his invention prior to the filing date of the
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`alleged prior art and that the inventor exercised reasonable diligence in later reducing that
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`invention to practice. Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993). "Though the
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`patentee has the burden of production in antedating a reference, the burden of persuasion, by
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`clear and convincing evidence, remains with the party that challenges an issued patent's
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`validity." Stamps.com Inc. v. Endicia, Inc., 437 F. App'x 897, 907-08 (Fed. Cir. 2011) (citing
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`Mahurkar, 79 F.3d at 1576).
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`An inventor is considered to have conceived an invention when he has formed in his
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`mind "a definite and permanent idea of the complete and operative invention, as it is hereafter to
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`12
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 13 of 22 PageID #: 22503
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`be applied in practice." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed.
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`Cir. 1994) (internal quotation marks omitted). "The idea must be so clearly defined in the
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`inventor's mind that only ordinary skill would be necessary to reduce the invention to practice,
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`without extensive research or experimentation." Mahurkar, 79 F.3d at 1577 (internal quotation
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`marks omitted).
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`Where "a party seeks to prove conception via the oral testimony of a[ n] ... inventor, the
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`party must proffer evidence corroborating that testimony." Shu-Hui Chen v. Bouchard, 347 F.3d
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`1299, 1309 (Fed. Cir. 2003); Mahurkar, 79 F.3d at 1577; Price, 988 F.2d at 1195. Specifically,
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`"the inventor must provide independent corroborating evidence in addition to his own statements
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`and documents." Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002) (alterations omitted).
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`"Independent corroboration may consist of testimony of a witness, other than the inventor, ... or
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`it may consist of evidence of surrounding facts and circumstances independent of information
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`received from the inventor." Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir.
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`2006). An inventor's own unwitnessed documents cannot corroborate his testimony about
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`inventive facts. See Brown, 276 F.3d at 1335. Once it has been established that proffered
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`evidence is independently corroborative, the sufficiency of that evidence is determined under the
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`"rule ofreason." Id.; Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997). Corroboration
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`is not required "where a party seeks to prove conception through the use of physical exhibits.
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`The trier of fact can conclude for itself what documents show, aided by testimony as to what the
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`exhibit would mean to one skilled in the art." Mahurkar, 79 F.3d at 1577-78 (citation omitted).
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`Pure argues that it is entitled to JMOL that the Sun patent is prior art to the '015 patent.
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`(D.l. 496 at 6-7; D.l. 453 at 3). The application that resulted in the Sun patent was filed on
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`March 22, 2002. (DTX557 at 2). The application that resulted in the '015 patent was filed on
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 14 of 22 PageID #: 22504
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`December 20, 2002. ('015 patent, (63)). EMC maintains, however, that the Sun patent is not
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`prior art to the '015 patent because the '015 patent is entitled to a priority date no later than
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`March 16, 2002. (D.I. 509 at 10; see also D.l. 467 at 70-71). At trial, EMC presented the
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`following as evidence of a date of conception prior to the filing date of the Sun patent
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`application: (1) the testimony of Dr. Li, a co-inventor of the '015 patent; (2) three whiteboard
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`photographs and their associated metadata; and (3) an architecture specification.4 (D.I. 462 at
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`35-131; PTX8-PTX11 ). Pure argues that it is entitled to JMOL because EMC failed to meet its
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`burden of production with respect to independent corroborating evidence of Dr. Li's testimony of
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`the date of conception. Pure maintains that EMC's evidence is therefore insufficient as a matter
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`oflaw to establish the date of conception. (D.I. 496 at 6-12). Alternatively, Pure argues that it
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`is entitled to a new trial on the issue of whether the Sun patent is prior art because the jury's
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`verdict in this regard is against the clear weight of the evidence. (Id. at 18-19).
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`EMC argues, first, that the jury was entitled to rely on Dr. Li's corroborated testimony to
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`conclude that the '015 patent antedates the Sun patent. (D.I. 509 at 13). In particular, EMC
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`maintains that, under the rule of reason, the whiteboard photographs and Architecture
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`Specification provide sufficient independent corroboration of Dr. Li's testimony that he
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`conceived the invention claimed in the '015 patent no later than March 16, 2002. (Id. at 15-18).
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`EMC contends that the whiteboard photographs are independently corroborative of the date of
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`4 EMC introduced several architecture specifications at trial. (See D.I. 462 at 83-84). Of the admitted architecture
`specifications, EMC's argument concerning the date of conception depends most on a "global" architecture
`specification (the "Architecture Specification") labeled "v0.11" and bearing a date of April 3, 2002. (See id. at 78,
`81; PTX8). The date on the cover page of the Architecture Specification is later than the March 22, 2002 filing date
`of the Sun patent. (PTX8 at 1). The cover page of the Architecture Specification, however, lists March 16, 2002 as
`the date ofv0.1 of that specification. (Id.). Dr. Li testified that he looked for and could not find the March 16, 2002
`vO. l document. (D.I. 462 at 80, 109-10). The other architecture specifications that EMC introduced at trial were
`specific to individual modules described in the Architecture Specification and were dated after the filing date of the
`Sun patent. (Id. at 83-84; PTX49, PTX50, PTX51, PTX55, PTX57, PTX59, PTX62, PTX63, PTX65, PTX66,
`PTX67, PTX68).
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`

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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 15 of 22 PageID #: 22505
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`conception because the metadata associated with each photograph indicates that it was taken
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`before the filing date of the Sun patent application. (Id. at 16-17; D.I. 462 at 74-76). EMC
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`further contends that "the jury reasonably concluded that the date on Dr. Li's camera was set
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`correctly, especially since Pure did not present any evidence whatsoever that the metadata for
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`those native files was not accurate." (D.I. 509 at 17 (citation omitted)). EMC maintains that the
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`Architecture Specification is also independently corroborative of the date of conception because,
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`"although it was authored by Dr. Li, [it] is a contemporaneous EMC business record," was
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`maintained on Data Domain's company servers, and was produced by EMC independently of Dr.
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`Li. (Id. at 15 (citing the fact that the Architecture Specification bears EMC Bates numbers)).
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`EMC argues, second, that the jury was entitled to conclude that the '015 patent antedates the Sun
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`patent on the basis of the whiteboard photographs and Architecture Specification alone. (Id. at
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`18). EMC maintains that the whiteboard photographs and Architecture Specification do not
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`require independent corroboration because they are contemporaneous documentary evidence of
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`the date of conception of the '015 patent. (Id.).
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`Pure argues that Dr. Li's testimony is legally insufficient evidence of the date of
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`conception of the '015 patent because it not corroborated by any independent evidence. (D.I.
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`496 at 9). Pure argues that the whiteboard photographs, their associated metadata, and the
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`Architecture Specification do not independently corroborate Dr. Li's testimony because they
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`were "created and dated by Dr. Li himself." (Id. at 10). Pure argues, therefore, that "[t]he
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`inventor testimony and inventor-created evidence offered by EMC at trial is insufficient as a
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`matter oflaw to antedate the Sun patent." (Id.). Pure argues, further, that even ifthere were
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`sufficient evidence of the date of the whiteboard photographs and Architecture Specification, the
`
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`Case 1:13-cv-01985-RGA Document 534 Filed 09/01/16 Page 16 of 22 PageID #: 22506
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`evidence does not establish that every element of the asserted claims was conceived prior to the
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`filing date of the Sun patent. (Id. at 12).
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`EMC failed to meet its burden of production with respect to an earlier date o