Product design expert witness allowed to testify on “ultimate issue” of infringement

In this patent infringement suit regarding the design of a particular inner garment (Branovations, Inc. v. Ontel Products Corp.) the Florida district court ruled that simplicity of technology may negate need for expert testimony, but does not foreclose use of an expert if it assists the trier of fact. Also, since the product design expert in question had sufficient knowledge and expertise, his opinion testimony was allowed to address the ultimate issues of validity and infringement.

Facts of the case

The U.S. Patent and Trademark Office issued Patent No. 8,152,591, titled “Garment and Brassiere Accessory” to Mr. Jose De Jesus De Sousa and Mrs. Michelle E. De Sousa on April 10, 2012, after which they granted an exclusive license, including the right to enforce the patent, to their company, Branovations Inc. Branovations was already selling the apparel under the name “Cleava” since August 4, 2009. Ontel Products Corp., on the other hand, was founded by Ashok Khubani in 1994 and sold approximately fifty product lines through traditional retail and internet sales. In early 2010, Ontel began marketing and selling a product structurally similar to “Cleava” under the name “Cami secret”. However, after receiving largely negative feedback from customers, it decided it was in need for improvement and incorporated the fastening system used by Cleava into their improved product.

It may be noted in this connection that in order to facilitate the manufacture and release of Version 2, Ontel’s overseas manufacturers requested additional pieces of the Cleava for copying. Ontel also sought a legal opinion to determine if it would be infringing upon Cleava’s then-pending patent application if it duplicated the snaps on the Cleava product. The improvement to the Cami Secret was well received and customer satisfaction was “dramatically better.”

Defending the infringer – the product design expert

After being sued for infringement, Defendant filed the testimony of the renowned product design expert witness Robert M. Layden. Layden was a self-proclaimed “inventor and consultant” with extensive technical expertise. Over the course of his career, Lyden was identified as the inventor on 51 patents, ten of which were directed to inventions in apparel, particularly athletic shorts, pants and underwear. Lyden also spent six years assisting Nike’s in-house and external patent counsel with identifying patentable designs and inventions, screening outside inventors, and assisting with patent prosecution and litigation.

Plaintiff moved to exclude Lyden’s testimony at trial and preclude consideration of his evidence in determining the summary judgment motions under Rule 702. First, Plaintiff contended that Lyden did not qualify as an expert in clothing or accessory design. Lyden started working as an inventor in the fields of footwear and apparel in 1985. Second, they argued that there was no need for expert testimony to explain the technology at issue, so none should be permitted. Finally, they claimed that Lyden’s report should be excluded from summary judgment consideration as it addressed the ultimate issues of infringement and validity without a technical analysis.

Assessment by the Court

At the outset it was held that based on Lyden’s disclosed field of technical expertise, he had sufficient knowledge and experience to qualify as an expert in the field of clothing and accessory design. The court then decided that here, there was a dispute as to the level of ordinary skill in the art. Despite the simplicity of the technology, Lyden’s testimony might assist the trier of fact in understanding any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, and the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention. It was thus up to the trier of fact to determine if Lyden’s opinions were adequately supported and the weight they should be afforded. Consequently Plaintiff’s motion to exclude Lyden’s expert report and testimony was denied.

**Written for the web by the EWG Editorial Team

One Response so far.

  1. chris pflaum says:

    The infringer lost and was ordered to pay damages to the patent holder. The decision came down last week.