In a recent Memorandum Order, Judge Richard G. Andrews denied plaintiff’s motion to strike expert testimony on the question of utility and motion for partial summary judgment on defendant’s utility defense. AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA (D. Del. Apr. 27, 2017).
Plaintiff’s objection to the testimony of defendant’s expert in its motion to strike was on the grounds of “reliability.” Plaintiff contended that the expert “did not perform any analytical analysis showing the benefits or costs in any particular circuit,” and that the expert’s conclusion that a design engineer would not practice the invention was “speculat[ion] without support.” Id. at 3. Judge Andrews rejected these arguments, and found that plaintiff failed to show that the expert’s opinions were unreliable. Judge Andrews explained that “there is no reason an expert cannot rely on analysis performed by other experts,” as defendant’s expert had done. Id. at 3. Judge Andrews further explained that the expert’s opinion was “based on decades of experience in the field,” and could hardly be characterized as “speculation without support.” Id. at 3-4.
Denying plaintiff’s motion for partial summary judgment on defendant’s utility defense, Judge Andrews found that defendant raised a genuine issue of material fact as to whether plaintiff’s claimed invention satisfies the requirement of utility under 35 U.S.C. § 101. Id. at 4-6. As Judge Andrews explained, the test for substantial utility is whether “one skilled in the art can use a claimed discovery in a manner which provides some immediate benefit to the public.” Id. at 5. Defendant argued that the invention “does not provide the benefit promised in the patent,” and provided sufficient evidence to establish a genuine issue of material fact. Id. at 6.