In the U.S. District Court in Colorado, a battle of the patent experts was the main event in the Colorado courtroom. The district entertained two motions to exclude expert testimony—one from each side against their opponent’s expert concerning obviousness and functionality in a patent infringement action.
Plaintiff was an auto parts manufacturing company that made light fixtures for aftermarket retail distributors. The company owner designed the company’s products and was issued a U.S. Design Patent for a “flexible attachment strip” on which are affixed multiple LED lights. Plaintiff brought suit claiming that Defendant’s competing products infringed his patent. Defendant denied this, and raised the affirmative defense of obviousness.
Defendant’s engineering expert witness was the director of mechanical engineering at a laboratory, which analyzed information as related to the LED lights; performed illumination, visibility, and function tests of the LEDs; and reviewed multiple patents related to products with LEDs. Plaintiff challenged the defendant expert’s qualifications to offer opinions on issues of infringement and obviousness, his methodology, and the relevance of his opinions regarding the functionality of the LEDs.
The challenge of the expert’s qualifications as a patent infringement expert—judged by the ordinary observer standard—is that a person familiar with the prior art designs would be deceived into believing that the accused product is the same as the patented design.
Plaintiffs argued that defendant witness’s expertise as a mechanical engineer specializing in automotive accident reconstruction and mechanical failure analyses didn’t qualify him to testify as to the perceptions of the ordinary purchaser of automotive aftermarket accessory products. His background in “product development” suggested that he was qualified to offer opinions relevant to the ordinary observer standard, but the Judge stated that it didn’t take a close reading of his CV to see that his product development experience was limited to areas irrelevant in the lawsuit. Defendant even admitted their expert didn’t have particular qualification in this area, but maintained that he should be allowed to testify because he was an ordinary observer. Judge Blackburn wrote that this suggestion was misleading and it would be an error to permit Defendant to present an “expert” opinion, which the witness was no more qualified than the members of the jury.
The District Judge also said that the engineering expert’s opinion on infringement vel non was excludable due to its basis on improper methodology. Quoting the Federal Circuit, the Judge explained that the attention of the court should be focused on whether the accused design has appropriated the claimed design as a whole.
The defendant engineering expert’s opinion contravened that standard, the judge said. His report listed 18 asserted differences between the patented design and the accused products but didn’t state what effect, if any, these differences would have on the overall appearance of the two products to the ordinary observer. Lacking relevant expertise to give an opinion as to the perspective of the ordinary purchaser, the expert was no more qualified than the jurors to offer these observations. The judge held that Plaintiffs’ motion to exclude the opinions of the engineering expert as to infringement vel non should be granted.
Next, Defendant sought to present the engineering expert on the issue of whether the design embodied in the patent in question was obvious in light of the prior art. Assuming arguendo that the engineering expert was otherwise qualified, the Judge nevertheless found the defendant expert’s opinion wasn’t grounded in a proper methodology. As a result, it was inadmissible.
Plaintiff’s expert was a vice president of an automotive parts company that was the exclusive licensed distributor of products covered by the plaintiff’s patent. Defendant challenged the marketing expert’s opinion as to the effect of the clear plastic coating that was part of defendant’s product on the ordinary observer’s assessment of the overall visual impression. Specifically, the expert opined that he believed that the claimed design wasn’t necessary for the entire article of commerce.
At the hearing, defendant suggested that the marketing expert wasn’t qualified to offer his opinion. The arguments were not identified or explained in the brief. The marketing expert appeared eminently qualified to offer opinions regarding issues relevant to the case, and those opinions had adequate foundation.
The Judge explained that the marketing expert offered an understanding, based on his knowledge of the products and the relevant market, that Plaintiff’s addition of a clear plastic coating didn’t foreclose a finding of infringement of the patented design. This was acceptable to the court, as the patent in question was plainly for the design of the flexible LED strip itself and didn’t claim any material in which such strip might be encased.
Defendant further argued that the marketing expert’s opinion was unhelpful because what he examined wasn’t the way the feature appeared during the normal and intended use of the product. The Judge held that this argument improperly compared Plaintiff’s patented design with defendant’s article of commerce—rather than comparing the ornamental aspects of the two designs. Nonetheless, infringement may still arise, he said, where a patented design is embodied in some, but not all, of an article of commerce. As such, exclusion of the marketing expert’s opinion was not warranted.
Defendant’s Motion to Exclude Certain Opinions of the marketing expert was denied; Plaintiff’s Motion to Exclude Expert Opinion Testimony of the engineering expert was granted to the extent consistent with the Judge opinion; and the proposed expert testimony of Defendant’s engineering expert was excluded.
By: Kurt Mattson, J.D., LLM
Over 20 years of experience in the legal industry.