Intellectual Property Expert Witness’ Testimony Excluded Because it Would Not Assist the Jury on the Issue of Functionality

Plaintiff, Southwestern Manufacturing, LLC alleged that it owned the “MULTI WEDGE” trademark in connection with a stylized wedge tool primarily used in the industrial and automotive industries (the “MULTI WEDGE Product”). Plaintiff alleged that it used the mark in commerce since May 2003 and received federal registration of the mark (the “MULTI WEDGE Mark”) on January 17, 2017.

Defendant Wilmar LLC (“Wilmar”) requested the right to sell a “private label” version of the MULTI WEDGE Product. In response, Plaintiff supplied Wilmar with information about and samples of the MULTI WEDGE Product. Plaintiff filed a trademark infringement suit after it learned that Defendants Wilmar and Advance Auto Parts (“Advance”) used the MULTI WEDGE Mark and MULTI WEDGE Dress by selling their own versions of the MULTI WEDGE Product.

Defendants sought to preclude Plaintiff’s expert witness, Edwin A. Sisson, from testifying or presenting evidence at trial. 

Intellectual Property Expert Witness

Edwin A. Sisson is an intellectual property attorney and focuses his practice on trademarks, trade dress, patents, copyrights, and trade secrets. Prior to becoming an attorney, Sisson received an undergraduate degree in Chemical Engineering from the University of Nebraska in Chemical Engineering and worked in various roles for The Goodyear Tire and Rubber Company, Shell Chemical Company, and M&G Chemicals.

Gain a comprehensive understanding of Edwin Sisson’s qualifications and casework history with his Expert Witness Profile report.

Discussion by the Court

Plaintiff offered Sisson as a rebuttal expert on the issue of whether the MULTI WEDGE Dress “is a legally non-functional tool design.”

Defendants argued that Sisson’s opinion and testimony should be excluded because he (1) lacked the requisite qualifications; (2) offered impermissible legal conclusions; and (3) provided testimony that is highly prejudicial. 

Here, the Sisson Report impermissibly offered legal conclusions regarding the functionality of the MULTI WEDGE Dress. In concluding that “[t]he Duckbill Design is not legally functional,” Sisson improperly opined on the law. For example, the Sisson Report provided that “a design cannot be registered if it is functional.” Sisson also critiqued Defendants’ expert opinion as being “not consistent with the law.”

The Court held that the materials relied upon by Sisson were also telling. The Sisson Report primarily relied on legal decisions, the Ninth Circuit’s model jury instructions, various textbooks and materials published by the U.S. Patent and Trademark Office, and third-party websites.

In the Court’s view, the bulk of the Sisson Report “instructed the jury on the law, or how to apply the law to the facts of the case.” The Court held that the Sisson Report read like a legal brief. Section E illustrated this point by setting forth the four Disc Golf factors courts used to determine functionality and using each factor as a sub-header.

Held

The Court denied Defendants’ Daubert motion to preclude Plaintiff’s expert witness, Edwin A. Sisson.

Key Takeaways:

Rule 702 requires that expert testimony “help the trier of fact to understand the evidence or to determine a fact in issue.” Consistent with Rule 704(a), the Ninth Circuit has repeatedly affirmed that an expert witness cannot give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of law.

Case Details:

Case Caption:	Southwestern Mfg. Llc V. Wilmar Llc Et Al
Docket Number:	2:22cv8541
Court:	United States District Court, California Central
Order Date:	July 16, 2024