Motions for summary judgment that a particular patent is "not invalid" (why can't we just say valid? I think the patents would like that better) are generally pretty winnable.
A brief survey of the last 10 such decisions found that fully half were granted. Most of those decisions, however, dealt with 112 or 101 issues. If you're moving on your more classic obviousness and anticipation issues, however, you've got a pretty rocky row to hoe. A look back at those opinions finds that only 30% of the last 10 were granted, at least one of which appeared to deal with a defense that was largely abandoned.
Today's opinion in Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 (D. Del. May 2, 2024), is a good example of a situation where such a motion is worth shooting for (and possible ordering higher in your list). The plaintiff, Qorvo (pronounced just like it looks), complained that the defendant's obviousness expert had failed to present any testimony on the motivation to combine. Defendant countered that their expert had done the appropriate analysis, but had simply failed to use various "buzz words" from Graham, KSR, and the like.
Judge McCalla agreed with Qorvo (again, pronounced exactly how you think it would be), and found that the expert failed to explain the why of it all:
While Akoustis argues that Dr. Nguyen’s report provides evidence of how a person of skill in the art would have combined prior art references, it reads narrowly the Federal Circuit and Supreme Court’s requirements for testimony as to why a person of skill in the art would have combined the prior art references. While Akoustis cites KSR Int’l. for the proposition that “the Graham factors are not the only way to show why a POSITA would have combined two prior art references,” and Alza for the proposition that “motivation to combine may be implicit in the prior art and based on the general knowledge of the POSITA[,]” neither case permits a finding of obviousness when there is no evidence of motivation to combine.
...
There is no mention of market pressures, no mention of a known problem, and no mention that a person of ordinary skill in the art would be motivated to combine the listed elements. At best, the report states that, in the case of the ‘018 patent, a person of ordinary skill in the art “will undoubtedly understand that changes to any of the electrode thicknesses . . . will affect BAW performance.” Even without the report, the prior art itself provides no explicit motivation to combine—and Akoustis has not produced any evidence that would support an inherent motivation to combine.
Qorvo, Inc. v. Akoustis Techs., Inc., C.A. No. 21-1417-JPM, D.I. 557 at 6-7 (D. Del. May 2, 2024) (Cleaned up).
It's difficult to tell from the scant briefing on the issue, but I would guess that it would not have taken too much additional analysis to create a dispute of fact on this point. Indeed, a few buzz words could not have hurt. This is a good issue to watch out for—and an easy one to miss—in choosing your own summary judgment motions.
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