Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 1 of 32 PageID 10534
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`PACIFIC COAST MARINE
`WINDSHIELDS LIMITED, a foreign
`corporation,
`
`Plaintiff,
`
`-vs-
`
`Case No. 6:12-cv-33-Orl-28DAB
`
`MALIBU BOATS, LLC, a California
`limited liability company, MARINE
`HARDWARE, INC., TRESSMARK, INC.,
`MH WINDOWS, LLC, JOHN F. PUGH,
`OWNER, PRESIDENT & CEO DARREN
`BACH
`
`Defendants.
`_____________________________________/
`
`ORDER
`
`This cause came on for consideration without oral argument on the following motions filed
`
`herein:
`
`MOTION: MOTION TO EXCLUDE TESTIMONY OF
`DEFENDANTS’ EXPERT WITNESSES (Doc. No. 223)
`
`August 3, 2012
`FILED:
`_______________________________________________________
`
`THEREON it is ORDERED that the motion is GRANTED in part and
`DENIED in part.
`MOTION: MOTION TO EXCLUDE EXPERT OPINIONS (Doc. No.
`246)
`
`August 15, 2012
`FILED:
`_______________________________________________________
`
`THEREON it is ORDERED that the motion is GRANTED in part and
`DENIED in part.
`
`1
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`

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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 2 of 32 PageID 10535
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`In this dispute over marine windshield design and technology, Plaintiff Pacific Coast Marine
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`Windshields Limited (“PCMW”) seeks to exclude from trial the opinions of two of the identified
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`experts for Defendant Malibu Boats LLC (“Malibu Boats”)1 citing the Federal Rules of Evidence and
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`Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed. 2d 469
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`(1993). Malibu, in turn, has filed its own motion seeking to exclude PCMW’s three experts.
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`To the extent the parties seek to exclude the testimony of experts Lorraine Barrick and Philip
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`Green, who opine on damages using opposing damages models, the Court will DEFER any such
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`ruling on the applicable damages methodology to the presiding District Judge consistent with his
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`ruling on the parties cross-motions for summary judgment on this precise issue. See Docs. 176, 211.
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`Accordingly, this Court’s Daubert analysis and rulings are limited to the parties’ arguments
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`as to the expert testimony of Robert Anders, Fred Smith, and Jeffrey Seyler. Because the Court finds
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`that Robert Anders’ expert testimony is based on the correct formulation of the test for infringement
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`and validity, and otherwise reliable, it will not be excluded. Because the Court finds that Fred Smith’s
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`expert testimony is in large part based on the wrong standard for infringement and validity, or
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`otherwise unreliable, the Court finds that most of it should be excluded. As to Jeffrey Seyler’s
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`opinions, the Court finds (with the exception of certain matters deferred to the District Judge) that they
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`are not subject to exclusion.2
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`I. Background
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`1The Court will refer to Defendants Malibu Boats LLC and Tressmark, Inc. collectively as Malibu Boats.
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`2Necessarily, the rulings herein are limited to the record presented on the motions. Should the issues and evidence
`develop differently at trial, reconsideration may be necessary. As well, for the allowed opinions to be considered properly by
`the jury, tailored and specific instructions (based on Federal Circuit case law) may be useful for these and other expert opinions
`in the case. The parties may even wish to propose such instructions for use in conjunction with the testimony of certain
`witnesses and not just at the conclusion of the trial.
`
`-2-
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`2
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 3 of 32 PageID 10536
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`PCMW filed suit against Defendants alleging infringement of three patents, two utility patents
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`and a design-patent, claiming sole ownership of a corner post marine windshield design.3 PCMW also
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`asserts claims for copyright infringement, trade secret misappropriation, tortious interference, trade
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`libel, and deceptive and unfair trade practices. PCMW contends that during 2005, Darren Bach, the
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`president and founder of PCMW, conceived of a novel assembly and ornamental design for marine
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`windshields. Mr. Bach is listed as the only inventor of all three patents, which he subsequently
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`exclusively licensed to PCMW. PCMW alleges Defendants have infringed these Patents with their
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`manufacture, importation, application, and sale of similar windshields made in China.
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`In its counterclaims, Malibu alleges that its employee, Dan Gasper – and not Mr. Bach –
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`conceived of the windshield design covered by the ‘070 and ’510 Patents in October 2005. Defendants
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`contend that the Patents are invalid because they omit as a co-inventor Dan Gasper, a Malibu boat
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`designer4.
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`PCMW seeks to exclude Defendants’ expert Fred Smith, who intends to offer a number of
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`opinions in his reports concerning infringement and invalidity of PCMW’s ’070 Patent. Malibu seeks
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`to exclude the testimony of two of PCMW’s experts, Robert Anders and Jeffrey Seyler, who intend
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`to testify as to the infringement of PCMW’s patents.
`II. Standards of Law
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`Federal Evidence Rule 702 governs the admission of expert testimony in federal court, and
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`provides:
`
`3The windshield at issue is covered by two utility patents and a design patent. Doc. No. 69 at 34-38. The design patent
`for the marine windshield design is identified by United States Patent Number D555,070 (the “‘070 patent”). The utility patents
`are identified with United States Patent Numbers 7,418,917 (“the ‘917 Patent”) and 7,441,510 (“the’510 Patent”).
`
`4Malibu has asserted counterclaims for infringement of U.S. Patent No. 6,647,915 (“the ‘915 patent”) (also relating
`to marine windshield technology), conversion, unfair competition, breach of contract, and for declaratory judgment of
`non-infringement and invalidity with respect to PCMW’s patent infringement claims.
`
`-3-
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`3
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 4 of 32 PageID 10537
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`If scientific, technical, or other specialized knowledge will assist the trier of fact to
`understand the evidence or to determine a fact in issue, a witness qualified as an expert
`by knowledge, skill, experience, training, or education, may testify thereto in the form
`of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data,
`(2) the testimony is the product of reliable principles and methods, and (3) the witness
`has applied the principles and methods reliably to the facts of the case.
`
`
`Fed. R. Evid. 702. Rule 702 compels courts to perform a “gatekeeping” function—specifically, to
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`determine whether the proffered expert testimony is reliable and relevant. Oliver v. City of Orlando,
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`Case No. 6:06-cv-1671-Orl-28DAB, 2011 WL 2174010, *2 (M.D. Fla. May 31, 2011) (citing Daubert
`
`v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 n. 7, 590–91, 113 S.Ct. 2786, 125 L.Ed.2d 469
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`(1993)), aff’d, 456 Fed. Appx. 815 (11th Cir. Jan. 31, 2012); Securities and Exchange Comm. v. Big
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`Apple Consulting USA, Inc., 2011 WL 3753581, *2 (M.D. Fla. Aug. 25, 2011). The Eleventh Circuit
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`has highlighted the importance of Daubert's gatekeeping function; it is because expert witnesses are
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`free to opine without firsthand knowledge, while relying upon inadmissible hearsay, that courts must
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`carefully judge the intellectual rigor employed by the expert. Oliver, 2011 WL 2174010, at *2 (citing
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`United States v. Frazier, 387 F.3d 1244, 1260 (11th Cir. 2004)); Finestone v. Florida Power and Light
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`Co., 272 Fed.Appx. 761, 767 (11th Cir. 2008) (internal citation omitted).
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`The Eleventh Circuit requires “a rigorous three-part inquiry.” Frazier, 387 F.3d at 1260. In
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`order for expert testimony to be admissible, a district court must determine that (1) the expert is
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`qualified to testify competently regarding the matters he intends to address; (2) the methodology by
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`which the expert reaches his conclusions is sufficiently reliable as determined by the sort of inquiry
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`mandated in Daubert; and (3) the testimony assists the trier of fact, through the application of
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`scientific, technical, or specialized expertise, to understand the evidence or to determine a fact in issue.
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`Id. (quoting City of Tuscaloosa v. Harcros Chems., Inc., 158 F.3d 548, 562 (11th Cir. 1998)). The
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`burden of laying the proper foundation for the admission of expert testimony rests with the party
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`offering the expert. Kilpatrick v. Breg, Inc., 613 F.3d 1329, 1335 (11th Cir. 2010) (“The burden of
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`-4-
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`4
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 5 of 32 PageID 10538
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`laying the proper foundation for the admission of expert testimony is on the party offering the expert,
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`and the admissibility must be shown by a preponderance of the evidence.”); McCorvey v. Baxter
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`Healthcare Corp., 298 F.3d 1253, 1256 (11th Cir. 2002).
`III. General Contentions as to Witnesses
`A. Robert Anders
`
`Malibu argues that the opinion of PCMW’s expert Robert Anders that Malibu has infringed
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`the ‘070 Patent should be excluded. They argue Mr. Anders’ opinion should be excluded because he
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`is not qualified to opine on how the ordinary observer views marine windshields; he applied the wrong
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`legal standards; his method is unreliable; and his opinion would not assist the trier of fact. Malibu
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`argues his opinion on copyright infringement should also be excluded.
`
`B. Fred Smith
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`PCMW seeks to exclude the testimony of Malibu’s expert Fred Smith, who intends to offer a
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`number of opinions concerning infringement and invalidity of PCMW’s ’070 Patent. PCMW argues
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`that Mr. Smith’s testimony should be excluded because he lacks the training and relevant experience
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`to qualify him as an expert in design patents, ornamental design, or industrial design; he applied the
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`wrong legal standard in forming his opinions; he employed the wrong legal tests and incorrectly
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`analyzed anticipation and obviousness; he admittedly did not know the legal standard used by the
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`examiner; and he offered opinions concerning copyright infringement despite a lack of relevant
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`experience and understanding of the legal standard for infringement. Additionally, PCMW objects to
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`Mr. Smith’s opinions because he intends to offer testimony concerning matters that were not addressed
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`in his reports. PCMW asserts that Mr. Smith is not qualified to testify regarding design patents, the
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`marine industry and copyright infringement because he has no relevant expertise. Doc. 223.
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`-5-
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`5
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`Webasto Exhibit 1033
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 6 of 32 PageID 10539
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`C. Jeffrey Seyler
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`Malibu seeks to exclude the opinion of Jeffrey Seyler on “the impetus behind Malibu’s boat
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`sales,” arguing his opinions are unsupportable, unreliable, and unhelpful to the jury. Malibu also
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`argues that Mr. Seyler is not sufficiently qualified in the “recreational boats” market.
`IV. Analysis: Qualifications
`
`Malibu contends that Mr. Anders is not qualified to opine on how the “ordinary observer”
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`views marine windshields because Ander is not familiar with products in the field at issue or how the
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`ordinary observer would differentiate them from one another. PCMW points out that Mr. Anders has
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`more than 50 years experience as a practicing professional in the art and science of industrial design,
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`which includes the ornamental aspects of the design of consumer and industrial products.; he was a
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`professor of industrial design for more than 12 years at the Pratt Institute. See Doc. No. 234-4 at 6-11;
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`Doc. 260. Mr. Anders is qualified to opine on the design of the marine windshield. Because
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`Malibu’s challenge relates to how the “ordinary observer” in this case should be defined, it is
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`addressed in detail below.
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`PCMW argues that Mr. Smith has no training or experience with respect to design patents, or
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`in the field of industrial design; it also argues that nothing in his credentials qualifies him as an expert
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`in copyright infringement matters. PCMW argues that although Mr. Smith offered a number of
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`opinions regarding the marine industry, he had no training or experience that qualified him as an expert
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`in that industry, other than the ownership of a ski boat and his replacement of a single pane of glass
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`on a boat windshield. PCMW contends that the mere ownership and repair of a consumer product does
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`not qualify him as an expert in the industry of that product.
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`-6-
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`6
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 7 of 32 PageID 10540
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`Malibu responds that Mr. Smith has decades-long, first-hand experience in mechanical design,
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`including ornamental design, having produced hundreds of products at his company; and he is also a
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`current and long-time owner of ski boats and is familiar with the interests of other ski-boat buyers.
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`A mechanical engineer is not categorically precluded from testifying regarding a design patent, as
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`being only familiar with the functional aspects of product development and not the aesthetics of
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`ornamental design. See, e.g., Rosco, Inc. v. Mirror Lite Co., 506 F. Supp. 137, 148 (E.D. N.Y. 2007)
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`(expert witness who was a mechanical engineer, had knowledge, skill, experience, training, or
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`education sufficient to offer his expertise on design patent for bus mirrors).
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`Mr. Smith is the president of Alpine Engineering & Design, has approximately 32 years of
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`experience in the fields of mechanical engineering and structural and mechanical design, and has
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`participated in the design and manufacture of numerous products. Doc. 224-1, Smith expert Rep. at
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`4. He is “an expert in the fields of mechanical design, structural design, design of fiberglass, design
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`of plastics, aluminum extrusions and manufacturing, and [has] had significant experience with the
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`patent process and in reading patent claims. Doc. 223, Ex. A at 5. Mr. Smith identifies at least five
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`product designs “in which the ornamental design was a primary consideration” that he personally
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`designed. Doc. 251-3 at 43, 46-55, 63. Mr. Smith is has owned ski-boats for at least 25 years. Id. at
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`59. Mr. Smith is qualified to testify about the industrial design of the marine windshield.
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`Malibu contends that Mr. Seyler is not qualified to testify about what drives Malibu’s sales of
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`boats. PCMW intends to offer Jeffrey Seyler as an expert in the marine industry and in computer
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`assisted drawing (“CAD”) design5. Malibu’s challenge is really not to Mr. Seyler’s expertise in those
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`fields. Mr. Seyler has a B.A. in Mechanical Engineering and a master’s degree in Naval Architecture
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`5Defendants apparently do not contest Mr. Seyler’s opinions regarding analyses of CAD files, or his opinions on
`misappropriation of trade secrets, since they redacted those portions of his report and believe these portions are “unnecessary
`to the Court’s decision.” See Doc. 246 at 36 n. 10.
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`-7-
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`7
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`Webasto Exhibit 1033
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 8 of 32 PageID 10541
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`and Marine Engineering, plus more than 40 years of experience in all aspects of recreational boat
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`design, including the design of boats used for water skiing, and 30 years of experience working with
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`CAD software. Doc. 257-2 at 4-5. Mr. Seyler also has designed and manufactured marine windshields
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`and has managed, owned and operated boat manufacturing companies. Doc. 237-7 at 4-5. He has also
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`decades of experience and expertise in understanding the market factors that affect a boat
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`manufacturer’s design decisions. Mr. Seyler is qualified to testify as an expert in the marine
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`industry and CAD design.
`V. Standards: Methodology and Reliability
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`As Judge Antoon has observed, accepting an expert’s qualification to testify competently does
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`not guarantee that his testimony is admissible. See Oliver, 2011 WL 2174010, at *2. Daubert and
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`Rule 702 require that courts apply their gatekeeping function to each expert to determine if the
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`testimony is scientifically valid and whether the reasoning or methodology can be applied to the facts
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`at issue. Id. (citing Daubert, 509 U.S. at 592).
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`“District courts ‘have substantial discretion in deciding how to test an expert’s reliability.’”
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`Rink v. Cheminova, Inc., 400 F.3d 1286, 1292 (11th Cir. 2005) (quoting United States v. Majors, 196
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`F.3d 1206, 1215 (11th Cir. 1999)). Courts have consistently utilized four guideposts set out by
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`Daubert 's reliability prong. They include, but are not limited to:
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`In addressing the reliability of expert methodology, "[d]istrict courts 'have substantial
`discretion in deciding how to test an expert's reliability.' " Rink v. Cheminova, Inc., 400
`F.3d 1286, 1292 (11th Cir.2005) (quoting United States v. Majors, 196 F.3d 1206, 1215
`(11th Cir.1999)). In Daubert, the Supreme Court set out four non-exclusive criteria for
`reliability determinations: "(1) whether the expert's methodology has been tested or is
`capable of being tested; (2) whether the technique has been subjected to peer review
`and publication; (3) the known and potential error rate of the methodology; and (4)
`whether the technique has been generally accepted in the proper scientific community."
`McDowell v. Brown, 392 F.3d 1283, 1298 (11th Cir. 2004) (citing Daubert, 509 U.S.
`at 595). These factors may guide a district court's reliability inquiry, but the district
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`-8-
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`8
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`Webasto Exhibit 1033
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 9 of 32 PageID 10542
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`court ultimately has "broad latitude" as to how it determines reliability. Kumho Tire,
`526 U.S. at 152.6
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`Wilson v. Taser Intern., Inc,. 2008 WL 5215991, *4 (11th Cir. Dec. 16, 2008) (unpublished).
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`“Whatever factors are considered, the Court’s focus should be solely on principles and methodology,
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`not the conclusions they generate.” McDowell, 392 F.3d at 1298; Allison v. McGhan Medical Corp.,
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`184 F.3d 1300, 1312 (11th Cir. 1999) (internal quotes omitted).
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`Another judge of the Middle District has cautioned:
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`It is therefore error to conflate admissibility with credibility, as by considering the
`relative weight of competing experts and their opinions. Quiet Technology, 326 F.3d
`at 13417. . . . With respect to the third reliability criterion of Rule 702, errors in an
`expert’s application of a reliable method generally implicate credibility rather than
`reliability. See Quiet Technology, 326 F.3d at 1345-46 (using incorrect numbers in a
`reliable formula is not grounds for exclusion under Daubert).
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`Furmanite America, Inc. v. T.D. Williamson, Inc., 506 F.Supp.2d 1126, 1130 (M.D. Fla. 2007)
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`(Fawsett, J.).
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`VI. Analysis: Anders
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`A. Application of “Ordinary Observer” Test
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`Malibu’s challenge to Mr. Anders’ application of the “ordinary observer test” challenges his
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`use of the “end user” or retail boat buyer as the “ordinary observer” rather than the boat manufacturer.
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` PCMW’s challenge to Malibu’s expert Mr. Smith center upon the inapplicable “points of novelty” test
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`that he employed in reaching his opinions; Malibu contends that Mr. Smith misstated the wrong
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`standard but correctly applied the “ordinary observer” test. The parties agree that the “ordinary
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`observer” test, as set forth by the Federal Circuit in Egyptian Goddess, is the controlling standard in
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`6 Kumho Tire Co. v. Carmichael, 526 U.S. 137, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999).
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`7Quiet Technology DC-8, Inc. v. Hurel-Dubois UK Ltd., 326 F.3d 1333 (11th Cir. 2003).
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`-9-
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 10 of 32 PageID 10543
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`this case, and not the former “point of novelty” test. See Egyptian Goddess, Inc. v. Swisa, Inc., 543
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`F.3d 665, 678 (Fed. Cir. 2008). As the Federal Circuit defined the test:
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`We hold that the “ordinary observer” test should be the sole test for determining
`whether a design patent has been infringed. Under that test, as this court has sometimes
`described it, infringement will not be found unless the accused article “embod[ies] the
`patented design or any colorable imitation thereof.” Goodyear Tire & Rubber Co., 162
`F.3d at 1116-17; see also Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501
`F.3d 1314, 1319 (Fed. Cir.2007).
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`Id., 543 F.3d at 678. To show infringement under the proper test, an ordinary observer, familiar with
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`the prior art designs, would be deceived into believing that the accused product is the same as the
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`patented design. Crocs, Inc. v. International Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2012)
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`(“ordinary observer” test – without any “point of novelty” perspective – is the sole test for determining
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`whether a design patent has been infringed). Although the parties agree on the governing test, they
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`disagree on who the “ordinary observer” is for purposes of the design patent infringement analysis.
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`They also disagree as to whether Mr. Smith could properly consider the “points of novelty” as “part”
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`of an infringement analysis.
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`Mr. Anders defines the ordinary observer as being “a consumer or purchaser of small marine
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`crafts and/or accessories.” Malibu argues that the ordinary observer for purposes of the design patent
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`infringement analysis is the boat builder who incorporates windshields into his boats, not the end user,
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`as Mr. Anders opines. PCMW argues that the Supreme Court has rejected the notion that the test for
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`patent infringement is whether there is substantial similarity “in view of the observation of a person
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`versed in designs in the particular trade in question-of the person engaged in the manufacture or sale
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`of articles containing such designs – of a person accustomed to compare such designs one with
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`another, and who sees and examines the articles containing them side by side.” Doc. 256 at 13-14
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`(citing Gorham, 81 U.S. at 527).
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`Webasto Exhibit 1033
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 11 of 32 PageID 10544
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`Malibu relies heavily on Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314,
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`1319 (Fed. Cir. 2007), in which the accused products were shrouds for spray-trigger devices used on
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`bottles such as window cleaning fluid. The court there found that the ordinary observer was the
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`purchaser of the spray-trigger devices, who assembled the spray trigger with the bottle, the bottle cap,
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`and the liquid contained in the bottle to create the final product. Id. at 1318. PCMW argues that in this
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`case there is no such “market” for the patented windshields because Malibu specifically had the
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`infringing windshields made to order by the other Defendants after providing PCMW’s CAD files to
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`Marine Hardware, and no other boat manufacturer purchases the accused windshields; thus, there is
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`no boat manufacturing market in which the accused windshields are being sold. As PCMW argues,
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`it makes no sense to ask the question of whether Malibu, as the “ordinary observer,” would be
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`deceived into purchasing the accused windshields instead of the patented design when Malibu itself
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`caused the accused windshields to be made for the boats.
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`Even apart from the fact that Arminak has been modified by Egyptian Goddess, which rejected
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`the “points of novelty” as an independent test, the holding of the case is inapposite to the
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`circumstances of this case. Arminak applied the Supreme Court’s test from Gorham v. White, which
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`characterized the ordinary observer test as whether there is substantial similarity “in the eyes of men
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`generally, of observers of ordinary acuteness, bringing to the examination of the article upon which
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`the design has been placed that degree of observation which men of ordinary intelligence give.” 81
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`U.S. 511, 527 (1871). The Federal Circuit then explained that in its prior Goodyear decision – which
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`dealt with patented tire tread designs commercially embodied on Goodyear’s truck tires – the focus
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`of the “ordinary observer” test was “on the actual product that is presented for purchase, and the
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`ordinary purchaser of that product.” Arminak, 501 F.3d at 1319 (citing Goodyear, 162 F.3d at 1116-
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`17). The court found that the ordinary observer of the patented tread designs was “a truck driver and
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`Webasto Exhibit 1033
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 12 of 32 PageID 10545
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`a truck fleet operator because the products containing the patented and accused designs were tires used
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`on trucks, even though the design patent at issue was not limited to truck tires.” Id. The Arminak
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`court’s reliance on Goodyear and other language in its decision, actually support the finding that the
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`“ordinary observer” is, in this case, the boat “driver” and the ultimate boat purchaser:
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`[T]he appropriate hypothetical ordinary observer fits squarely with our precedent that
`the ordinary observer is a person who is either a purchaser of, or sufficiently interested
`in, the item that displays the patented designs and who has the capability of making a
`reasonably discerning decision when observing the accused item's design whether the
`accused item is substantially the same as the item claimed in the design patent.
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`Arminak, 501 F.3d 1323. The product in Arminak is also distinguishable because it was a small
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`“trigger spray shroud” assembled into a more sizeable end product. The “industrial purchaser” of the
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`trigger sprayer shrouds for manufacturing assembly used the shrouds to cover trigger sprayer
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`mechanisms that are assembled with the bottle, the bottle's cap, the liquid contained in the bottle, and
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`the label on the bottle, all of which assembled together create the final retail product. Id. For that
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`reason, the court held that the “ordinary observer” was the shroud buyer for an industrial purchaser
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`or contract filler, rather the final consumer who bought the end products that incorporated the shrouds.
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`Id.
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`As one court recently explained “the ordinary observer” test:
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`The case law makes clear that the “ordinary observer” is not an expert in the field. As
`the Supreme Court said in Gorham, “[e]xperts . . . are not the persons to be deceived.”
`Gorham, 81 U.S. at 528. The “ordinary observer” is likewise not a patent lawyer “who
`inspects the designs critically to highlight each and every perceivable difference
`between them.” Durdin v. Kuryakyn Holdings, Inc., 440 F.Supp.2d 921, 933–34
`(W.D.Wis.2006); see also Tappan Co. v. Gen. Motors Corp., 248 F.Supp. 978, 980
`(N.D.Ohio 1965) (“The Supreme Court has said [in Gorham] that sameness of effect
`upon the eye is the main test of substantial identity of design, but it is not essential that
`the appearance should be the same to the eye of the expert. It is sufficient if it is the
`same to the ordinary observer.”).
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`The notional “ordinary observer” is, instead, someone who—while not an expert in the
`product—is not entirely ignorant of it, and indeed has some degree of familiarity with
`it. The “ordinary observer” thus includes someone who has purchased, or shopped for,
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 13 of 32 PageID 10546
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`a like item in the past. See, e.g., Henry Hanger & Display Fixture Corp. of Am. v.
`Sel–O–Rak Corp., 270 F.2d 635, 641 (5th Cir. 1959) (“ ‘[T]he ordinary purchaser of
`revolving racks, who was acquainted with the patented design would, upon viewing
`any of defendants' racks, including the wrought iron rack, . . . assume that he was
`viewing an identical or slightly modified version of the patented design.’ ”) (quoting
`Sel–O–Rak Corp. v. Henry Hanger & Display Fixture Corp. of Am., 159 F.Supp. 769,
`773 (S.D.Fla. 1958)); Applied Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d
`428, 430 (6th Cir .1933) (“[T]he ordinary observer is not any observer, but one who,
`with less than the trained faculties of the expert, is ‘a purchaser of things of similar
`design,’ or ‘one interested in the subject.’”); Graff, Washbourne & Dunn v. Webster,
`195 F. 522, 524 (2d Cir. 1912) (“Having seen the complainant’s design in a show case
`or shop window, the ordinary buyer would be very likely to mistake the defendants'
`design for it, if seen in a similar environment. This is the real test of infringement of
`design patents. If the ordinary buyer, having seen one of the complainant's dishes and
`wishing to procure one like it, would be induced to buy one of the defendants' dishes
`instead, it is enough.”); Minka Lighting. Inc. v. Maxim Lighting Int'l, Inc., No. Civ. A.
`3:06–CV–995–K, 2009 WL 691594 (N.D.Tex. Mar.16, 2009) (“The ordinary observer
`is therefore a member of the public who is currently shopping for or has recently
`purchased lighting fixtures—indeed, a ‘purchaser of things of similar design.’”);
`Arminak & Assocs., Inc. v. Saint–Gobain Calmar, Inc., 424 F.Supp.2d 1188, 1196
`(C.D.Cal.2006) (“[The ordinary] observer is not a person who has never seen the type
`of item the patent describes, ‘but one who, though not an expert, has reasonable
`familiarity with such objects, and is capable of forming a reasonable judgment when
`confronted with a design therefor as to whether it presents to his eye distinctiveness
`from or similarity with those which have preceded it.’”) (quoting Applied Arts, 67 F.2d
`at 430).
`
`Hutzler Mfg. Co., Inc. v. Bradshaw Intern., Inc., No. 11-civ-7211PGG, 2012 WL 3031150, *6 (S.D.
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`N.Y. July 25, 2012) (ordinary observer was a “typical consumer” who had seen, shopped for, or
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`purchased food storage items); cf. Spotless Enterprises, Inc. v. A & E Products Group L.P., 294
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`F.Supp.2d 322, 347 (E.D. N.Y. 2003) (holding the ordinary observer was not the general public, but
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`the sophisticated buyer for the garment manufacturer, who purchased the hangers, because consumers
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`“would not notice a variation among the hangers that would interfere with the aesthetic display of
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`apparel”). In a case involving the design patent of a dresser which was sold to a retailer in the chain
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`before being sold to the end-user consumer, the defendant argued the “ordinary observer” was the
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`buyer for the retail seller, not the end consumer. Ashley Furniture Ind. Inc. v. Lifestyle Enter. Inc., 574
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`Webasto Exhibit 1033
`Webasto Roof Systems, Inc. v. UUSI, LLC, IPR 2014-00648
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`Case 6:12-cv-00033-JA-DAB Document 328 Filed 01/04/13 Page 14 of 32 PageID 10547
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`F.Supp.2d 920 (W.D. Wis. 2008). The court concluded that the “ordinary observer” was the ultimate
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`consumer, and not the intermediary retail buyer, because:
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`The point of a design patent is to protect against deception in the marketplace
`for the product, that is, deception of those who “buy and use” the product. Id. The
`relevant concern in bedroom furniture design is whether household consumers are
`likely to purchase defendant's furniture believing it to be plaintiff's design. Defendant's
`reliance on Goodyear, 162 F.3d at 1117, for a contrary definition of an ordinary
`observer is misplaced. Goodyear held that a trucker was the ordinary observer of a
`design for tire treads used exclusively on truck tires. This is because truckers were the
`ordinary purchasers and users of tires with the patented tread design. Id. Goodyear did
`not hold that a tire retailer who resold to truckers was the appropriate ordinary
`observer. Here the product to which the design is applied is a bedroom set; the ordinary
`purchaser and user of a bedroom set is a homeowner. Accordingly, the proper question
`is whether a reasonable jury could find that the resemblance between the patented
`designs and defendant's furniture is such that an ordinary household consumer would
`be deceived into believing that the accused furniture employed the patented design.
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`Id. at 928.
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`In this case, the issue is whether the ordinary recreational boat buyer would be deceived into
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`believing that the accused marine windshield employed the patented design. As PCMW points out,
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`Malibu’s position is further weakened by the fact that Fred Smith, Malibu’s own expert, in his Rebuttal
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`report, did not challenge Mr. Anders’ use of the end consumer as the “ordinary observer” in his own
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`opinions on infringement and validity. Doc. 257-