Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.
The analysis apparently sorted the prior art into categories:
The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”
As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:
My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be multiple references to show the state of the art, that, considered as a whole, support a motivation to combine and a reasonable expectation of success in doing so. . . . I do not think the identification of specific combinations is a Daubert issue, and, thus, I DENY the Daubert motion.
The Court said that this could be better brought as a motion in limine—but that it would deny that as well:
The issue could be appropriate for a motion in limine, although based on what is presented in the motion, I would not grant it. Based on my present understanding, I think that categories (1) and (2) do not need to be limited to a single reference. I am less clear on the third category.
I'd be very interested to see how a 25-reference obviousness combination might play out at trial.
I also foresee a dispute on the morning of the expert's testimony at trial, where the plaintiff tries to head off any testimony outside of the expert report, and defendant argues "our expert's report set forth A + B, C, D, E, F, H . . . and Z, why can't he (or she) argue the specific combination of A + Q by itself? We're reducing the number of issues! What do you mean we never put that in the report?"
[Note: A previous version of this post listed the author as John W. Shaw. That was an error.]
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