Design Patent Litigation: Increasing the Probability of ...

Design Patent Litigation: Increasing the

Probability of Success in Infringement

OutcomesLeveraging Science-Based Objective Ordinary Observer Test Surveys

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THURSDAY, SEPTEMBER 9, 2021

Presenting a live 90-minute webinar with interactive Q&A

Today’s faculty features:

Charles L. Mauro, CHFP, Founder and President, MAURO Usability Science, New York, NY

Chris Morley, MSc, Director of Research, MAURO Usability Science, New York, NY

Perry Saidman, Of Counsel, Saidman Design Law Group, Silver Spring, MD

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Design Patent Litigation: Increasing the Probability of Success in Infringement

Outcomes

Strafford Webinar Design Patent Litigation

September 9, 2021

Perry Saidman

1

Do Design Patent Cases Have Subjective Outcomes?

2

Gorham v. White (U.S. Supreme Court,1871)

Gorham Co.’s patented design

White, 1867 accused design

White, 1868 accused design

[I]f, in the eye of an ordinary observer, givingsuch attention as a purchaser usually gives,two designs are substantially the same, if theresemblance is such as to deceive such anobserver, inducing him to purchase onesupposing it to be the other.

ORDINARY OBSERVER TEST:

Gorham v. White (U.S. Supreme Court,1871)

Essence of Infringement Test:

Are the two designs “substantially the same”?

Substantially the same?

Essence of Infringement Test:

Are the two designs “substantially the same”?

Litton v. Whirlpool (FED. CIR. 1984)

Whirlpool’s Model 7600 Oven

Litton’s U.S. Pat No. Des. 226,990

For a design patent to be infringed, no matter how similar two items look, no matter if the Gorham test is met, the accused device must appropriate the novelty in the patented design which distinguishes it from the prior art.

Litton v. Whirlpool (Fed. Cir. 1984)

HELD: [T]he point of novelty test should no longer be used in the analysis of a claim of design patent infringement.

Egyptian Goddess v. Swisa (en banc Fed. Cir. 2006-1562, Sept. 22, 2008)

HELD: [T]he point of novelty test should no longer be used in the analysis of a claim of design patent infringement. [T]he Gorham ordinary observer test should be the sole test for determining whether a design patent has been infringed.


Substantially the same?

COURT: [t]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.


Substantially the same? Prior Art

Minka Lighting v. Maxim Lighting (N.D. Tex. March 16, 2009)

COURT: [In EG] the Federal Circuit has effectively divided cases into two categories: 1. In some instances, the claimed and accused designs will be sufficiently distinct that it will be clear without more that there’s no infringement.

COURT: [In EG] the Federal Circuit has effectively divided cases into two categories: 1. In some instances, the claimed and accused designs will be sufficiently distinct that it will be clear without more that there’s no infringement. i.e., NO NEED TO LOOK AT THE PRIOR ART!


COURT: [In EG] the Federal Circuit has effectively divided cases into two categories:

1. In some instances, the claimed and accused designs will be sufficiently distinct that it will be clear without more that there’s no infringement.

2. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of infringement will benefit from having a look at the prior art (court emphasis).


Patented Design

Accused Design


Patented Design

Accused Design

COURT: The patented and accused designs are sufficiently distinct, thus no need to look at the prior art….


Let’s have a look at the prior art anyway…


Patented Design

Accused Design

Prior Art


Patented Design

Accused Design

Prior Art

MinkaLighting v. Maxim Lighting (N.D. Tex. March 16, 2009)

Competitive Edge, Inc. v. Staples, Inc. (N.D. Ill., March 29, 2010)

Patented Design

Accused Design


Patented Design

Accused Design

COURT: “A side-by-side comparison shows that the two designs create overall visual impressions that would appear plainly dissimilar to the ordinary observer.”

MSJ of non-infringement granted.

Patented Design

Accused Design

“When the patented and accused design are sufficiently distinct, as in this case, there is no need to look to the prior art… “


Patented Design

Accused Design Prior Art


Chef ’n Corp. v. Trudeau Corp. (W.D. Wash., June 4, 2009)

Patented Design

Accused Design

COURT: Patented design is limited to a surface with three different slopes and a depressed center ring. Accused design has only one change in concavity, and no center ring. Defendant’s MSJ of non-infringement granted.

Patented Design

Accused Design

Closest Prior Art


Patented Designs

Accused Design

District Court: Because these designs are sufficiently distinct, the court does not need prior art as a “frame of reference” to apply the “ordinary observer test”.

Revision Military v. Balboa Mfg. (D.MD. Aug. 31, 2011)

Patented Designs

Accused “Bravo” Design Prior Art


Patented Designs

Accused “Bravo” Design

Prior Art

Revision Military v. Balboa Mfg. (Fed. Cir., 2012)

FED. CIR. The district court did not consider the prior art … Although the court stated that this was not a particularly close case, the record suggests otherwise. Remanded.

Patented Design D661,804

Accused Design by Covidien

Ethicon Endo-Surgery, Inc. v. Covidien, Inc. 796 F.3d 1312 (Fed. Cir. 2015)




Court: The patented and accused designs were “plainly dissimilar” and “sufficiently distinct”.




PRIOR ART

Super-Sparkly Safety Stuff v. Skyline (Fed. Cir. 2020)

Patented Design Accused Design

The Court found that the patented and accused designs were “plainly dissimilar” and “sufficiently distinct”, which did not require consideration of the prior art.


Patented Design Accused Design

Is the current test for infringement subjective?

Is the current test for infringement subjective?

You betcha!

Is there a better way?

Copyright MauroNewMedia, Inc. 2021 all rights reserved. Patent pending. (Preliminary Data Not for Publication)

MAURO Usability Science

Design Patent Litigation: Increasing the Probability of Success in Infringement Outcomes Utilizing Science-Based Empirical Ordinary Observer Testing Methods

Strafford CLE Webinar: Charles L. Mauro CHFP

54



Charles L. Mauro CHFP

• President / Founder Mauro Usability Science (1975-Present)

• Managed over 3,000 research projects spanning many industry verticals

• Expert in 75+ IP cases (Design / Utility / Trade Dress)

• Degrees: BS in Industrial Design / MS in Human Factors / Ergonomics

• Specialization / product design and GUI development

• Consults with many leading clients, government agencies, NGO…etc.

• Major awards for Design Research / NASA, ACM, IDSA, HFES

• Widely published and quoted / NYT, WSJ, Science

• Created USPTO Examiner Afternoon Program / Design Day Representative

• Best known for development of advanced design research methodologies55



Objectives: The 3 Major Takeaways From Today’s CLE Session

1. Why is there so much variation in design patentlitigation decision-making with respect to whether twodesigns are substantially the same?

2. Is there a methodology for reducing the variability indesign patent litigation decision-making that the courtwill find acceptable and useful? (An Empirical OrdinaryObserver Test)

3. How has the court responded to these newmethodologies? (A recent actual case)

56

Copyright MauroNewMedia, Inc. 2021 all rights reserved. Patent pending. (Preliminary Data Not for Publication) 45


Why is there so much variation in design patent litigation decision-making with respect to whether two designs are substantially the same?

1



Variability Research Is Big Business

1. There is robust science related to variability research2. Human decision-making variation is the major problem

1. Major league sports (Money Ball)2. Medical and surgical practice3. Military strategic and tactical practice

3. Solution / Approach1. Document actual variability statistically using validated tool2. Design specialized research tool or method to capture data3. Capture data on decision-making from large sample4. Use statistical methods to reveal meaningful insights

58



Critical Questions: Where Do We Start When Looking At Variability?

1. What is the source of variability (Process v. Human Behavior)?2. Is this a variability problem where scientific methods apply?3. Are there validated tests for measuring visual design variation?4. Does understanding variability help us solve the problem?

59



Design Patent Litigation Variability Factors

1. Question: Does the universe of decision-makers (judges and juries)view visual design of products in the same way or is there meaningfulvariation that impacts outcomes?

2. Solution: There is a validated test for this exact question (CVPA)1. Centrality of Visual Product Aesthetics Scale (CVPA; Bloch,

Brunel, & Arnold, 2003)2. An 11-question survey instrument utilized to benchmark variation

in product design sensitivity and impact on decision-makingrelated to Substantial Similarity.

60



The Study: Answer The Question Using CVPA instrument

1. Designed study to capture CVPA from 900 ordinary observers(consumers of flatware).

2. Recruited U.S. nationally representative sample, professionallyrecruited by specialized agency.

3. Study respondents compensated for completed surveys.4. Survey had extensive internal cross-checking and validation.5. Entire study design peer-reviewed, tested and validated.6. Study was part of initial validation of empirical ordinary observer

testing methodology using Gorham v. White case.

61



Hypothesis: Impact vs. No Impact

1. If there is no variation in CVPA (Design Sensitivity), then looking forreasons why litigation outcomes have such high variation based onindividual differences between judges and juries is moot.

2. However, if there is meaningful variation in the ordinary observerpopulation can such variation explain problematic outcomes at trialand MSJ? Do individuals indeed judge product shape differently andare such differences relevant to our problem?

62



FINDINGS: Data if all ordinary observers had same level of product design sensitivity (n=900)

Possible CVPA scores from 900-participant sample (EOOT Validation Study)

CVPA Score

Num

ber o

f Ord

inar

y O

bser

vers

High Design

Sensitivity

Low Design Sensitivity

900

63



FINDINGS: There Is High Degree of Validated Variability In CVPA For The Population of Ordinary Observers (consumers)

Actual Distribution of average CVPA scores from 900-participant sample (EOOT Validation Study)

CVPA Score

Num

ber o

f Ord

inar

y O

bser

vers

A Shapiro-Wilk test indicated that these data are not robustly normally distributed, p < .001.

High Design

Sensitivity


64



Critical Takeaways: Findings For Litigation Teams

1. There is very significant actual variation in design sensitivity across therepresentative population of ordinary observers.

2. Design sensitivity has a major impact on how consumers makedecisions about substantial similarity.

3. Current variation in design patent litigation outcomes are seriouslyimpacted by human variation in design sensitivity.

4. Under summary judgement the legal teams are dealing withprobabilities that are no better than random chance because there is noway to understand where a judge is on the CVPA spectrum.

5. Under jury trial legal teams are also no better than chance because thesample size is far too small (12) to provide statistical validity. (Jurysensitivity can be easily manipulated)

65



Important Legal Insight: Defining Scientifically What The Court Wanted All Along

The statistical average for the entire population distribution creates for the first time a validated “Hypothetical Ordinary Observer”.

This statistical value creates the opportunity to employ science-based methods to the question of substantial similarity…hence the EOOT.

66



The Solution: Design For Variability

To account for population variability, we need to design a methodology for capturing scientifically reliable data from a representative sample of ordinary observers tasked with applying the ordinary observer test as defined by the court to determine if two designs are or are not substantially the same. This is the Empirical Ordinary Observer Test.

67



Development of Empirical Ordinary Observer Test Methodology Based on Parsing of Actual OOT Legal Test Set By The Court.

2



More Information: Publications on EOOT Methodology

1. SSRN• Development and Initial Validation of an Empirical Ordinary

Observer Test for Design Patent Infringement (June, 2020)2. Research Handbook on Design Law Chapter 16

• How Different is Different – Modern Neuroscience and Its Impacton Design Law (May 2021)

3. Article Published in Berkeley Technology Law Journal• Why the Future of Design Patent Protections Will Rely on Modern

Neuroscience, Not Constitutional and Legal Reversionism(November 2021)

69



Critical Point: How The Legal System Can Use EOOT

EOOT does NOT replace the fact finder (juror or judge) but provides them with science-based data on how an actual statistically reliable population of consumers see the differences and similarities between two designs.

70



The History: Why Professional Research Has Not Been Utilized Successfully In Design Patent Cases

Critical Problems Based On Analysis of Prior Cases

1. Generally low-quality research2. Failed Federal 7-point protocol for legal research3. Methods inappropriate for issues critical to OOT4. Research attempted to replace the finder of fact5. Acceptance by court that design is not quantifiable6. Reliance of expert opinion vs. actual research

71


MAURO Usability Science N e wY o r kU S A

Meeting Federal 7-Point Protocol: Requirements for Legal Research In Patent Litigation Including Design IP

EOOT Constructed in accordance with guidelines outlined in the Reference Manual on Scientific Evidence published by the Federal Judicial Center in Washington, DC (2011) to ensure that consideration was given to the following elements:1. Legal problem being tested is accurately defined2. Survey designed, conducted and interpreted by qualified expert3. Target population or relevant audience correctly defined4. Appropriate sampling procedures are used5. Does not include biased questions6. Appropriate test and control stimuli are used7. Data is analyzed with appropriate statistical techniques

72



Overview: The Empirical Ordinary Observer Test Development

• Methodology validation study used 900 respondents• Collected 280,000 total data points• Today we are reporting on 25% of total data• Methodology developed by Mauro Usability Science (5 years).• Findings are preliminary and subject to revision• Several peer-reviewed papers in 2021• Methodology currently being applied in several cases• Peer-reviewed by extensive team of legal experts and others

73



The Ordinary Observer Test and Related Historical Updates

The Ordinary Observer Test (OOT) as stated in Gorham Company v. White, 1871

If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” 1

Egyptian Goddess, Inc. v. Swisa, Inc. altered the two-test framework by removing the “point of novelty test”2 and adding consideration of prior art.

“an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”

1. Gorham Company v. White, 81 U.S. 511, 528 (1871).2. Litton Sys., Inc. v. Whirlpool Corp., Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984)

74



Design of the Empirical OOT: Parsing the OOT Structure



The updated OOT according to Egyptian Goddess, Inc. v. Swisa, Inc., 2008


Requires a combination of 4-5 differenttestingmethodologiesto providerobust answerto the OOT.


75



Powerful New Methodologies for Evaluating Shape and Aesthetics Leading to an Empirical Ordinary Observer Test (EOOT)Eye-Tracking, Micro-Facial Expression Analysis, EEG, EMG, Cognitive Modeling and Workload Analysis, Large-Sample Consumer Testing for Design IP.

IMPORTANT New systems allow

integration of different data

streams into one data file for

statistical analysis.

76



Validation of Empirical Ordinary Observer Test Methodology Based On Testing Against Critical Legal Precedent of Gorham v. White Case and Egyptian Goddess.

3



Development / Validation of An Empirical Ordinary Observer Test

• Research Created by Diverse Team of Experts (20): Legal / Litigation, Design,

Neuroscience, Statistical analysis, Consumer Psychology, Academic Scholars.

• Sample size: N = 900 respondents

• Today's review = 25% of total data set (280,000 data points)

• Statistical analysis independently validated

• We welcome collaborations and academic participation

78



Validation Model: Gorham v. White Case & EG

How we utilized Gorham v. White original case patents and prior art

• Conducted extensive review of actual case history and decision

• Consulted with leading legal experts on the case and related archives

• Secured original patent applications and actual case history

• Conducted extensive search for actual products from trial

• Researched and purchased both Gorham and White designs (2)

• Researched and purchased Gorham and 18 prior art flatware designs

• Validated prior art with leading flatware experts and USPTO search

• Obtained common line drawings for Gorham and White and prior art designs

• Photographed all actual products for use in associated study

79



Validation Dataset From Gorham v. White

80



EOOT: Overall Study Flow Based On Formal OOT Legal Test

Study Introduction

ScreeningQuestions

Purchase Experience Questions

Demographic Questions

CVPA Questions

Rating Scale Familiarization

Explanation of Design Details of Interest

Prior Art Familiarization

Paired Rating Scale Task

Substantially the Same Task

Deception Task

Value of Design Questions

Survey Feedback Questions

Thank You

Survey Submitted

81



Distribution of Individual Differences: The Ability to Discriminate Between Visual Designs (Use of CVPA validated scales)

Distribution of average CVPA scores from 900-participant sample of purchasers of flatware.

CVPA Score

Num

ber o

f Con

sum

ers

High Design

Sensitivity


82



Methodology 1: Assessment of Purchaser Attention-Giving

Methodology 1 addresses the following portion of the OOT:If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

• Task: Utilizing a specialized online system with images of products, participantsimagine they are shopping for flatware and scan a list comprised of the patentedGorham design, the accused White design, and prior art, giving as much attention asthey typically would when shopping for flatware.

• Data Analysis: Eye-tracking data is collected while participants are examining theflatware patterns to inform attentional distribution and visual scanning behaviors.

83



The Interactive Survey Tool DesignFamiliarization with Prior ArtParticipants are instructed to examine prior art flatware handle designs, giving as much attention as they typically would when purchasing flatware.

84



Methodology 1: Eye-Tracking Example (Attention-Giving)

85



The Interactive Survey Tool DesignRating Designs According to Similarity/DifferenceAfter becoming familiar with the prior art, participants rate similarity/difference of design pairs consisting of the patented design v. accused design and patented design v. prior art.

86



Methodology: Quantify Similarity Between Patented and Accused Design Relative to Prior Art

How the sliding rating scale works:

87



Methodology: Quantify Similarity Between Patented and Accused Design Relative to Prior Art


88



Video of Participant Completing Task

89



Objective Eye-Tracking Metrics

Key Performance Indicators (KPIs) Attentional Heat Map

90



Methodology 1: Assessment of Purchaser Attention

HypothesisWhen assessing a pair of designs for similarity/difference, participants will spend more time visually scanning designs that are more similar compared to designs that are more different.

Gorham v. Saxon Stag (More Different)Gorham v. White (More Similar)

Participant spends time visually scanning primary and secondary details of Gorham and White pair prior to rating similarity/difference. Participant is able to determine difference of Gorham and Saxon Stag from a quick scan of the primary details of the two designs.

91



Methodology 1: Findings from KPI Data

Hypothesis: When assessing a pair of designs for similarity/difference, participants will spend more time visually scanning designs that are more similar compared to designs that are more different.

Gorham

TTFF 0.0 s

Time Spent 3.3 s

Revisits 13

Fixations 100

White

TTFF 1.8 s

Time Spent 3.1 s

Revisits 16

Fixations 78

Gorham

TTFF 0.1 s

Time Spent 1.0 s

Revisits 5

Fixations 30

Saxon Stag

TTFF 0.0 s

Time Spent 1.4 s

Revisits 5

Fixations 55

KPIs are higher for the Gorham v. White pair compared to the Gorham v. Saxon Stag pair (with exception of TTFF) as participant requires more visual scanning to determine exactly how similar Gorham and White are. It is clear from primary visual details of Gorham and Saxon Stag that they are different so less visual scanning is required.

92



Methodology 1: Findings From Attentional Heat Map

HypothesisWhen assessing a pair of designs for similarity/difference, participants will spend more time visually scanning designs that are more similar compared to designs that are more different.

Gorham v. White (More Similar) Gorham v. Saxon Stag (More Different)

Attentional heat maps demonstrate that visual attention is distributed throughout both designs more when assessing Gorham v. White compared to Gorham v. Saxon Stag.

93



Methodology 2: Assessment of Substantially the Same


Task: • Participants are presented the patented Gorham and accused White design pair as

well as a scrolling list of all prior art. They are then asked if the accused White designis most similar to the patented Gorham design or if a design in the list of prior art ismost similar to the patented Gorham design.

• Participants are then asked if they find the patented and accused designs to be“substantially the same”, followed by questions probing on their definition of the term“substantially the same”.

94



Methodology 2: Assessment of Substantially the Same

95



Methodology 2: Hypothesis and Findings

Hypothesis 1 • Participants will select the White design as most similar to Gorham significantly more

often than they select the prior art, in relation to the control condition.• Supported for both Gorham v. White 1 and Gorham v. White 2

• Chi-Square p < .001

Selected White as most similar to Gorham

Selected prior art as most similar to Gorham

Gorham v. White 1 Gorham v. White 2

A greater proportion of participants responded that White 1 and White 2 designs were more similar to Gorham than the prior art designs, in comparison to the control condition in which participants were presented a control design to compare to Gorham instead of a White design. These results were statistically significant for both White designs.

Gorham v. Control

Selected Control as most similar to Gorham

Selected prior art as most similar to Gorham

96




Hypothesis 2• A statistically significant proportion of respondents will respond that Gorham and White

are substantially the same.• Supported for Gorham v. White 1 design

• Binomial proportions test p = .005• Not supported for Gorham v. White 2 design

• Binomial proportions test p = .553Gorham v. White 1

Responded that Gorham and White are substantially the same

Responded that Gorham and White are not substantially the same

Gorham v. White 2

A statistically significant proportion of participants responded that Gorham and White 1 were substantially the same. A majority of participants responded that Gorham and White 2 were substantially the same; however, this majority was not large enough to be statistically significant.

97



Methodology 3: Quantify Similarity Between Patented and Accused Design Relative to Prior Art

Methodology 3 also addresses the following portion of the OOT:If…“in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

• Task: Participants are presented randomized multiple pairs of flatware handle designsand asked to rate how similar or different they are on a scale from 0 (CompletelyIdentical) to 100 (Completely Different). The pairs will be comprised of Gorham v. Whiteand Gorham v. prior art patterns.

98



Methodology 3: Quantify Similarity Between Patented and Accused Design Relative to Prior Art


99




Hypothesis 1• Participants will rate White as significantly more similar to Gorham compared to all

prior art• Supported for Gorham v. White 1 design (Paired Sample t-test p < .001)• Supported for Gorham v. White 2 design (Paired Sample t-test p < .001)

100

0 5 10 15 20 25 30 35 40 45 50 55 60 65 70 75 80 85 90 95100Completely DifferentCompletely Identical

0 5 10 15 20 25 30 35 40 45 50 55 60 65 70 75 80 85 90 95100

Gorham (patented design)

White 1867 (accused design #1)

White 1868 (accused design #2)

Infringing cluster based on rated proximity of shape as determined in survey utilizing slider method by consumers of flatware.

Paired sample t-tests confirmed that both White designs were rated as more similar to Gorham compared to all prior art designs (p < .001).

Completely DifferentCompletely Identical



Methodology 4: Assessment of Deception


• Task: Participants are shown the patented Gorham design and told to imagine that thisis a piece of flatware they have decided to purchase. They are then shown a shortmasking video, not associated with the product category or task. Following the video,participants are asked whether or not the patented Gorham design is in a list comprisedof the accused White design and all prior art.

103



Methodology 4: Masking Video

104



Methodology 4: Assessment of Deception (List Shortened for Demo)

105




Hypothesis 1• A statistically significant proportion of participants will confuse White for Gorham when

White is presented in the list after the masking video.• Supported when White 1 in list (Chi-Square p < .001)• Supported when White 2 in list (Chi Square p < .001)

Confused White for Gorham

Did not confuse White for Gorham

White 1 in List White 2 in List

A greater proportion of participants confused the White design for Gorham compared to those who confused the control design for Gorham (depending on condition assignment either a White design was presented in the list or the control design). These results were statistically significant for both White designs. Such results suggest that the resemblance of White and Gorham deceived a statistically significant proportion of participants to mistake White for Gorham.

Control in List

Confused Control for Gorham

Did not confuse Control for Gorham

106



Exploration of Financial Value of Design Attributes of Gorham and White Products As Tested.

4



How Do Ordinary Observers Rate Actual Financial Value of Design?

When asked what percentage of flatware purchase decision is based on visual design style, participants on average responded 73% (SD = 23.42).

Num

ber o

f Par

ticip

ants

Percentage

Such results suggest that, for many consumers, design greatly contributes to the purchase decision of a product. These results counter conclusions regarding the value of design typically drawn from traditional utility patent damage calculations.

108



Actual Data From Recent Application of EOOT Methodology Submitted to The Court.

5



EOOT Actual Application: Description of The Case

• Delta T, LLC v. Dan’s Fan City, Inc., and Troposair, LLC• Plaintiff asserted 3 design patents (D614,757, D770,027, D808,004)• 1 full design patent and 2 partial patents• Case settled week before trial

110



EOOT Actual Application: Description of The Case

‘757 Patent (Full) ‘027 Patent (Partial) ‘004 Patent (Partial) Accused Dan’s Fan City Vogue

111



Description of the Legal Assignment

1. Aid the fact finder in understanding how a nationallyrepresentative panel of consumers of fans view the fandesigns in terms of the OOT.

2. Provide scientifically valid data on how consumers rated thedesigns using OOT methodology.

3. Design survey to meet all legal and technical requirementsfor 702 and Daubert.

4. Be fully prepared to defend the studies in court based onintroduction of new research methodology not previouslyapproved by the court.

112



Overall Research Design: Overall Description

1. Utilized validated EOOT methodology from Gorham validation2. Utilized 3 identical surveys, one for each patent (n=300)3. Prepared and standardized visual art for minimum confusion4. Recruited panel from large database of several million consumers5. Conducted extensive pilot testing and confirmation analysis6. Surveys subjected to independent peer-review7. Conducted extensive statistical analysis as required8. Defended against aggressive Daubert challenges9. Worked to disqualify opposing survey expert

113




Similar CVPA distributions were observed in the ‘757, ‘004, and ‘027 survey samples.

There are no statistically significant differences between the 3 distributions. 114




CVPA distributions observed in the ‘757, ‘004, and ‘027 survey samples were very similar to that observed in the Gorham v. White validation study.

There are no statistically significant differences between the 4 distributions. 115



Overall Survey Flow: Three Separate Surveys

Study Introduction

ScreeningQuestions

Purchase Experience Questions

Demographic Questions

CVPA Questions

Rating Scale Familiarization

Explanation of Design Details of Interest

Prior Art Familiarization


Substantially the Same Task

Deception Task

Value of Design Question

Survey Feedback Questions

Thank You

Survey Submitted

116



What is The Actual Ordinary Observer Test? (The Three Prongs)



Egyptian Goddess, Inc. v. Swisa, Inc. altered the two-test frameworkby removing the “point of novelty test”2 and adding consideration of prior art.



117



Examples of What Consumers Saw In The Actual SurveyStudy Introduction

118



Examples of What Consumers Saw In The Actual SurveyScreening Questions

119



Examples of What Consumers Saw In The Actual SurveyPurchase Experience Questions

120



Examples of What Consumers Saw In The Actual SurveyPurchase Experience Questions

121



Examples of What Consumers Saw In The Actual SurveyDemographic Questions

122



Examples of What Consumers Saw In The Actual SurveyDemographic Questions

123



Examples of What Consumers Saw In The Actual SurveyCVPA Questions

124



Examples of What Consumers Saw In The Actual SurveyRating Scale Familiarization

125




126




127




128



Examples of What Consumers Saw In The Actual SurveyPrior Art Familiarization

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Examples of What Consumers Saw In The Actual SurveyPrior Art Familiarization

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Examples of What Consumers Saw In The Actual SurveyPaired Rating Scale Task

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Examples of What Consumers Saw In The Actual SurveySubstantially the Same Assessment Task

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Examples of What Consumers Saw In The Actual SurveySubstantially the Same Assessment Task

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Examples of What Consumers Saw In The Actual SurveyDeception Task

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Examples of What Consumers Saw In The Actual SurveySurvey Feedback Questions

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Examples of What Consumers Saw In The Actual SurveySurvey Feedback Questions/Thank You/Survey Submitted

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How Consumers Rated The Similarities and Differences of the Patented and Accused Fan Designs For the ‘757 Patent

1. Substantially The Same Question1. A group of professionally recruited, screened and compensated consumers of

fans found the accused fan to be substantially the same when compared tothe patented fan design as claimed in the ‘757 patent. The confidence level fortheir ratings was statistically significant at the P<.001 level. This means that thereis a 99.9% confidence that the ratings seen in the study reflect the ratings of thereal-world universe of purchasers of fans.

2. Assessment of Deception Question1. A group of professionally recruited, screened and compensated consumers of

fans confused the accused fan design for the patented fan design asclaimed in the ‘757 patent. The confidence level for their ratings was statisticallysignificant at the P<.001 level. This means that we have a 99.9% confidence thatthe ratings seen in the study reflect the ratings of the real-world universe ofpurchasers of fans.

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How Consumers Rated The Similarities and Differences of the Patented and Accused Fan Designs For the ‘757 Patent

Average Rating for Patented v. Accused Design

Average Rating for Patented v. Prior Art Designs


X

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Findings: Partial Patents (D770,027 and D808,004)

1. Utilized identical survey methodology (n=300)2. CVPA validated as internally consistent3. Utilized special methodology for partial element identification4. Other two partial patents found to be infringing

1. D770,027 (p < .001)2. D808,004 (p < .001)

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Additional Research: Surveys To Determine Best Viewing Angle For Purchase of Fans

1. Conducted series of additional surveys to determine which of all the views in thepatent was seen by the consumer as most important and relevant whenevaluating the visual design of a fan. (Canonical View)

2. Findings From Surveys on Preferred View1. The bottom perspective view is the preferred view in all conditions where that view

is provided.2. When the bottom perspective view is not provided the preferred view is the bottom

straight on front view.

Bottom Perspective View Bottom View

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Daubert Challenges Asserted Against EOOT Methodology

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1. Selection of prior artChallenge

• Presented a reduced set of prior art examples and left out crucial prior art.Response

• Relevant prior art for inclusion in the survey was chosen by an independentdesign expert. The opposing expert issuing this challenge did not have designexpertise and ultimately the Court did not allow him to testify on prior art as hehad no independent knowledge of prior art and was simply adopting theposition of Defendant’s counsel.

2. Selection of control designChallenge

• Utilized an inappropriate control stimulus that artificially inflated the differencein responses between the test and control conditions.

Response• The control design was selected based on close following of FJC guidelines for

selection of a control design. Opposing side did not proffer any data to supportthat a different control design would impact study results.

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3. Use of a control conditionChallenge

• Failed to account for measurement noise by neglecting to use control groups.Response

• Every survey used control groups and use of control groups was described inthe reports.

4. Participant sampleChallenge

• Did not define a concrete target population; Targeted a general population ofceiling fan consumers.

Response• Survey screening criteria were designed to recruit the proper and

representative sample of U.S. consumers of ceiling fans. Opposing side did notproffer any data to support that different screening criteria would impact studyresults.

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5. Did not conduct a proper pretestChallenge

• Our “pre-launch pilot” approach was not a pretest; in the survey world it isknown as a soft launch or pilot study.

Response• Several pre-launch pilots were executed to validate the ceiling fan surveys prior

to official data collection. Several “pretests”, as the opposing side described,were executed in the validation of the EOOT, which the ceiling fan surveys areclosely based on.

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Judge’s Rulings On Daubert Challenges To EOOT From Opposing Experts

1. Qualifications• Mauro’s education and experience is sufficient to opine on survey he devised

2. Reliability of Methodology• The methodologies utilized in the EOOT surveys are sufficiently reliable under

Daubert.

3. Assistance to Trier of Fact• A survey explaining to what extent validated individuals found the patented design

and prior art, as well as the Vogue fan to be similar could be helpful indetermining whether Defendants infringed the patents.

From Court Decision on Daubert Motions“Defendants do not attack any of the specific processes utilized in developing the survey, the statistical analyses employed in compiling the data, the pool of participants, or the accuracy of the results. Rather, Defendants argue that it has not been utilized in patent cases before. Regardless of whether this specific survey has been used in a patent case, the methodology itself is sufficiently reliable.”

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Daubert Challenges Asserted Against Opposing Survey Expert Witness.

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Daubert Challenges Asserted Against Opposing Expert Witness

1. Had only a cursory understanding of the ordinary observer test and design patent law2. Not an expert in surveys that test how an ordinary observer views substantially similarity

between patented and accused designs3. Never testified on design patent infringement4. Had not formally studied industrial design5. Not familiar with ceiling fan design or related technology6. Did not replicate survey work on his own to prove points of concern7. Had never designed a survey or provided an expert report in a design patent case8. Completely depended on counsel for his criticisms of prior art used in our surveys9. Completely lacked independent knowledge of prior art10.Did not reject the overall EOOT study methodology but issued minor criticisms that he

could not prove would change the survey results.

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Judge’s Rulings On Daubert Challenges From MAURO Experts vs. Rebuttal Report

1. Qualifications• Need not be an expert on patent law, OOT, patent-specific surveys, or ceiling fans

to render an opinion on survey design – Met minimum standards to testify

2. Reliability of Methodology• May not testify on correctness of prior art as Defendants offered no reliable basis

for such testimony. He conducted no research on prior art and has no specificbackground in determining what constitutes prior art.

3. Assistance to Trier of Fact• Testimony regarding correctness of prior art is omitted.• Plaintiff did not argue that any remaining testimony would be unhelpful so

remaining testimony regarding general survey design methodologies isadmissible.

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Best Practices for Leveraging Science-Based Objective Ordinary Observer Test Surveys

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Critical Takeaways: Initial Case and Rulings

1. EOOT provides scientifically-valid data from real consumers2. To survive Daubert EOOT must be carefully designed3. The court will accept EOOT if properly supported4. EOOT is a new methodology and not a repurposed survey from

trade dress or copyright matters5. EOOT can benefit both sides equally (objective measures)6. EOOT can be a very powerful strategic litigation tool7. CVPA+EOOT can aid in resolution of the variability problem

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Next Major Research Focus and Webinar from Saidman and Mauro. Impact of Prior Art On Decision-making Variability.

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Influence of Presenting Prior Art on Infringement Determinations

When presented prior art and then asked whether Gorham and White were substantially the same based on the OOT text: (Data from original EOOT study sequence)

Gorham v. White 1Responded that Gorham and White are substantially the same

Responded that Gorham and White are not substantially the same

Gorham v. White 2

69% reported Gorham and White 1 were substantially the same

56% reported Gorham and White 2 were substantially the same

Responded not plainly dissimilar

Responded plainly dissimilar

Gorham v. White 1 Gorham v. White 2

28% reported Gorham and White 1 were not plainly dissimilar

26% reported Gorham and White 2 were not plainly dissimilar

When not presented prior art and asked whether Gorham and White were plainly dissimilar based on the SJ text:

A comparison of responses to these two conditions demonstrates the influence of presenting prior art on infringement determinations of representative consumers. Chi square tests indicated that proportions of similar/different responses acrossthese two conditions differed significantly for both Gorham v. White 1 (p < .001) and Gorham v. White 2 (p = .003).

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Thank You

Comments by Rocky Schwartz Esq. Lead Counsel Representing Client (Delta T, LLC).

Questions: Please type in chat box on your computer screen

Contact Information

Charles L. Mauro

[email protected]

Chris Morley

[email protected]

Perry Saidman

[email protected]

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