Expert’s Application of Outdated Test for Design Patent Infringement Warrants Exclusion of Testimony

The court granted in part plaintiff's motion to exclude defendant's infringement and invalidity expert because the expert used the points of novelty test for design patent infringement that had been eliminated by the Federal Circuit. "[Defendant] concedes that [its expert] 'misstated part of the legal standard,' but argues that he actually applied the points of novelty test after applying the ordinary observer test, thus it was an additional basis for his opinion and can be ignored. . . . [Defendant's] argument that [its expert] considered a few 'novel features' as just a part of his analysis is not well taken, given the statement in his Rebuttal Report that he applied the 'points of novelty' test. . . . Because [his] opinion on infringement and invalidity are based on the 'points of novelty' test. . . which the Federal Circuit squarely rejected as a separate test [four years ago], [his] opinions in this respect are not appropriate and must be excluded."

Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC, et. al., 6-12-cv-00033 (FLMD January 4, 2013, Order) (Baker, M.J.).