IN THE UNITED STATES DISTRICT COURT FOR

THE EASTERN DISTRICT OF PENNSYLVANIA

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COMAPER CORPORATION | CIVIL ACTION

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Plaintiff, |

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v. | NO. 05-1103

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ANTEC, INC. |

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Defendant. |

MEMORANDUM

TUCKER, J. April __, 2012

Presentlybefore the Court is Defendant Antec Inc.’s Motion for Judgment as a Matter of Law

of Invalidity (Doc. 174), Defendant’s Renewed Motion for Judgment as a Matter of Law, or, in the

Alternative, New Trial (Docs. 187, 188), Plaintiff’s Response (Doc. 199), Defendant’s Reply (Doc.

201), Plaintiff’s Sur-Reply (Doc. 204), and all accompanying briefs and relevant correspondence. 

For the reasons set forth below, Defendant’s Motion is GRANTED.

BACKGROUND

Plaintiff, Comaper Corporation (“Comaper”), co-owned by William Corcoran

(“Corcoran”) and Gary Smith (“Smith”), owns United States Patent No. 5,955,955 ("‘955

patent"), which claims a cooling device which mounts within the drive bay region of a computer. 

The application for the ‘955 patent was filed by Corcoran and Smith on December 6, 1994. 

Subsequently, on May 20, 2004, the ‘955 patent for the drive-bay mounted cooling device was

assigned to Corcoran and Smith. The ‘955 patent, in its Abstract, describes the device as

follows: 

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“A cooling device...for a computer having a drive bay region

with at least one drive bay adapted to receive a drive. The device

comprises a case configured to mount within the drive bay of the

computer having at least a first and at least a second opening. When

mounted within the drive bay, the first opening is exposed to ambient

air about the computer and the second opening is disposed within the

drive bay region of the computer. The device also comprises at least

one air movement device mounted within the case. The air

movement device is configured in one of two ways. In a first way, it

draws cooling air through the first opening and exhausts substantially

all of the cooling air though the second opening into the drive bay

region. In a second way, the air movement device draws air through

the second opening from the drive bay region and exhausts it through

the first opening. A mechanism for supplying power to the air

movement device is also provided.” 

‘955 patent, p. 1, Abstract.

Defendant, Antec, Inc. (“Antec”), manufactures computer accessories sold under the

names “Hard Disk Cooling System with Temperature Monitors, “HD Cooler,” and “Hard Disk

Drive Cooler,” (collectively “the Accused Devices”). On March 8, 2005, Comaper filed suit in

this Court against Antec, alleging that Antec infringed the ‘955 patent with its Accused Devices. 

Antec counterclaimed that the ‘955 patent was invalid, unenforceable, and was not infringed by

Antec. (Doc. 7.) 

On July 17, 2006, pursuant to Markman v. Westview, Inc., 517 U.S. 370 (1996), this

Court conducted a Markman hearing to determine the meaning of disputed terms in the ‘955

patent. On September 13, 2006, the Court construed the disputed terms by ordering the

following definitions:

1. “Case” shall mean a structure for containing and holding something;

2. “Drive Bay Slot” shall mean the relatively narrow opening in the housing of the

computer that leads to the drive bay;

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3. “Second Opening” shall mean a separate opening that is exposed to the drive bay

region; and

4. “Case occupies substantially the entire drive bay slot” shall mean, when installed,

the case occupies almost entirely the slot leading to the drive bay.

After completion of a five day trial, on October 10, 2007, the jury returned a Special

Verdict, finding that Antec willfully infringed claims 1, 2, 7, 12, and 13 of the ‘955 patent. 

Comaper Corp. v. Antec, Inc., No. 05-CV-1103, 2008 WL 4140384, at *2 (E.D. Pa. Sept. 8,

2008) (“JMOL Order”). Additionally, the jury concluded that the prior art devices submitted by

Antec “were in public use, offered for sale, or described in publications more than one year prior

to the application for the '955 patent.” Id. However, on appeal, the Federal Circuit found the

Special Verdict to be inconsistent, due to the fact that the jury concluded that the asserted claims

of the ‘955 patent were not anticipated, claims 1 and 12 were not obvious, but that dependent

claims 2, 7, and 13, were invalid as obvious. 

As a result, the Federal Circuit affirmed in part, vacated in part, and remanded the matter

to this Court for a new trial on the issue of validity concerning the inconsistent findings of the

Special Verdict. Comaper Corp. v. Antec, Inc., 596 F.3d 1343 (Fed. Cir. 2010). Additionally,

on appeal, the Federal Circuit affirmed all of the Court’s Markman hearing definitions.

Upon completion of the retrial, held in this Court from January 10, 2011 through January

21, 2011, the jury found that independent claims 1 and 12 of the ‘955 patent were valid. During

the retrial, Plaintiff withdrew dependent claims 2, 7, and 13 from the charge. 

Claim 1 of the patent describes: 

A cooling device for a computer, said computer having a drive bay region

with at least one drive bay slot adapted to receive, said device comprising:

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a case configured to mount within said drive bay slot of said computer

such that said case occupies substantially the entire drive bay slot said case having

a least a first opening and at least a second opening, when mounted with said

drive bay, said first opening being within said drive bay region of said computer;

at least one air movement device mounted within said case, said air

movement device being configured in one of two ways, a first way in which said

air movement device draws cooling air through said first opening and exhausts

substantially all of said cooling air from said case through said second opening

into said drive bay region, a second way in which said air movement device draws

air into said case through said second opening from and drive bay region and

exhausts it through said first opening; and 

power supply means for supplying power to said air movement device.

‘955 patent col.5; l. 34-56.

Claim 12 states:

In a computer having a drive bay region with at least one drive bay slot

adapted to receive a drive, an improvement comprising:

a case mounted within said drive bay slot of said computer such that said

case occupies substantially the entire drive bay slot, said case hav[ing] at

least a first opening and at least a second opening, said first opening being

exposed to ambient air and said second opening being within said drive

bay region of said computer;

at least one air movement device mounted within said case, said air

movement device being configured in one of two ways, a first way in

which said air movement device draws cooling air from said first opening

and exhausts substantially all of said cooling air though said case though

said second opening into said drive bay region, a second way in which said

air movement device draws air into said case through said second opening

from said drive bay region and exhausts it through said first opening; and

power supply means for supplying power to said air movement device

‘955 Patent col.6; l. 33-54.

During the second jury trial, both Plaintiff and Defendant moved for judgment as a

matter of law under Rule 50(a), with such motions being denied by this Court. Subsequently, on

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January 20, 2011, Defendant filed its Memorandum of Law in support of its Motion for

Judgment as a Matter of Law of Invalidity due to Obviousness (Doc. 174), and further briefed its

position with its present Renewed Motion for Judgment as a Matter of Law pursuant to Rule

50(b), or, in the Alternative, New Trial (Docs. 187, 188.)

LEGAL STANDARDS

A. Judgment as a Matter of Law

Federal Rule of Civil Procedure 50 provides on opportunity for a party to challenge, posttrial, the sufficiency of evidence evaluated by the jury. In the Third Circuit, a grant of judgment

as a matter of law (“JMOL”) is appropriate where a party has been fully heard on an issue during

a jury trial and the Court finds that a reasonable jury would not have a legally sufficient

evidentiary basis to find for the party on an issue. Gagliardo v. Connaught Labs, 311 F.3d 565,

568 (3d Cir. 2002).

In determining a Rule 50 motion "[t]he question is not whether there is literally no

evidence supporting the party against whom the motion is directed but whether there is evidence

upon which the jury could properly find a verdict for that party." Foster v. Nat'l Fuel Gas Co.,

316 F.3d 424, 428 (3d Cir. 2003) (quoting Patzig v. O'Neil, 577 F.2d 841, 846 (3d Cir. 1978)). In

viewing all the evidence which has been tendered and should have been admitted, the court must

draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility

determinations or weigh evidence. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,

150-51, 120 S. Ct. 2097, 147 L. Ed. 2d 105 (2000). Although JMOLs should be granted

sparingly, federal courts do not follow the rule that a scintilla of evidence is enough for the Court

to deny the motion. Id.

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The standard under Fed. R. Civ. P 50(b) is unambiguous and well-known. In order for a

party to preserve the right to renew a motion for JMOL after the jury has rendered its verdict, a

party must move for JMOL at the close of all evidence. Bradford Co. v. Jefferson Smurfit Co.,

No. 05-1511, 2001 U.S. App LEXIS *25205 (Fed. Cir. 2001). Third Circuit precedent maintains

this standard. See Chemical Leaman Tank Lines v. Aetna Cas. & Sur. Co, 89 F.3d 976, 992 (3d

Cir. 1996) (stating “[m]otions for judgment as a matter of law must be made before submission of

the case to the jury and must ‘specify the judgment sought and the law and facts on which the

moving party is entitled to judgment’ under Fed. R. Civ. P. 50(a)(2)”); Lightning Lube v. Witco

Corp., 4 F.3d 1153, 1173 (3d Cir. 1993) (stating “[a] motion for judgment as a matter of law

pursuant to Rule 50(b) must be preceded by a Rule 50(a) motion sufficiently specific to afford the

party against whom the motion is directed with an opportunity to cure possible defects in proof

which otherwise might make its case legally insufficient.”) Defendant Antec, through its motion

at the close of evidence (Doc. 174), has properly preserved its right to have its post-trial JMOL

motion (Docs. 187, 188) reviewed by this Court.

To succeed on a renewed motion for JMOL following a jury trial and verdict, the movant

"'must show that the jury's findings, presumed or express, are not supported by substantial

evidence or, if they were, that the legal conclusion(s) implied [by] the jury's verdict cannot in law

be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998)

(quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984)).

"Substantial evidence" is defined as "such relevant evidence from the record taken as a whole as

might be accepted by a reasonable mind as adequate to support the finding under review."

Perkin-Elmer Corp., 732 F.2d at 893.

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B. New Trials

A court may grant a new trial “for any reason for which a new trial has heretofore been

granted in an action at law in federal court.” FED. R. CIV. P. 59(a)(1)(A). Generally, a court will

order a new trial: (1) when the jury’s verdict is against the clear weight of the evidence, and a

new trial must be granted to prevent a miscarriage of justice; (2) when improper conduct by an

attorney or the court unfairly influenced the verdict; (3) when the jury verdict was facially

inconsistent; or (4) where a verdict is so grossly excessive or inadequate “as to shock the

conscience.” Suarez v. Mattingly, 212 F. Supp. 2d 350, 352 (D.N.J. 2002) (citations omitted). 

Determining whether to grant a new trial is within the sound discretion of the trial court. Wagner

v. Fair Acres Geriatric Ctr, 49 F.3d 1002, 1017 (3d Cir. 1995). When determining whether to

order a new trial after a jury trial, the court should only do so if "the verdict was against the

weight of the evidence ... [and] a miscarriage of justice would result if the verdict were to stand."

Williamson v. Conrail, 926 F.2d 1344, 1352 (3d Cir. 1991).

DISCUSSION

Defendant Antec moves for judgment as a matter of law. Defendant claims that it is

entitled to such judgment due to the anticipatory nature and obviousness of prior art, making

claims 1 and 12 of the ‘955 patent invalid under 35 U.S.C. §§ 102 and 103. According to

Defendant, the only differences between the ‘955 claims at issue and the prior art are: (1) the size

of the cooling devices, and (2) the differing configurations of the units into which the cooling

devices are mounted. Further, Defendant asserts that because claims 1 and 12 of the ‘955 patent

fail to specify the device’s size or the configuration of the computer into which it is mounted,

these small differences should have no bearing on the analysis of invalidity of the ‘955 patent

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claims.

Additionally, Defendant argues that since the scope and content of prior art is undisputed,

and that stipulated facts during the retrial lead to the conclusion that all elements of the ‘955

patent were practiced and in existence for decades prior to the filing of the ‘955 patent, the Court

should enter judgment of invalidity in favor of Defendants regarding claims 1 and 12 of the ‘955

patent. Alternatively, Defendant asserts that if the Court declines to grant judgment as a matter of

law based on obviousness or anticipation, a new trial should be ordered.

Plaintiff counters that at the retrial, there was sufficient evidence provided to support the

jury verdict that claims 1 and 12 of the ‘955 patent were valid, and were neither anticipated nor

obvious. In particular, Plaintiff asserts that testimony provided by both Defendant’s and

Plaintiff’s expert witnesses, commenting about size being an appropriate consideration when

construing the terms of this Court’s Markman Order, establishes that there is a relevant size

between the device contemplated by the claims of the ‘955 patent and the prior art presented by

Defendants. According to Plaintiff, this alleged size differential should preclude such prior art

from rendering the ‘955 invalid.

The Court agrees with Defendant’s position, as discussed below. The Court finds that

Defendants are entitled to judgment as a matter of law based on the clear and convincing

evidence provided at trial concerning the anticipation of claims 1 and 12 of patent ‘955, and the

lack of legally sufficient evidence to support the jury finding of validity concerning the same.

Because the Court grants Defendant’s JMOL motion due to anticipation, the Court need not

address the parties’ arguments concerning obviousness as a basis for invalidity.

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I. Judgment as a Matter of Law

It is well established that “[an] issued patent carries a presumption of validity.” Smiths

Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356 (Fed. Cir. 1999) (citing 35 U.S.C.

§ 282). “This presumption is manifested by the requirement that one who seeks to invalidate [the]

patent [must] do so by clear and convincing evidence.” Id. (citing Medtronic Inc. v. Intermedics,

Inc., 799 F.2d 734, 741 (Fed. Cir. 1986). More specifically, 35 U.S.C. § 282 sets forth the

following:

A patent shall be presumed valid. Each claim of a patent

(whether in independent, dependent, or multiple dependent

form) shall be presumed valid independently of the validity of

other claims; dependent or multiple dependent claims shall be

presumed valid even though dependent upon an invalid claim.

Notwithstanding the preceding sentence, if a claim to a

composition of matter is held invalid and that claim was the

basis of a determination of nonobviousness under section

103(b)(1) [35 USCS § 103(b)(1)], the process shall no longer

be considered nonobvious solely on the basis of section

103(b)(1) [35 USCS § 103(b)(1)]. The burden of establishing

invalidity of a patent or any claim thereof shall rest on the party

asserting such invalidity.

The following shall be defenses in any action involving the validity or infringement

of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement or unenforceability,

(2) Invalidity of the patent or any claim in suit on any ground specified in part II

[35 USCS §§ 100 et seq.] as a condition for patentability,

(3) Invalidity of the patent or any claim in suit for failure to comply with--

(A) any requirement of section 112 [35 USCS § 112], except that the failure to

disclose the best mode shall not be a basis on which any claim of a patent

may be canceled or held invalid or otherwise unenforceable; or

(B) any requirement of section 251 [35 USCS § 121].

(4) Any other fact or act made a defense by this title.

As 35 U.S.C. § 282 states, the burden of proof remains with the challenger of the validity

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of a patent throughout the litigation. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at

1366, 1375 (Fed. Cir. 1986); Mas Hamilton Group, 156 F.3d 1206, 1216 (Fed. Cir. 1998). This

Court must determine whether the jury had proper grounds to find that the challenger, Defendant

Antec, failed to meet its burden by clear and convincing evidence, including any rebuttal evidence

presented by the patentee, that claims 1 and 12 of the ‘955 patent were invalid. Stratoflex, Inc. v.

Aeroquip Corp., 713 F.2d 1530, 1534 (Fed. Cir. 1983). In doing so, the Court must look at the

circumstances in a light most favorable to Plaintiff Comaper, the nonmoving party.

A. Prior Art References

1. The Control Data Corporation Nova 3 “Mini Module”

In support of its anticipation argument, Defendant Antec provides this technical

description of the Control Data Corporation Nova 3 (the “Nova"):

“The Control Data Corporation Nova 3 mainframe computer, circa

1970's, included a drive bay in which a drive and up to three fans were

configured. Each unit is encompassed by a four sided structure and

contains three air movement devices (fans) and at least a first opening and

at least a second opening. Each unit also occupies substantially all of the

drive bay slot. . . . . 

As discussed at trial, the Nova 3 module is a cooling device that

mounts in the drive bay region of a computer to enhance the computer's

ventilation, particularly around the drive bay region. The Nova 3 describes

a modular cooling device mounted in the drive bay region of a computer. . 

 . . . 

The Nova 3 comprises a housing for three fans and a drive (“a

structure for containing and holding something”) configured to mount

within the drive bay area of a computer, and having first opening exposed

to ambient air and a second opening within the drive bay region. When

mounted within the drive bay, the first opening is exposed to ambient air

from outside the computer and the second opening exhausts the air within

the drive bay region of the computer.” 

(Doc. 174, p. 5-6.)

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2. Fujitsu Device

Defendant Antec sought to establish anticipation by presenting evidence that the Fujitsu

device contains all element of the ‘955 patent. Defendant provided the following technical

1

definition of the Fujitsu M2322K device (the “Fujitsu”):

[T]he Fujitsu M2322K is a cooling device that mounts in

the drive bay of a computer to enhance the computer's ventilation,

particularly around the drive bay region. The Fujitsu M2322K

describes a cooling device for a computer having a drive bay

region with at least one drive bay adapted to receive a drive. . . . 

The Fujitsu M2322K comprises a tray (“a structure for containing

and holding something”) configured to mount within the drive bay

of a computer, and having first opening exposed to ambient air.

When mounted within the drive bay, the first opening is exposed to

ambient air from outside the computer.

 (Doc. 174, p. 12-13.)

B. Anticipation

Defendant challenges the jury finding, and submits that claims 1 and 12 of the ‘955

patent should be found invalid due to anticipation. Under 35 U.S.C. §102, the patent

infringement defense of anticipation is set forth, in relevant part, as follows:

A person shall be entitled to a patent unless--

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or

on sale in this country, more than one year prior to the

date of the application for patent in the United States.

Particular requirements are necessary to prove that a prior art reference anticipates

 At retrial, Defendant Antec presented the actual Fujitsu device and photos of the device, as well as its associated 1

manuals. (Trial Exhibits 68, 48, 144-147.)

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under 35 U.S.C. §102(b). One requirement is that the prior art reference must disclose every 2

element of the claimed invention, either explicitly or inherently. Eli Lilly & Co. V. Zenith

Goldline Pharmacies, Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006); Lewmar Marine v. Barient,

Inc., 827 F.2d 744. 747 (Fed. Cir. 1987); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,

631 (Fed. Cir. 1987). 

Additionally, at the retrial, the burden of proving invalidity due to anticipation rested

with Defendant Antec, who needed to show by clear and convincing evidence that all elements

of claims 1 and 12 were found in a single prior art reference. More specifically, Defendant’s

experts were required, in their testimony, to identify each claim element, state [their] the

witnesses' interpretation of the claim element, and explain in detail how each claim element is

disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory.” 

Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (citing Schumer

v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002).

During retrial, defense experts Mr. Lyle Bickley and Mr. Sellam Ismail, both qualified

experts skilled in the art relevant to this case, testified about their impressions of the prior art

references submitted by Defendant Antec, and whether they qualified as inventions used prior

to the existence of the cooling device patented under the ‘955 patent. Plaintiff William

Corcoran also testified as an expert witness, providing his views on the prior art offered by

Defendant Antec. 

Defense expert Mr. Bickley provided a detailed, element by element comparison, along

 At retrial, the expert testimony and evidence supported the fact that all prior art references presented by Defendant

2

Antec pre-dated the ‘955 patent by over one year, as required under 35 U.S.C. §102. 

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with his impressions of both the Fujitsu and Nova devices. Bickley testified generally that both

prior art devices had all of the components of the ‘955 patent. (Tr. 63: 5-25; 64:6, January 14,

2011.) Additionally, Bickley’s testimony laid out an element by element comparison of both 3

prior art references to the ‘955 patent. (Tr. 36-42 ; 54-62 January 14, 2011.) Plaintiff’s expert,

Mr. Corcoran, conceded that all elements of claims 1 and 12 were present in the Fujitsu and

Nova devices. (Tr. 75:16 - Tr. 78:2, Tr. 84:24 - Tr. 85:15, January 18, 2011.) 

Where the parties views diverge, however, are on the issues of whether: (1) the term

“Drive Bay Slot”, as defined by this Court in its Markman order, should have been considered

by the jury with certain dimensional limitations that were not included in the Markman Order

definition, and (2) whether the comparison of claims required the jury to assume that the prior

art needed to involve a personal computer. 

Plaintiff asks this Court to find that the expert testimony at retrial supported the jury’s

finding of validity, and lack of anticipation. More specifically, Plaintiff avers that all experts

indicated that the term “Drive Bay Slot”, defined in this Court’s Markman Order, only makes

sense if it is limited to specific dimensions, and that none of the prior art possessed these

dimensions, supporting a finding of validity and non-anticipation. Further, Plaintiff alleges that

 On direct examination during retrial, Bickley testified as follows:

3

Q: A[ll right]. So, it is your testimony, Sir, that both the Fujitsu Device and the Mini Module have all of the

components of the Antec devices?

A: That is correct.

Q: And it is your contention, Sir, that both have all of the components of the ‘95 5 patent?

A: Yes.

Q: Including claims one and claim twelve?

A: Yes. I might make a note that I did not – once we clearly show – once we have talked

about the fact that the Antec device, we know from the – that all of these read on the ‘955 patent, all of the Antec

devices. So, if something matches this, it has to by default match the ‘955 patent.

 Q: And you believe that these predate – or I think we have established with respect to both devices that they predate the 

 1993 date?

 A: Absolutely. By more than ten years.

 (Tr. 63: 5-25; 64:6, January 14, 2011.)

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the ‘955 patent was intended to cover personal computers only, contrary to the prior art devices

presented at retrial, which fit into rack mounted systems. 

Defendant counters that the prior art considered at trial anticipates claims 1 and 12 of

the ‘955 patent. Additionally, Defendant contends that Plaintiff takes the expert testimony

concerning dimensions and computer size out of context, and attempts to read in a different

claim construction of a technical term at the eleventh hour. The Court agrees with Defendant’s

position, and finds that the jury lacked sufficient and substantial legal basis to return a verdict

of validity concerning claims 1 and 12 of the ‘955 patent, based on evidence presented at trial.

This Court, in its Markman Order, defined certain terms used in claims 1 and 12 of the

‘955 patent. Specifically, the term “Drive Bay Slot” was defined as “the relatively narrow

opening in the housing of the computer that leads to the drive bay.” The Court finds, even

reviewing the record in a light most favorable to Plaintiff, that the comments of Antec’s experts

on the court’s construction of the term “Drive Bay Slot” fell short of declaring that certain

dimensions should be read onto the Court’s term construction.4

 On cross examination during retrial, Antec’s expert witness Mr. Ismail testified as follows: 4

Counsel for Comaper: I am reading from page 26 of Mr. Bickley’s report, paragraph 33: 

“Secondly, the Court has defined the term drive bay slot as the relatively narrow opening in the housing of

the computer that leads to the drive bay. That definition alluded to two dimensions ... and assuming the

standard form factors of a five and a quarter or three and a half inches this definition may be appropriate. 

However a person of ordinary skill in the art would define the term drive bay slot as an opening in the case or

enclosure of sufficient width and height to receive a drive and its associated frame or sled.”

Would you agree that your reaction initially during that first proceeding and Mr. Bickley’s comment in his

report both seem to indicate that as someone skilled in the art your interpretation of the Court’s definition of

slot would be something very similar to what is in the PC?

A: Well, yeah. I mean, we had opinions on what we could consider a slot based on industry venacular, but I

don’t know that those two statements are necessarily identical.

Q: Let’s be clear. Your reaction to the Court’s Order defining the term was, that’s narrow. That’s a narrow

interpretation and pertains to the slot of the PC. That’s what you said. Now, I appreciate that you changed

after you talked to counsel, but that was your initial reaction, correct?

A: Yeah. Like I said, it was a misunderstanding and I don’t see how it really reflects on any of the items of

prior art that I was able to produce. 

Q: Okay, thank you. How would you define drive bay slot now or what is your understanding of the

[Markman] order? 

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Moreover, even if testimony offered by Antec’s experts intended to limit the Court’s

claim construction, such a limitation could not be properly made by expert witnesses, as any

change in construction of an established Markman order term may have only been made on a

rolling basis by the Court. Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1359

(Fed. Cir. 2006). Notably, despite the line of questioning and testimony concerning how the

term “drive bay slot” could be narrowly construed to be a slot with specific dimensional sizes

typically found in a PC, the Court declined to revise or update any of its Markman Order

definitions during retrial. 

Both Mr. Bickley and Mr. Ismail testified that the Court’s definition of the term might

be interpreted to be limited to a slot configured specifically for a PC, into which the cooling

device described in the ‘955 patent could be inserted, with such PC-type slot having the defined

dimensions of 3.5" and 5.25". Both experts testified, however, that such a reading of the

Court’s definition of “Drive Bay Slot” would go against the meaning that would be ascribed to

the term by a person of ordinary skill in the art. (Tr. 94; January 14, 2011; Tr. 56; January 19,

2011.) Also, notably, neither Bickely nor Ismail declared that the Court’s Markman order

5

definition of the term “drive bay slot” should be read to be limited to a PC-type slot with

specific dimensions.

A: It’s the two dimensional opening at the mouth of the drive bay. 

Q: Are you sure about that?

A: Yes, I am.

Q: Would you read the definition of drive bay slot, for me please?

A: Drive bay slot. On that board, it says the relatively narrow opening in the housing of the computer that

leads to the drive bay.

(Tr. 60-62; January 19, 2011). 

 Mr. Bickley’s expert report, read into evidence during his testimony, stated that a reading of the Court’s definition of a drive bay

5

slot as a PC-type slot would differ from the definition of a person of ordinary skill in the art, “who would define the term ‘drive bay slot’ as an

opening in the case or enclosure of sufficient width and height to receive a drive and its associated frame or sled.” (Tr. 96-98; January 14,

2011). 

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The Court finds that the jury’s decision on invalidity due to anticipation should have

been centered upon the actual language of claims 1 and 12, and the actual language of the

Court’s Markman Order definitions, both of which were silent on size dimensions, and silent

on what equipment constitutes a “computer”

The Fujitsu and Nova, submitted by Defendant Antec as prior art devices, are sleds that

fit into rack mounted computer systems. Contrary to Plaintiff’s assertion, the jury lacked

legally sufficient evidence to conclude, based on the testimony and devices offered during the

retrial, that both the Fujitsu and Nova devices offered by Defendant Antec as prior art

references did not contain all of the elements of claims 1 and 12 of the ‘955 patent. The fact

that the two devices are sleds that can fit into a slot opening of any size, and not a slot with the

dimensions Plaintiff asks the Court to read into its Markman definition of “drive bay slot”,

bears no legal relevance to an analysis of anticipation. 

Furthermore, “that which would literally infringe if later anticipates if earlier" is a well

established patent law rule. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d

1368, 1378 (Fed. Cir. 2001); see Int'l. Seaway Trading Corp. v. Walgreens Corp., 589 F.3d

1233, 1239 (Fed. Cir. 2009). Defendant avers that the Nova is identical when compared to

two Antec devices, both of which have been found to have all elements of the claims at issue 6

in patent ‘955. Defendant describes the pertinent similarities as follows: “[a]ll three devices

have a first opening (in the front wall) which passes through a fan opening to exhaust into the

drive bay region ([t]he inner opening of the fan).” The Court finds that there is clear and

 The Nova is being compared to two Antec devices. Both of the Antec devices to which Defendant compares the Nova 6

were established earlier in this litigation as containing all of the elements of claims 1, 2, 7, 12, and 13 of the ‘955 patent.

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convincing evidence on the record to support Defendant’s argument that the Nova anticipated

the ‘955 patent and contained the same elements found to have made the Antec devices

infringe the ‘955 patent. 

The testimony of Defendant’s and Plaintiff’s experts, as well as the Fujitsu and Nova

prior arts devices, provided insufficient legal basis for the jury verdict. To be sure, Plaintiff’s

own expert witness, Mr. Corcoran, testified that [“the ‘955 does not specify size or that it must

be inserted into a PC...” This lends additional support to the conclusion that the jury’s finding

that claims 1 and 12 were not invalid as anticipated, as the drive bay slot, defined as a PC-type

slot, was a required element, was legally unsupported.

Based on the above, and considering the record in a light most favorable to Plaintiff

Comaper, the Court finds that the jury finding of validity was unsupported by substantial

evidence at trial.

Giving Plaintiff Comaper the benefit of the doubt, even if the Court determined that the

jury’s verdict was supported by substantial evidence at retrial, judgment as a matter of law

would remain appropriate. The movant, Antec has shown that even if the jury’s findings were

supported by substantial evidence, "'the legal conclusion(s) implied [by] the jury's verdict

cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348

(Fed. Cir. 1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893

(Fed. Cir. 1984)). The jury’s finding, even if supported by legally sufficient evidence, cannot

hold under the law as it stands. 

The United States Court of Appeals for the Federal Circuit has determined that where a

Plaintiff presents only one difference between a prior art reference and a patented invention,

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with such singular difference failing to provide sufficient evidence to support patent validity,

the patent will be deemed invalid due to anticipation. In Blackboard v. Desire2Learn, 574 F.3d

1371 (Fed. Cir. 2009), the Federal Circuit reversed the district court’s finding and granted

JMOL to Defendant, Desire2Learn. In relevant part, the Federal Circuit found that two prior

art references submitted by Desire2Learn caused Blackboard’s patent to be invalid due to

anticipation. Id. at 1380. 

The Blackboard court stated “[a]s Desire2Learn points out, Blackboard's trial expert

identified only one difference between the system and methods of the '138 patent and the prior

art systems, the ‘single login’... once the claims are properly construed, the conclusion of

anticipation is dictated by the testimony of Blackboard's own witnesses and the documentary

evidence that was presented to the jury. Based on that evidence, and in the absence of a ‘single

login’ requirement in claims 36-38, it is clear that the prior art contains every limitation of

those claims.” Id. at 1381-82.

Similarly, in the present matter, Plaintiff Comaper presented only one difference in

support of its contention that the prior art submitted by Antec (the Fujitsu and Nova) did not

anticipate claims 1 and 12 of the ‘955 patent. The singular difference emphasized by Comaper

was the difference in the sizes of the devices, a specification not found anywhere in the ‘955

patent itself, nor in this Court’s claim construction. Once the claims of this Court, as affirmed 7

by the Federal Circuit, were properly construed, the jury was not free to consider the difference

in device size as a legally valid reason to find a lack of anticipation. Instead, the jury was

 Plaintiff’s own expert, William Corcoran, testified at retrial that his ‘955 patent did not specify the dimensions of the

7

case of the device, stating that “[i]t does not specify the exact dimensions.” (Tr. 42:4-11, Jan. 18, 2011).

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required to evaluate all evidence, including that of Plaintiff’s own expert witness, Mr.

Corcoran, who testified that size difference aside, that the Fujitsu and Nova prior art references

matched all elements of the claims 1 and 12 of the ‘955 patent. 

8

Based on the record, the Court finds it clear that the Fujitsu and Nova contained every

limitation of claims 1 and 12 of the ‘955 patent. Thus, JMOL in favor of Defendant Antec is

appropriate, as the evidence established the invalidity of patent ‘955 due to anticipation.

C. Validity of ‘955 Patent - Obviousness 

Defendant Antec submits that pursuant to 35 U.S.C. § 103, claims 1 and 12 of the ‘955

patent were invalid as obvious, and that during the retrial, the jury possessed legally insufficient

evidence to conclude otherwise.

The law addressing the validity of a patent being contingent upon non-obviousness is

set forth in 35 U.S.C. § 103(a), which states:

A patent may not be obtained though the

invention is not identically disclosed or described as set forth in

section 102 [35 USCS § 102], if the differences between the

subject matter sought to be patented and the prior art are such

that the subject matter as a whole would have been obvious at

the time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner in which the

invention was made.

Id. 

At the retrial, Defendant Antec presented numerous prior art devices and manuals, as well

as expert testimony in support of its contention that the ‘955 patent was invalid due to

 Tr. 75:16 - Tr. 78:2, Tr. 84:24 - Tr. 85:15, January 18, 2011. 8

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obviousness. The Court need not reach the issue of whether the jury verdict of validity was

supported by sufficient legal basis, as the Court has already determined above that the jury’s

verdict concerning a lack of anticipation was not legally supported, thus making appropriate a

finding for JMOL in favor of Defendant Antec. 

II. New Trial

The Court finds that there exists no basis for the finding of a new trial. As detailed

above, the Court has granted Defendant Antec’s motion for JMOL. As the Court has broad

discretion on determining whether a new trial is warranted, the Court declines to grant 9

Defendant’s request for a new trial, as such relief is unnecessary in light of the Court’s

disposition on Defendant’s motion for JMOL. 

CONCLUSION

During retrial on the issue of validity for claims 1 and 12 of the ‘955 patent, the jury

lacked sufficient legal cause to determine that Antec failed to meet its burden of showing, by

clear and convincing evidence, that claims 1 and 12 were invalid as obvious or anticipated. 

Accordingly, for the reasons discussed above, Defendant’s renewed motion for judgment as a

matter of law is granted. An appropriate order follows.

BY THE COURT:

/s/ Petrese B. Tucker

___________________________

Hon. Petrese B. Tucker, U.S.D.J.

 Wagner, 49 F.3d at 1017. 9

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