Architecture Expert Not Allowed to Opine on Manufacturing Shelters

This case involves the registration and alleged infringement of two trade dresses for octagon-shaped emergency tents sold to governmental entities. Plaintiff Crescent Resources, LLC ("Plaintiff" or "Crescent") asserts that Defendants Shelter Systems USA Inc. ("Systems USA") and Cobalt Equipment, Inc. ("Cobalt") (collectively, "Defendants") infringed Plaintiff's trade dresses by selling a similar shelter to a federal agency in 2023. In their counterclaim, Defendants seek to cancel Plaintiff's trademark registrations on two separate bases: (1) alleged fraud by Plaintiff on the U.S. Patent and Trademark Office ("USPTO") when applying for trademark registrations in 2020, and (2) the tent designs' ineligibility for trademark protection due to their alleged functionality.

Plaintiff filed a motion to exclude the testimony of Defendants' expert, Robert J. Corser. Additionally, Defendants filed a motion to exclude the testimony of Plaintiff's expert, Joel Delman.

Architecture Expert Witness

Robert James Corser is a licensed architect with a master's degree from Harvard University's Graduate School of Design with a focus on computer applications in structural and architectural design.

Get the full story on challenges to Robert Corser’s expert opinions and testimony with an in-depth Challenge Study.

Industrial Design Expert Witness

Joel Delman earned a Master of Industrial Design degree from Pratt Institute in New York, and has been an industrial designer, design strategist, and inventor for the past 30 years.

Want to know more about the challenges Joel Delman has faced? Get the full details with our Challenge Study report.

Discussion by the Court

A. Plaintiff's Motion to Exclude Corser

Plaintiff sought to exclude the Corser Report for four primary reasons: (1) Corser does not have the appropriate "scientific, technical, or other specialized knowledge" to render an expert opinion on industrial design; (2) Corser improperly considered aspects of the Trade Dresses that were not part of their respective definitions; (3) Corser provided a legal opinion; and (4) Corser employed improper methodologies to analyze the Disc Golf factors.

To determine whether a design has utilitarian functionality, the Ninth Circuit considers the four Disc Golf factors: "(1) whether the design yields a utilitarian advantage; (2) whether alternative designs are available; (3) whether advertising touts the utilitarian advantages of the design; and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture."

1. Corser's Qualifications

Plaintiff asserted that because Corser is an architect and not an industrial designer, he is unequipped to discuss shelters. However, the Court found that Corser has sufficient knowledge, skill, and experience to give expert testimony as to shelters.

2. Definitions of the Trade Dresses

Plaintiff argued that the Corser Report is based on a "flawed definition of Plaintiff's trade dress." Plaintiff contended that Corser improperly treated the trademark registrations' "description of goods" - specifically "interoperability" and "use environment" in hazardous conditions — as "limit[ing]" the scope of Plaintiff's Trade Dresses. This is not accurate. Corser properly focused on the Trade Dresses' elements that were listed in their registrations. Next, and as part of his analysis regarding the Trade Dresses' utilitarian advantages, Corser appropriately considered the products' purpose and uses when assessing the benefits of the Trade Dresses' elements. Corser did not rely on a flawed definition of Plaintiff's Trade Dresses or improperly consider elements or features that were not part of the Trade Dresses were not part of their respective definitions. The Court therefore declined to exclude the Corser Report on this basis.

3. Legal Opinion

Plaintiff argued that Corser's Report should be excluded as improper legal opinion. The Court found that the Corser Report does not offer an opinion on an ultimate issue of law. Corser provides facts and analysis as to each Disc Golf factor, but does not provide a conclusion on each factor. The Court found that Corser's analysis provides "relevant opinions and conclusions."

Even if Corser had offered a legal opinion in his report, exclusion of his report altogether would not be appropriate; rather, Corser should be permitted to testify so long as he does not "veer into improper legal opinions." Thus, the Court declined to exclude the Corser Report on this basis.

4. Methodologies for Disc Golf Factors

Plaintiff took issue with Corser's methodology in evaluating the Disc Golf factors. At the outset, Plaintiff asserted that Corser's functionality inquiry failed to "focus on trade dress 'as a whole'" and that this "alone is a sufficient reason to exclude his testimony." The Court disagreed that Corser neglected to consider the trade dress as a whole. Plaintiff is correct that "the proper inquiry" "is not whether individual features of a product are functional, but whether the whole collection of features taken together are functional." However, in conducting that inquiry, an expert may examine the individual features of the trade dress.

a. Utilitarian advantages

Plaintiff objected to Corser's "material spatial efficiency" analysis and his structural stability analysis. Corser explained that he considered the various shapes' spatial and material efficiency, i.e., the amount of exterior surface area needed to enclose a certain floor area. Corser observed that spatial and material efficiency is relevant to utilitarian performance because it impacts a shelter's weight, cost, and heat retention capabilities.

To calculate spatial efficiency, Corser considered four different tent shapes; each shape was assumed to have the same amount of floor area, side wall height, and roof height. If a shape needed more exterior surface area for the same amount of enclosed space, Corser considered the shape less effective. His methodology was disclosed and replicable.

Corser also compared the structural stability of the Trade Dresses against other possible shelter shapes. Noting that the Trade Dresses are intended for use in emergency situations, Corser "prepared a simple structural stability comparison of an octagon-based tent versus square tent," to evaluate their stability performance in high wind conditions. Corser used a computational fluid dynamics model ("CFD") to simulate high wind conditions and then compared each shape's wind resistance. The Court found that CFD is a sufficiently reliable method to measure structural stability.

The Court concluded that Corser's analyses would help a jury determine whether the Trade Dresses' octagonal shape provides utilitarian advantages over other shelter shapes.

b. Alternative designs

Plaintiff objected to Corser's methodology for assessing alternative designs. In his assessment, Corser began with shelters manufactured by Plaintiff's self-identified competitors. To evaluate these alternative designs, Corser considered five factors: (1) spatial efficiency; (2) structural integrity; (3) material efficiency; (4) ease of manufacture; and (5) ease of assembly. Plaintiff argued that Corser "refused to consider alternative tent designs that perform the basic function of keeping people sheltered as true alternatives."

Not only is there no legal support for the critique, but this critique is also premised on a legally flawed understanding of what qualifies as an alternative design. The Court found Corser's analysis of alternative designs is admissible, with the exception of any opinion involving the ease of manufacture. Corser reasonably invoked these factors because in his expertise, customers consider these factors while making purchasing decisions. Thus, Corser's comparison of the Trade Dresses and alternative designs, using these factors as metrics, can assist a factfinder in determining whether the alternative designs offer the same features as the Trade Dresses. The Court found that Corser's testimony appears to be based on sufficient facts and reliable principles, and would assist a jury.

Plaintiff sought to exclude Corser's testimony as to the fourth Disc Golf factor — the ease of manufacture. During his deposition, Corser admitted that he does not have experience with the cost of manufacturing these products. Thus, the Court excluded Corser's testimony as to factor four of the Disc Golf test because his opinion is not based on "reliable facts or data."

In sum, the Court granted Plaintiff's motion to exclude in part. The Court declined to consider the portions of the Corser Report that reflect his opinion on manufacturing shelters. Otherwise, Plaintiff's motion to exclude the Corser Report is denied.

5. Other Arguments

Plaintiff additionally sought to exclude the Corser Report because of alleged discrepancies between the Corser Report and a 2008 research paper on shelters authored by Corser. If there is any contradiction between the Corser Report and his 2008 paper, that issue goes to Corser's credibility, not his exclusion.

Plaintiff requests that Corser's analysis of advertising prior to 2023 be excluded because it is "not relevant to determining the functionality of" the Trade Dresses at the time of the alleged infringement. However, as discussed above, the pre-2023 advertising is relevant to the functionality analysis. Thus, the Court found no reason to exclude this part of the Corser Report.

Plaintiff also sought to exclude Corser's opinion that relies on third-party utility patents because the patents "have no bearing on the functionality of Plaintiff's trade dress" and should be excluded as irrelevant. The Court declined to do so. The Supreme Court has explained that a utility patent may offer "strong evidence that the features therein claimed are functional."

Determining whether the essential feature of a trade dress is the same as the "central advance claimed" in an expired utility patent is a question of fact. The utility patents cited by Corser include features also found in the Trade Dresses. Thus, the utility patents are relevant data that Corser may rely on, and a jury can consider the weight to give those utility patents.

In determining that the Trade Dresses are functional and therefore unprotectable under trademark law, the Court did not consider Corser's opinion on ease of manufacture, whether as part of his analysis under the second Disc Golf factor (alternate designs) or fourth Disc Golf factor (ease of manufacture).

B. Defendants' Motion to Exclude Delman

Defendants sought to exclude Delman's testimony for two reasons: (1) he offered affirmative opinions in a rebuttal report, so that his opinion was not timely disclosed pursuant to Federal Rule of Civil Procedure 26(a)(2)(B); and (2) his opinions are not reliable or relevant, and therefore are inadmissible pursuant to Federal Rule of Evidence 702.

The Court does not need to reach whether the Delman Report and his testimony are proper under Federal Rule of Civil Procedure 26(a)(2)(B) or Federal Rule of Evidence 702. The Delman Report raises concerns under both rules, including whether it truly is a rebuttal report as opposed to an untimely affirmative opinion, and whether Delman's methodology is sufficiently rigorous. Even assuming that the Delman Report is not excluded, Defendants have established that there is no genuine dispute as to their counterclaim of cancellation for functionality. The Court terminated as moot the motion to exclude the Delman Report.

Held

• The Court granted in part and denied in part Plaintiff's motion to exclude the testimony of Robert Corser.

• The Court terminated as moot Defendants' motion to exclude the expert testimony of Joel Delman.

Key Takeaway

The test under Daubert is not the correctness of the expert's conclusions but the soundness of his methodology. Shaky but admissible evidence is to be attacked by cross-examination, contrary evidence, and attention to the burden of proof, not exclusion.

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