OraLabs, Inc. v. Kind Group LLC
Filing
393
ORDER granting in part and denying in part OraLabs, Inc.'s Motion in Limine to Exclude Testimony of Jeffrey Kapec 148 155 , granting in part and denying in part The Kind Group LLC and eos Products LLC's Motion to Exclude Opinions of Plaintiff's Expert Michael C. Thuma 131 132 150 ; denying as moot OraLabs, Inc's Motion in Limine to Exclude Testimony of Cooper C. Woodring 143 . By Judge Philip A. Brimmer on 8/7/15.(pabsec)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 13-cv-00170-PAB-KLM
ORALABS, INC., a Colorado Corporation,
Plaintiff
v.
THE KIND GROUP LLC, a New York Limited Liability Company, and
EOS PRODUCTS LLC, a New York Limited Liability Company,
Defendants.
ORDER
This matter is before the Court on two motions to exclude expert opinions
pursuant to Fed. R. Civ. P. 702. Plaintiff OraLabs, Inc. (“OraLabs”) moves to exclude
defendants’ expert Jeffrey Kapec [Docket No. 148] (public entry at Docket No. 155). 1
Defendants move to exclude the opinions of plaintiff’s expert Michael Thuma [Docket
No. 131] (Public Entries at Docket Nos. 132 and 150).
I. BACKGROUND
Defendants the Kind Group LLC (“Kind Group”) and eos Products LLC 2 assert
claims for patent and trade dress infringement related to OraLabs’ manufacture of a lip
1
OraLabs also moved to exclude the testimony of defendants’ expert Cooper C.
Woodring on the issue of validity. Docket No. 143. The Court, however, granted
summary judgment in favor of defendants on the issue of validity. OraLabs’ motion to
exclude Mr. Woodring’s testimony is therefore denied as moot.
2
Defendant eos Products LLC is a wholly-owned subsidiary of Kind Group.
Docket No. 129 at 2, ¶ 4. For ease of reference, defendants will be collectively referred
to as “Kind Group.”
balm product. Kind Group is the assignee of United States Patent No. D644,939 (the
“’939 Patent”), a design patent that covers the “ornamental design for the sphericallyshaped lip balm, as shown and described” in the following five figures:
Docket No. 182-1 at 4-6.
In 2009, the Kind Group began selling the eos Smooth Sphere (the “Smooth
Sphere”), an egg-shaped lip balm container similar in overall appearance to the design
of the ’939 Patent. Docket No. 176 at 2-3. Additionally , Kind Group is the owner of a
United States Trademark Registration for the Smooth Sphere’s trade dress. Id. at 3.
The Smooth Sphere is depicted below:
Docket No. 149-1 at 24.
2
OraLabs is a manufacturer and distributor of cosmetic products. Docket No. 1 at
2, ¶ 6. OraLabs manufactures and distributes a lip balm product called the Chap-Ice
Lip Revolution (“Lip Revo”), a lip balm that is sold in a brightly colored, spherical
container with a screw-top lid. Id. The Lip Revo is depicted below:
Docket No. 176 at 4-5.
OraLabs filed this action on January 24, 2013, seeking a declaration that the Lip
Revo does not infringe Kind Group’s trade dress. Docket No. 1 at 3-5, ¶¶ 13-27. Kind
Group asserted counterclaims for trade dress infringement and false designation of
origin under the Lanham Act and common law trade dress infringement. Docket No.
129 at 11-13, ¶¶ 50-64.
II. LEGAL STANDARD
Rule 702 of the Federal Rules of Evidence provides that:
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other specialized knowledge will
help the trier of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or data; (c) the
testimony is the product of reliable principles and methods; and (d) the
expert has reliably applied the principles and methods to the facts of the
case.
3
Fed. R. Evid. 702. As the rule makes clear, while required, it is not sufficient that an
expert be qualified based upon knowledge, skill, experience, training, or education to
give opinions in a particular subject area. Rather, the Court m ust “perform[ ] a two-step
analysis.” 103 Investors I, L.P. v. Square D Co., 470 F.3d 985, 990 (10th Cir. 2006).
After determining whether the expert is qualified, the proffered opinions must be
assessed for reliability. See id.; Fed. R. Evid. 702 (requiring that the testimony be
“based on sufficient facts or data,” be the “product of reliable principles and methods,”
and reflect a reliable application of “the principles and methods to the facts of the
case”).
Rule 702 imposes on the district court a “gatekeeper function to ‘ensure that any
and all scientific testimony or evidence admitted is not only relevant, but reliable.’”
United States v. Gabaldon, 389 F.3d 1090, 1098 (10th Cir. 2004) (quoting Daubert v.
Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 (1993)). To perform that
function, the Court must “assess the reasoning and methodology underlying the
expert’s opinion, and determine whether it is both scientifically valid and applicable to a
particular set of facts.” Dodge v. Cotter Corp., 328 F.3d 1212, 1221 (10th Cir. 2003)
(citing Daubert, 509 U.S. at 592-93). Where an expert witness relies on experience, the
expert “‘must explain how that experience leads to the conclusion reached, why that
experience is a sufficient basis for the opinion, and how that experience is reliably
applied to the facts.’” United States v. Medina-Copete, 757 F.3d 1092, 1104 (10th Cir.
2014) (quoting Fed. R. Evid. 702, advisory committee notes). When examining an
expert’s method, however, the inquiry should not be aimed at the “exhaustive search for
4
cosmic understanding but for the particularized resolution of legal disputes.” Daubert,
509 U.S. at 597. It is the specific relationship between an expert’s method, the
proffered conclusions, and the particular factual circumstances of the dispute that
renders testimony both reliable and relevant.
In addition to the witness having appropriate qualifications and methods, the
proponent of the witness’ opinions must demonstrate that the process by which the
witness derived his or her opinions is reliable. United States v. Crabbe, 556 F. Supp.
2d 1217, 1220 (D. Colo. 2008). “[T]he trial judge must have considerable leeway in
deciding in a particular case how to go about determining whether particular expert
testimony is reliable.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999).
Ultimately, the test requires that the expert “employs in the courtroom the same level of
intellectual rigor that characterizes the practice of an expert in the relevant field.” Id.
While the proponent of the challenged testimony has the burden of establishing
admissibility, the proffer is tested against the standard of reliability, not correctness, see
Allstate Sweeping, LLC v. City & Cnty. of Denver, No. 10-cv-00290-WJM-MJW, 2011
WL 2173997, at *3 (D. Colo. June 2, 2011); the proponent need only prove that “the
witness has sufficient expertise to choose and apply a methodology, that the
methodology applied was reliable, that sufficient facts and data as required by the
methodology were used and that the methodology was otherwise reliably applied.”
Crabbe, 556 F. Supp. 2d at 1221.
5
III. ANALYSIS
A. Jeffrey Kapec
OraLabs challenges four aspects of Mr. Kapec’s expert report concerning the Lip
Revo’s infringement of the ’939 Patent. 3 The Court addresses each in turn.
1. Gestalt Theory
OraLabs challenges Mr. Kapec’s opinion that the Lip Revo infringes the ’939
Patent because, under gestalt theory, an ordinary observer would find that the Lip Revo
and the ’939 Patent give the same overall visual impression. As explained by Mr.
Kapec, gestalt theory teaches that the human mind is predisposed to view objects “as a
whole entity rather than the individual parts that make up the shape.” Docket No. 149-1
at 18, ¶ 5.5. Thus, according to Mr. Kapec, when presented with an incomplete image,
even against a complex visual background, the brain will naturally complete the image
by supplying the missing elements. Id. at 18-19. As relevant here, Mr. Kapec opines
that, when perceiving the Lip Revo when its top is removed, the brain will view the
flattened top of the lip balm and naturally complete the hemispherical shape that the
product suggests. Id. at 19, ¶ 5.6
OraLabs argues that Mr. Kapec is not a psychologist, as were the founders of
gestalt theory, and is not qualified to opine on the issue of gestalt principles, that
applying gestalt theory to the question of design patent infringement is improper, and
that Mr. Kapec has provided no facts or data that support application of gestalt theory in
3
Mr. Kapec also opines that the ’939 Patent does not describe a f unctional
design. See generally Docket No. 149-1 at 4-16. OraLabs does not challeng e this
opinion.
6
the present context. See Docket No. 148 at 7-10. Kind Group responds that Mr.
Kapec’s background, which includes nine years of study in the field of threedimensional design and 42 years of experience designing and developing consumer
products, qualifies him to testify concerning the “dominant visual cognitive features” of
the designs in question. Docket No. 166 at 7. Kind Group also notes that OraLabs’
own expert conceded the legitimacy of gestalt theory. Id. at 8.
Regarding Mr. Kapec’s qualifications, the Court finds that, based on his more
than 40 years of experience in the field of industrial design and his experience teaching
three-dimensional design at the Pratt Institute, see Docket No. 149-1 at 34, Mr. Kapec
possesses sufficient specialized knowledge to testify concerning matters relating to
industrial design. Accord, e.g., Poly-America, LP v. API Indus., Inc., --- F. Supp. 3d ----,
2014 WL 6687559, at *11 (D. Del. Nov. 25, 2014) (holding that “40 years of experience
in product packaging, some of it involving the design of [the product at issue]” met “the
liberal standard for ‘specialized knowledge’ under [Fed. R. Evid.] 702”). Mr. Kapec’s
specialized knowledge includes testimony concerning his understanding of the
dominant visual features of a particular design and the bases for that understanding.
While it is true that Mr. Kapec admitted that he does not consider himself to be a gestalt
psychologist, Docket No. 167-1 at 11, p. 64:5, he does consider him self to be an expert
designer who can apply gestalt principles, id. at 64:17-18, and does utilize such
principles in his teaching, id. at 12, p. 65:3-7, and in his work. Id. at 18, p. 93:2-17.
Thus, provided that Kind Group lays an adequate foundation for Mr. Kapec’s knowledge
of gestalt theory as applied in the field of industrial design, Mr. Kapec is qualified to
discuss the theory in the context of the design of the accused product.
7
OraLabs argues that Mr. Kapec’s opinion applying gestalt principles to the Lip
Revo and the ’939 Patent should be excluded because his report includes no facts or
data that support the conclusion that the gestalt effect would cause ordinary consumers
to “complete” the shape of the Lip Revo product. Docket No. 148 at 9-10. The Court
agrees. Mr. Kapec opines that gestalt principles lead to the conclusion that, when a
consumer is presented with the Lip Revo, the ordinary observer will complete the
hemisphere by rounding off the Lip Revo’s flat product mound, thus creating an
appearance substantially similar to the product mound of the ’939 Patent. Docket No.
149-1 at 19 ¶ 5.6. In this regard, Mr. Kapec’s testimony is not a statement of his views
on the dominant features of the patented and accused designs, but rather an empirical
conclusion presented as a scientific fact. See id. (“Applying the principles of Gestalt . . .
when a consumer is presented with the OraLabs Lip Revo lip balm . . . the mind’s eye
will ‘complete’ the shape of the hemisphere”). Mr. Kapec’s conclusion lacks explanation
or factual support. This is insufficient. There is no articulated reason why an ordinary
observer would round off the Lip Revo’s flattened product mound as opposed to, for
instance, squaring it off like the cylindrical top of a stick lip balm product mound. See
Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997) (“nothing in either Daubert or the
Federal Rules of Evidence requires a district court to admit opinion evidence that is
connected to existing data only by the ipse dixit of the expert.”). Importantly, Mr. Kapec
acknowledged at his deposition that the success or failure of a design in suggesting a
given form is capable of being tested in multiple ways. Docket No. 167-1 at 18, 95:1622 (“Consumer research is one method of verifying or measuring the . . . clarity of one
form over perhaps another or the capture rate of one form over another. But it is not
8
the only . . . method”). Mr. Kapec’s report contains no mention of any testing that he
performed to substantiate his opinion. In addition, to the ex tent that Mr. Kapec is
relying upon his experience to form his opinion, he provides no explanation “how [his]
experience leads to the conclusion [he] reached, why [his] experience is a sufficient
basis for the opinion, and how that experience is reliably applied to the facts.” MedinaCopete, 757 F.3d at 1104.
Kind Group argues that Mr. Kapec’s opinion is admissible because OraLabs’
validity and infringement expert, Mr. Thuma, acknowledges that gestalt principles are
valid and testified that he does not disagree with Mr. Kapec’s application of gestalt
principles as they relate to this case. See Docket No. 166 at 8; Docket No. 167-7 at 4,
258:23-259:21. Kind Group cites no authority, however, that would allow Mr. Thuma to
bind OraLabs’ litigation position. Moreover, the Court is not aware of any authority that
holds that an otherwise unreliable expert opinion can be cured by the agreement of an
opposing party’s expert. Lastly, Kind Group provides no foundation or qualifications for
Mr. Thuma to state reliable opinions regarding gestalt principles as applied to product
design. The Court finds that Mr. Thuma’s testimony regarding the application of gestalt
principles to this case is irrelevant to the question of whether or not Mr. Kapec’s opinion
is admissible.
In sum, the Court finds that Mr. Kapec’s conclusion that gestalt principles would
cause an ordinary observer to complete the shape of the Lip Revo product mound and
therefore regard its design as hemispherical fails Daubert’s reliability requirement.4
4
Because the Court finds that Mr. Kapec’s testimony is not reliably applied to the
facts of this case, the Court need not address OraLabs’ argument that gestalt theory is
9
2. Opinion Concerning Substantial Similarity
OraLabs challenges Mr. Kapec’s opinion in paragraph 5.8 of his report that the
Lip Revo is substantially similar to the design of the ’939 Patent on three grounds: first,
that Mr. Kapec considered only Figure 5 of the ’939 Patent, which does not depict the
indentation in the side wall; second, that Mr. Kapec did not consider the prosecution
history of the ’939 Patent; and third, that Mr. Kapec improperly used gestalt theory to
inform his opinion. See Docket No. 148 at 10-12.
OraLabs argues that Mr. Kapec applied an incorrect test for infringement when
he used only figure 5 as the basis for his side-by-side comparison. Docket No. 148 at
9-11. As Kind Group notes, however, Mr. Kapec stated in his deposition that he took all
of the figures of the ’939 Patent into account in rendering his opinion. Docket No. 167-1
at 8, 39:12-15. Elsewhere in his deposition, Mr. Kapec stated that he believed that
figure 5 was representative of “all dominant aspects of the patent” and that he did not
consider the indentation to be a dominant portion of the design. See Docket No. 149-4
at 19, 113:3-24. As noted above, Mr. Kapec is qualified to present expert testimony
concerning what he believes to be the dominant aspects of the accused and patented
designs. Mr. Kapec’s decision to focus on figure 5 is not a basis for excluding
paragraph 5.8 of his report.
Next, OraLabs argues that Mr. Kapec’s conclusions are improper because he did
not consider the prosecution history of the ’939 Patent. See Docket No. 148 at 11-12.
OraLabs’ argument refers to its arguments concerning prosecution history in its motion
an improper method to evaluate design patents.
10
to exclude the testimony of defendants’ expert Mr. Woodring. See id. (incorporating the
arguments made in Docket No. 143 at 7-8). 5 OraLabs argues that the prosecution
history is relevant because Kind Group’s original design was rejected by the examiner
as obvious in light of the prior art until Kind Group filed an amendment to claim the flat
edge and indentation in the rim of the base portion. Docket No. 143 at 8. In light of this
history, according to OraLabs, “it is likely that the flat edge and depression along the rim
of the base portion was significant in gaining allowance of the ’939 Patent and is the
feature that distinguishes the ’939 Patent from being substantially similar to the [prior
art reference].” Id. OraLabs’ characterization of the prosecution history is not
supported. The patent examiner found that Kind Group’s original design in the
application that became the ’939 Patent was obvious in light of prior art. See Docket
No. 144-5 at 11. That original design, however, included only the hemispherical lip
balm applicator. It did not claim the base. See id. Kind Group subsequently amended
the application to include the hemispherical base portion of the ’939 Patent. See id. at
21. The patent examiner did not reject the amended application, but noted an
inconsistency between figure one, a side view that included the flat edge and the
indentation, and figure two, an aerial view that omitted the indentation and flat edge.
See id. The examiner allowed the claim, id. at 20, but required a correction to the
figures for consistency. Id. at 21. In requiring the corrected figures, the examiner made
5
Mr. Woodring’s testimony relates to the validity of the ’939 Patent. See
generally Docket No. 144-1. In light of the Court’s order granting summary judgment in
favor of Kind Group on the issue of validity, that motion is moot. Nevertheless, the
Court will consider OraLabs’ prosecution history argument as raised in its motion to
exclude Mr. Woodring’s testimony as if OraLabs had raised this argument in the
present motion.
11
no mention of the prior art reference that he believed invalidated Kind Group’s original
application to patent only the hemispherical lip balm shape. See id. There is no
support in the prosecution history for OraLabs’ statement that the examiner considered
the flat edge to be the key feature that made the ’939 Patent’s design patentable and
no evidence that Kind Group’s patent application would have been denied had the
design omitted this feature. Accordingly, the Court finds that Mr. Kapec’s decision not
to consider the ’939 Patent’s prosecution history does not justify excluding his opinions
regarding substantial similarity.
Finally, OraLabs argues that paragraph 5.8 should be excluded because Mr.
Kapec improperly applied gestalt theory. Kind Group responds that, in paragraph 5.4 of
his report, Mr. Kapec states his ultimate conclusion regarding infringement “without any
reference to Gestalt principles.” Docket No. 166. The Court agrees with OraLabs.
While Kind Group correctly identifies a paragraph in Mr. Kapec’s report that does not
mention gestalt theory, Mr. Kapec’s report does not describe any alternate methodology
that he used to reach his ultimate conclusion, and Mr. Kapec’s report provides no
reason to believe that gestalt theory was not an integral part of his analysis. Indeed,
the paragraph cited by Kind Group, paragraph 5.4, merely introduces Mr. Kapec’s
ultimate conclusions. See Docket No. 149-1 at 17, ¶ 5.4. In the f ollowing paragraph,
Mr. Kapec introduces gestalt theory, id. at 17-18, ¶ 5.5, and in the three paragraphs that
follow, Mr. Kapec explains that gestalt theory is the basis for his ultimate conclusion that
an ordinary observer would believe that the Lip Revo is substantially the same as the
’939 Patent. Id. at 19-20, ¶¶ 5.6-5.8. Because Mr. Kapec did not perf orm any testing to
support his opinion that gestalt theory leads to the conclusion that the Lip Revo
12
infringes the ’939 Patent or otherwise explain how his experience supports his opinion,
his opinion concerning substantial similarity will be excluded.
3. Use of Interchangeable Lid in Infringement Opinion
OraLabs seeks to exclude Mr. Kapec’s testimony that the fact that the Smooth
Sphere’s lid is capable of being screwed into the Lip Revo base further supports his
conclusion that the Lip Revo infringes the ’939 Patent on the grounds that the design
claimed in the ’939 Patent does not include a lid. Docket No. 148 at 12. OraLabs
further argues that Mr. Kapec’s comparison of the Lip Revo and the Smooth Sphere
was improper because the test for infringement is whether an accused design is
substantially similar to a patented design, not to the commercial embodiment of that
design. Id. Kind Group responds that Mr. Kapec’s comparison of the Lip Revo and the
Smooth Sphere was permissible because the ordinary observer test requires
consideration of the overall shape of the designs. See Docket No. 166 at 13. The
Court agrees with OraLabs.
“When no significant distinction in design has been shown between the patent
drawing and its physical embodiment, it is not error for the court to view them both, and
to compare the embodiment of the patented design with the accused devices.” Lee v.
Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988). It is im permissible,
however, to use limitations that appear in a commercial embodiment to alter the scope
of the claimed design. Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990
(Fed. Cir. 1993) (holding that a district court erred in holding that patentee did not
demonstrate a likelihood of success on the merits based on the absence of features in
13
the commercial embodiment that were not claimed in the patent); see also Sun Hill
Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995), vacated on
other grounds by Egyptian Goddess, 543 F.3d 665 (infringement is measured “against
the claim, not against a commercial embodiment that contains more than the claim”).
The Federal Circuit’s opinion in Berry Sterling Corp. v. Pescor Plastics, Inc., 122
F.3d 1452 (Fed. Cir. 1997), is instructive. In Berry, the district court granted summary
judgment and invalidated a design patent for a beverage container on the grounds that
the design was functional. Id. at 1455. In finding functionality, the district court stated
that the container was “designed so that the cup was able to fit underneath the valve of
a soda fountain and so that it could hold 32 ounces while retaining stability to minimize
the danger of spilling.” Id. The Federal Circuit reversed, noting that the features that
the district court relied on to invalidate the patent were found only in the commercial
embodiment and that there were “no height or volume limitations, no requirements that
the container fit in the majority of car cup holders, and no stability limitations imposed”
by the patent at issue. Id.
Here, Mr. Kapec’s side-by-side comparison of the Lip Revo and the Smooth
Sphere compares the measurements of the outside diameter, overall length, lip balm
diameter, height, and base diameter of the Lip Revo and the Smooth Sphere. See
Docket No. 149-1 at 23-24. Mr. Kapec then af fixed the Smooth Sphere’s lid onto a Lip
Revo base to “further support[]” that an ordinary observer would find the two designs
substantially similar. Id. at 24. Mr. Kapec’s analysis relies on the dimensions of the
respective products. The figures that comprise the claimed design of the ’939 Patent,
14
however, like the patent in Berry, contain no limitations related to the dimensions of any
portion of the design. Mr. Kapec’s opinion, which relies on limitations that are found
only in the commercial embodiment and not in the patent itself, is improper. Kind
Group argues that Mr. Kapec’s use of the lid is proper because the ordinary observer
test requires “consideration of the overall shape.” Docket No. 166 at 13. Had Mr.
Kapec limited his analysis to the shape of the two products, it is possible that his use of
the Smooth Sphere as a commercial embodiment of the ’939 Patent would be
permissible. But Mr. Kapec’s testimony does not concern the shape or relative ratio of
different components of the design, each of which is arguably claimed in the figures of
the ’939 Patent. His testimony relies entirely on the size of the two products, which is
impermissible. This testimony will be excluded.
4. Comparison to Prior Art
OraLabs seeks to exclude Mr. Kapec’s testimony that neither the Lip Revo nor
the Smooth Sphere is similar in design to several prior art references. OraLabs argues
that Mr. Kapec impermissibly uses gestalt theory, relies only on figure 5, and provides
no facts or data to support his conclusion that the prior art ref erences are plainly
dissimilar. Docket No. 148 at 13. The Court agrees. As discussed above, Mr. Kapec’s
opinion applying gestalt principles to the facts of this case is not reliable expert
testimony. Mr. Kapec’s opinion concerning prior art, like his opinion comparing the Lip
Revo to the ’939 Patent, relies on his “experience in industrial design and studying and
applying the Gestalt principles of consumer perception.” Docket No. 149-1 at 20. Mr.
Kapec’s failure to support his opinion with facts or data or sufficiently explain how he
arrived at his opinions by applying his experience with gestalt principles makes his
15
opinions unreliable.
B. Michael Thuma
Mr. Thuma submitted an expert report on the ’939 Patent’s validity, see Docket
No. 133-1, and a rebuttal report to Mr. Kapec’s report that addressed the issue of
infringement. See Docket No. 133-2. In light of the Court’s ruling on Kind Group’s
motion for partial summary judgment, see Docket No. 378, the Court need only
consider the issue of infringement, which is addressed in Mr. Thuma’s rebuttal report.
Accord, Docket No. 380 at 3.
Kind Group argues that Mr. Thuma’s infringement opinions improperly rely on a
verbal construction of the ’939 Patent and that Mr. Thuma improperly based his
decision that the Lip Revo does not infringe the ’939 Patent on the “point of novelty”
test, which the Federal Circuit has rejected. See Docket No. 131 at 8-10.
The “point of novelty” test stems from the Federal Circuit’s decision in Litton
Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984). The point of novelty test
required that “no matter how similar two items look, the accused device must
appropriate the novelty in the patented device which distinguishes it from the prior art.”
Litton Sys., 728 F.2d at 1444 (citation omitted). Following Litton, the Federal Circuit in a
number of cases required plaintiffs in design patent infringement actions to satisfy both
the ordinary observer test and the point of novelty test to prove infringement. See, e.g.,
Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir.
2004). In Egyptian Goddess, the Federal Circuit abandoned the point of novelty test as
a “second and free-standing requirement for proof of design patent infringement” and
16
instead concluded that the proper test f or design patent infringement is whether an
ordinary observer, viewing the accused design in the context of the prior art, would
consider the accused and patented designs to be substantially similar. 543 F.3d at
664, 666. The Egyptian Goddess court noted that this modified version of the ordinary
observer test avoided the risks of the jury focusing on “whether the accused design has
appropriated a single specified feature of the claimed design, rather than on the
appropriate inquiry, i.e., whether the accused design has appropriated the claimed
design as a whole.” Id. at 677.
In a separate portion of the opinion, the Egyptian Goddess court cautioned
against the use of verbal claim constructions in design patent cases. Id. at 679-80.
Although verbal claim constructions are not forbidden, the court noted the risks
“entailed in such a description, such as the risk of placing undue emphasis on particular
features of the design and the risk that a finder of fact will focus on each individual
described feature in the verbal description rather than on the design as a whole.” Id. at
680. The Court, following Egyptian Goddess, has held that no verbal claim construction
is necessary in this case. See Docket No. 101.
In his rebuttal report, Mr. Thuma stated that “[t]he scope of the claim of the ’939
Patent, taken as a whole, . . . includes three elements: the hemi-spherical top, the flat
portion along the rim or edge of the front surface of the base portion, and the hemispherical base portion.” Docket No. 133-2 at 16. Mr. T huma also opines that, based
on the ’939 Patent’s prosecution history, the indentation on the side wall is a “necessary
part of the design claimed in the ’939 Patent.” Id. at 6-7. Based on his understanding
17
of the three elements that constitute the scope of the ’939 Patent, Mr. Thuma then
stated that he applied the “ordinary observer” test, and opined that there are significant
differences between the figures of the ’939 Patent, including the Lip Revo’s flat-topped
(as opposed to hemispherical) lip balm, the absence of the depression, and three “s”
shaped curves on the wall of the Lip Revo that do not appear in the Smooth Sphere.
Id. Given those significant differences, Mr. Thuma opined that an ordinary observer
comparing the Lip Revo to the ’939 Patent in light of the prior art would conclude that
the designs are not substantially the same. Id.
The Court finds that Mr. Thuma’s infringement opinion applies an incorrect legal
standard to the issue of design patent infringement and therefore would not be helpful
to the jury. Mr. Thuma provided an explanation of the proper test for design patent
infringement (the “ordinary observer” test), but, when applying that test to the Lip Revo,
he appears to focus exclusively on individual features. See Docket No. 133-2 at 16.
Mr. Thuma’s infringement opinion consists of a single paragraph and is based on the
absence of specific features – namely, the flat top of the lip balm, the lack of an
indentation on the side wall of the base, and the three “s” shaped curves. Id. Mr.
Thuma does not articulate any basis for his opinion that the Lip Revo is sufficiently
distinct from the ’939 Patent other than by describing the differences between individual
features of the designs based on his verbal construction of the patent. See Docket No.
133-2 at 16. Mr. Thuma does not identify a portion of the respective designs as a
dominant design element or provide a reason why, in his expert opinion, an ordinary
observer would believe the differences to be significantly distinguishing. Focusing on
specific features at the expense of the design as a whole is the precise risk that
18
Egyptian Goddess warned against when it abandoned the point of novelty test and
cautioned against the use of verbal constructions. While Mr. Thuma pays lip service to
the ordinary observer test, it is at best ambiguous whether Mr. Thuma’s opinion in his
rebuttal report was based on comparing the accused and patented designs as a whole
or on an improper reduction of the ’939 Patent’s drawings to a verbal description.
While his rebuttal report may be ambiguous on the question of whether he
applies the ordinary observer test properly, Mr. Thuma’s deposition testimony confirms
that his opinion regarding infringement is based on an improper methodology for
analyzing design patents. Mr. Thuma testified that, based on the prosecution history of
the ’939 Patent, the “new and unique element” that allowed the ’939 Patent to issue
was the indentation in the side wall. Docket No. 134 at 6, 225:15-23. Mr. Thuma then
testified that it was his understanding that any accused design would have to
incorporate the feature that distinguished the ’939 Patent from the prior art in order to
infringe. Id. at 7, 226:3-6, 18-22. This testimony renders Mr. Thuma’s opinion
problematic in two ways. First, as discussed above with respect to OraLabs’ challenge
to Mr. Kapec’s opinion, there is no support in the prosecution history for Mr. Thuma’s
contention that the depression in the side wall was the key to patentability. Docket No.
133-4 at 5, 78:21-24 (acknowledging that the prosecution history “nowhere lists” the
three elements Mr. Thuma identified as comprising the ’939 Patent’s scope “as the
[elements] that restricted the scope” of the patent). Second, Mr. Thuma’s testimony
confirms that his infringement opinion is based on the incorrect assumption that an
accused design cannot be infringing if it does not incorporate a single feature that can
19
be characterized as a “point of novelty” from the prior art.6
Mr. Thuma’s testimony regarding his written description of the ’939 Patent further
underscores that his methodology was based on an incorrect understanding of the test
for design patent infringement. At the deposition, Kind Group’s attorneys presented Mr.
Thuma with images of two designs (alongside Figure 3 from the ’939 Patent), each of
which contained all of the elements present in Mr. Thuma’s written description of the
’939 Patent: 7
Docket No. 131 at 9; see also Docket No. 133-5 at 2, Docket No. 133-6 at 2
6
See Docket No. 134 at 7, 226:3-6 (“Q. Is it your opinion that the accused design
would have to incorporate that allegedly distinguishing feature to be infringing? A.
Yes.”); 226:18-22 (“Q. Okay. Your understanding is that the accused design has to
incorporate the distinguishing feature to be infringing? . . . A. Yes”).
7
For ease of reference, the Court will refer to the alternative design that appears
immediately to the right of the ’939 Patent in the image above as the “first alternative
design,” and the design that appears on the far right of the image as the “second
alternative design.”
20
Mr. Thuma testified that, because the designs had “three of the basic elements of what
is shown in Figure 3” of the ’939 Patent (the hemispherical base, side depression, and
hemispherical lip balm), both alternate designs were “basically the same” as the design
claimed in the ’939 Patent:
Q. . . . Do [the first alternative design and the ’939 Patent] have the same
overall visual appearance to you?
A. [The first alternative design] has a hemispherical base . . . . It does
have a depression on the side. . . . And it does hav e a hemispherical lip
balm or upper surface. So it has three of the basic elements of what is
shown in Figure 3 [of the ’939 Patent].
....
Q. . . . Does the [first alternative design] have the same overall visual
appearance as the design of the ’939?
A. Yes.
Docket No. 133-4 at 7-8, 185:4-14, 185:23-186:2.
Q. . . . are you saying that the [second alternative design ] has the same
overall visual appearance as that of the ’939?
A. Yes, because following the same logic as we just discussed with [the
first alternative design], this would have the same overall general
appearance as Figure 3, the ’939 patent.
Q. Is it your testimony that the [second alternative design] is basically the
same as that of the ’939?
A. Yes.
Id. at 8, 187:20-188:8. Docket No. 133-4 at 7, 185:11-14, 8, 186:9-13, 187:20-188:8.
Mr. Thuma’s testimony, which relies on the “basic elements” of the respective designs
rather than their overall visual impression, confirms that his opinion that the Lip Revo
does not infringe the ’939 Patent uses an improper standard for determining whether an
accused and patented design are substantially the same in the eyes of an ordinary
21
observer.
In sum, the Court finds that, because Mr. Thuma’s opinion concerning
infringement relies on select features and not the overall visual impression of the
patented and accused designs, his opinion is unreliable and will be excluded.
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED that plaintiff OraLabs, Inc.’s Motion in Limine to Exclude Testimony
of Jeffrey Kapec [Docket No. 148] (public entry at Docket No. 155) is GRANTED in part
and DENIED in part. It is further
ORDERED that defendants The Kind Group LLC and eos Products LLC’s Motion
to Exclude Opinions of Plaintiff’s Expert Michael C. Thuma [Docket No. 131] (Public
Entries at Docket Nos. 132 and 150) is GRANTED to the extent that it seeks to exclude
Mr. Thuma’s opinion that the Lip Revo does not infringe United States Patent No.
D644,939. It is DENIED as moot with respect to Mr. Thuma’s opinions concerning the
validity of United States Patent No. D644,939. It is f urther
ORDERED that plaintiff OraLabs, Inc.’s Motion in Limine to Exclude Testimony
of Cooper C. Woodring [Docket No. 143] is DENIED as moot.
DATED August 7, 2015.
BY THE COURT:
s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge
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