Intellectual Property Expert Testimony That Leans on Legal Summary May be Excluded as Rebuttal Testimony

    Court: United States District Court for the Eastern District of Wisconsin
    Jurisdiction: Federal
    Case Name: Nordock Inc. v. Sys. Inc.
    Citation: 2013 U.S. Dist. LEXIS 26079


    The plaintiff and the defendant were rivals that designed, manufactured, marketed, and sold mechanical devices called dock levelers. These devices are used to create bridges between the surfaces of truckload beds and loading docks. Both versions of the device used the same components. The plaintiff alleged that the defendant had infringed on its design patent of the components of dock levelers and that the defendant committed several intellectual property and competition law offenses.

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    The plaintiff also moved to exclude the defendant’s intellectual property expert witness and the opinion he proffered in his trade dress and unfair competition report. The plaintiff claimed that the report was submitted after the deadline set by the scheduling order. The defendant rejected the claim, arguing that the report was a rebuttal and that the trade dress burden of proof lay on the plaintiff.

    The Intellectual Property Expert

    The defendant’s intellectual property expert was an intellectual property lawyer and published author with significant experience in litigation and business transactions as well as trademark, patent, and copyright acquisition. The intellectual property expert did his undergraduate studies in electrical, civil, and mechanical engineering. He worked as a product engineer and manager at Frito Lays for several years before obtaining a law degree from Washington University. The expert also had experience teaching trademark law as an adjunct professor, and frequently spoke on intellectual property issues.

    Brookman was hired by the defendant to opine on whether the patent in question was functional. He examined the file history of the contested and all related patents, along with the pleadings of the present case and the exhibits associated with the same. He reviewed the websites of the plaintiff and third-party providers of the dock leveler, and also multiple third-party utility and design patents related to dock levelers and the contested componential structures.


    The court found the expert’s report to be a rebuttal to the extent that it pertained to design patent and unfair competition. The report addressed opinions proffered by the plaintiff’s technical expert, noting that “in this action, as the proponent of the trade dress and unfair competition claim, [the plaintiff] bears the burden of establishing the elements of that claim, citing Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir. 1998).”

    The court noted that the portions of the intellectual property expert’s report containing “background regarding the expert; a summary of the applicable law; and an analysis of function/functionality in the context of the claims in this case” could be considered as rebuttals, and excluded those portions of the expert’s report which were outside the scope of the plaintiff’s technical expert report.

    The court further discussed that the expert witness was sufficiently qualified to offer his opinion on this matter, and the plaintiff’s objections to his methodology affected its weight and not reliability. The court similarly rejected the Plaintiff’s other disagreements with the Expert’s opinion as they could be properly addressed during cross-examination.


    The Plaintiff’s motion to exclude the Expert’s testimony was granted to the extent that it was limited to only those portions of his report that did not contain rebuttals and any related testimony and was denied in all other respects.