Technical Expert Not Qualified to Offer Opinion Concerning Secondary Considerations​

The court granted plaintiffs' motion to exclude the testimony of defendants' invalidity expert regarding secondary considerations of nonobviousness as unqualified because he had no experience in the toy industry. "The fact that [the expert] qualifies as a person of ordinary skill in the art for purposes of rendering his non-infringement and invalidity opinions bears little relevance to whether he is also qualified to testify regarding secondary considerations related to the toy industry such as commercial success, long-felt need, failure by others in the industry, or copying. . . . Defendants do not point to any expertise that would qualify [their expert] to testify regarding the commercial aspects of these inquiries. Indeed, according to his CV, it appears that upon the completion of his Ph.D. in 2008, [he] went directly to lecturing in applied mathematics at Harvard University, and from there to his current position as an Assistant Professor of Mechanical Engineering at MIT. [His] resume does not reflect any industry experience. During his deposition, [the expert] confirmed that he has no trained knowledge on what makes a toy successful, that his expertise in this regard was based on his experience as a consumer, and that he has never worked in the industry."

Tinnus Enterprises, LLC et al v. Telebrands Corporation et al, 6-15-cv-00551 (TXED December 15, 2016, Order) (Love, MJ)