Nordock: the attorney as expert on 'function' and 'functionality'?

It's a little while since this blog has had the chance to post an item by Sarah Burstein -- but she has just resurfaced and we are delighted that she has sent us this:

Can a patent attorney testify as an expert on functionality?

Earlier this week, U.S. District Judge Rudolph T. Randa issued a notable opinion in a design patent and trade dress case. (The full opinion is posted here.)

In the case, Nordock Inc. alleges that Systems Inc. infringes its dock leveler design. Here is an illustration from the patent-in-suit:

The parties filed cross-motions for summary judgment. Judge Randa denied both motions with respect to Nordock’s infringement claims. That’s not particularly unusual or interesting—the tests for both design patent and trade dress infringement are very fact-specific. If there are genuine disputes about those facts, then summary judgment is not appropriate.

What is interesting is the fact that Judge Randa allowed Systems to offer—and, in fact, relied upon—expert testimony about design patent and trade dress law.

Under U.S. evidence law, attorneys cannot usually testify about the law per se. In practice, though, it’s not unusual for patent attorneys to testify as experts on “Patent Office procedure.”

In this case, Systems retained a patent attorney, Adam L. Brookman, to testify as an expert witness. Brookman prepared reports stating, among other things, that Nordock’s design patent and purported trade dress were invalid because the claimed design is functional.

Nordock moved to strike Brookman as an expert. Nordock argued, among other things, that he was not qualified as an expert because he had no special experience or knowledge about dock levelers or product design.

Judge Randa did not agree, finding that Brookman “has sufficient knowledge, experience, and education to testify as an expert on function and functionality” because:

Brookman obtained a Bachelor of Science Degree in Industrial Engineering from the Georgia Institute of Technology in 1983, which involved course work in mechanical, electrical and civil engineering. For two years, before attending law school, Brookman worked as a project engineer and manager for the Frito Lay Company. 

In 1987, Brookman obtained a law degree from George Washington University, and, for more than 25 years he has practiced intellectual property law. Brookman was previously qualified as an expert witness and consultant with respect to trademark, trade dress, and design patent issues in intellectual property cases. He taught trademark law as an adjunct professor of law at Marquette University, frequently speaks on intellectual property subjects, and wrote Trademark Law: Protection, Enforcement and Licensing, published by Wolters Kluwer Law & Business. 

With respect to the particulars of this case and dock levelers in general, Brookman’s report . . . discloses that . . . he has prepared himself by obtaining the complete file history of the [patent-in-suit] and all related patents and applications, and copies of the pleadings in this case, including exhibits associated with them. He also reviewed Nordock’s website, the websites of third-party dock leveler providers, and numerous third-party design and utility patents relating to dock levelers and lug type hinges, reviewed the transcript of [a Systems engineer’s] deposition, and spoke to him about the design in issue and the construction of dock levelers generally.

But do these credentials really qualify someone to testify as an expert on “function and functionality”? That is an interesting question. If this case doesn’t settle, I hope Systems will raise it on appeal.

Do readers have any experiences of attorney-as-expert issues in design litigation in other jurisdictions? If so, we'd love to hear from you.