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Expert’s Failure to Consider Claimed Invention Not a Matter of “Semantics”


In a follow-up opinion in the Inline-AOL Litigation, Magistrate Judge Thynge has held that an expert’s enablement analysis that concerns only the accused infringing product must be excluded as unreliable. AOL’s invalidity expert analyzed the accused ADSL system (an end-to-end digital transmission network), rather than the claimed invention, which encompasses a larger transmission system. Responding to Inline’s motion to exclude, AOL argued that the expert applied an appropriate methodology to its enablement inquiry, since the narrower ADSL system fell within the full scope of the broader claims in issue.

The Court rejected this assertion, noting that rather than being an argument of “semantics,” as AOL countered, Inline properly identified the expert’s faulty analysis:

“At no time did [the expert] evaluate whether the patents would enable one of skill in the art to make or use the claimed invention without undue experimentation.” (slip op. at 9) (emphasis in original)

By failing to consider the claimed invention, the expert’s opinion on enablement was unreliable as a matter of law and therefore inadmissible.

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