Over the past 40+ years we have executed many complex intellectual property litigation consulting projects and served as expert witnesses for the most demanding and high-visibility clients and law firms. Throughout this long history we have participated in major design patent, utility patent, copyright and trade dress cases representing Apple, Nike, Dyson, Qualcomm, Microsoft and many other leading high-technology entities. By working directly with senior partners at top-tier law firms we have learned that there is no substitute for intellectual rigor and attention to detail.
To that end, we offer a series of specialized services to leading legal teams facing complex IP litigation matters where the outcome may impact fundamental business performance. The following is a short description of the research services we offer clients designed to improve legal outcomes in an increasingly complex litigation environment. Following our research services are the summary backgrounds of our key expert witnesses including Charles L. Mauro CHFP, our founder and president.
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Below is a list of the intellectual property litigation consulting services we offer, each accompanied by a brief description. If you have additional questions or would like to contact our firm about specific research needs, please click here.
When clients are considering IP litigation prior to the filing of a formal complaint there is often the question of the strength of a given case. To aid in answering this complex question we offer legal teams an independent infringement and/or exposure assessment based on our deep experience covering our areas of expertise. Both plaintiff and potential defendant legal teams can utilize a pre-complaint infringement assessment. This assessment allows the legal team to preview the way leading experts approach the critical infringement variables. This form of analysis can be highly effective means of understanding the complex issues only subject matter experts will surface once litigation is instituted. This expertise can be combined with robust consumer testing and/or expert polling research to determine, in advance of litigation, how key issues may be addressed by opposing teams of experts.
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There have been firms that specialize in prior art searches for decades. However, in certain complex design patent and copyright cases such firms often apply a standardized utility patent search model to the conduct of design patent prior art searches. As a result, these firms routinely fail to isolate important prior art that may be a critical aspect of legal strategy on either side of the case. This is especially important in design patent and copyright litigation where imperative prior art does not always reside in online sources but is found in other media that form the basis of the design literature. In this context we offer robust and comprehensive prior art search expertise, always operating with a detailed knowledge of the case and related underlying legal concepts.
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Actual consumer research has not been utilized effectively in design patent cases to add rigor or reliability to the required ordinary observer test. Research into this issue shows that the reason is simply that prior attempts to use consumer research which focused on the design patent ordinary observer test was of generally low quality and failed to meet federal guidelines for acceptance of survey data in a court of law. Our firm has been a leading proponent in the use of advanced consumer testing in design patent cases. We have conducted independent, consumer-based research focused on supporting expert opinions related to the ordinary observer test through the application of robust and fully supportable testing methods. To this end, we offer legal teams involved in important design patent litigation access to our specialized consumer testing services, which are based on meeting the 5 key standards required for acceptance of research data in a court of law.
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Since the SCOTUS decision in Apple v. Samsung, damages calculations in design patent cases have become increasingly complex. The likelihood that legal teams will rely on inappropriate and outdated research methods utilized in utility patent cases is a serious concern. Legal teams that employ traditional survey methods from utility patent cases are exposing their clients to potentially serious errors and problems because such methods categorically undervalue visual design as a product attribute. We are highly experienced in the proper and reliable methods for determining the objective value of visual design in the context of consumer decision-making. This is not a research question for the traditional utility patent survey expert. To this end, we offer legal teams robust and supportable methods for assigning value to design in the context of Rule 289 and the now required article of manufacture test.
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For decades consumer surveys have been utilized in copyright infringement cases. Many of the studies proffered historically and today are of generally poor quality and are not designed to meet federal guidelines for survey data admissible in court. However, the problems with traditional copyright surveys and associated experts is more about use of methods that do not accurately represent how the judge or jury actually consider and make decisions about whether or not two works are substantially the same in terms of overall concept and feel. Now, it is possible, based on the application of new advanced consumer testing methods, to provide legal teams with studies that are technically and scientifically robust and more accurately simulate the decision-making experience of the finder of fact. To this end, we offer legal teams faced with complex copyright litigation a research methodology that is both defensible and appropriately representative of the jury experience when assessing copyright infringement.
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All major IP cases require complex and highly effective visual and technical aids to communicate critical innovations and related claims to the finder of fact. Today, most litigation teams rely on specialized companies to create visual and technical support aids for trial. Almost exclusively, graphic artists with minimal technical expertise staff such firms. This often leads to a costly and highly repetitive revision process during the development of trial demonstration aids and time wasted by the legal team ensuring that the designated materials properly convey critical concepts. Over the past 40 years as a leading human factors engineering and product design firm we have developed a robust and highly effective expertise profile in the design and development of complex product simulations and related graphic information presentation displays. This specialized expertise makes it possible for our team to understand, design and develop trial aids that accurately and in a compelling manner convey to the jury the critical aspects of a patented invention. To this end, we offer legal teams research and development of trial aids and functional concept simulations that are robust and technically accurate.
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Presenting a clear, concise, and tested trial narrative to the jury is essential to success during trial in any IP case. This involves bringing together all important aspects of the case into a narrative that can be presented to the jury, thus allowing them to evaluate all of the evidence and determine their verdict. To aid in development of effective trial narratives we offer legal teams the implementation of robust specialized testing methodologies such as Galvanic skin response (GSR), micro-facial expression analysis, and eye-tracking to capture, on a physiological level, how individuals react to different aspects of the narrative presentation. Furthermore, these methods can be applied to not only individuals but also groups to determine how an individual’s reaction may be impacted in a group setting, simulating the true experience of a juror during trial. This brings a new level of psychophysical research to testing trial narratives and provides valuable insight into how members of the jury may react to various aspects of the proposed trial narrative, thus allowing the client and counsel to adjust their case strategy.
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It is well understood that the cost of design patent litigation is increasing dramatically in light of recent rulings at the SCOTUS and FC levels. Therefore, we are experiencing an increasing desire on the part of clients and their respective litigation firms to seek our advice and counsel during product development for the specific purpose of identifying product design solutions that may in fact infringe other protected products. To this end, we offer clients and their inside and outside counsel expert design impact analysis and design change documentation.
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Below are brief summaries of the backgrounds and expertise of our intellectual property expert witnesses. If you would like to request a full CV or contact our firm, please click here.
Over the past 40+ years, Mr. Mauro has served as an expert for leading companies on over 75 major IP cases covering design patents, trade dress, copyright and utility patents related to GUI & product design.
Formal Education: BS in Industrial Design /Art Center College of Design (with Distinction). Masters Degree in Ergonomics New York University (NIOSH Research Fellow). Certified Human Factors Engineering Professional. Chair IDSA Design Protection Section (2010-Present).
Expertise Profile: Professional Ergonomics / human factors engineering (CHFP), product design and development methodology, industrial design, design research, GUI design, usability engineering, usability testing and consumer decision-making. Leading expert in shape perception science, shape perception testing and related methodologies as they apply to the ordinary observer test.
Product Category Experience: Experience in dozens of major product categories including: consumer products, consumer electronics, home appliances, hand-held products, medical products, commercial products, military systems, high-technology products, financial service products, virtual worlds and web site/online delivery of information and e-com.
Legal Expert Witness Experience: Consulting / testifying expert in over 75 major cases working for world-class law firms and corporate clients covering intellectual property issues. Specific experience in utility patents, design patents, trade dress, copyright and trademark issues related to product design, GUI software design and development.
Trial and Research Experience: Represented major corporate clients at trial and before the ITC including: Apple, Nike, Dyson, LG, Microsoft. Prepared responses to USPTO Office Actions and have extensive experience in other demanding venues and circuits.
Relevant Presentations and Publications: Participated as primary planning representative for IDSA with respect to USPTO Design Day. Presented at Design Day on several occasions. Also delivered major speeches at leading law schools including Stanford, Fordham, UPenn covering design patents. Invited speaker UC Berkeley Law School Seminar for Federal Judges spoke on design patent trial procedures and expert testimony to large group of Federal Circuit Judges. Mr. Mauro is primary coordinating author on several amicus briefs including SCOTUS brief in Apple v. Samsung.
Support Staff: Mr. Mauro has an experienced research support staff that can assist in complex product research, simulation creation, field studies and related expertise as required in supporting complex opinions and case presentations. Mr. Mauro also retains an extensive network of allied professionals who can be called upon for special research and support.
Over the past 40+ years, Mr. Mauro has been retained by leading law firms and corporations as an expert resource on Ergonomics / Human Factors Engineering (CHFP), product design and development, industrial design, usability engineering, usability testing and consumer decision making.
Mr. Mauro holds a BS in Industrial Design and a Masters Degree in Ergonomics and Human Factors Engineering. His educational background and experience in product design provides clients with an unusually comprehensive ability to deal with complex utility patent, design patent and trade dress matters. Mr. Mauro’s approach to development of expert opinions in major cases is based on research principles from the sciences of ergonomics, human factors engineering and decision-making as these disciplines relate to formal legal tests of infringement, validity and obviousness.
In formulating his opinions Mr. Mauro frequently conducts professional research on key issues related to product design and functionality, thus providing an additional level of objectivity to his opinions uncommon for utility patent, design patent and trade dress experts.
Mr. Mauro currently heads the Design Protection Committee for the Industrial Designers Society of America (IDSA) and is active in IP related conferences, meetings and related events. He is the IDSA liaison to the USPTO for Design Day. He also currently manages the IDSA sponsored LinkedIn user group on Design Protection. Mr. Mauro has lectured at the IDSA International Design Conference, USPTO Design Day, Fordham Intellectual Property Law and Policy Conference, Federal Judicial Center and Berkeley Center for Law and Technology Intellectual Property Seminar, MIT Sloan School of Management, Stanford University, University of Pennsylvania and other leading academic institutions.
Most recently, he was the invited keynote speaker at the Human Factors and Ergonomics Society (HFES) International Annual Meeting 2018. He also spoke on a prestigious panel at the Design Patent Symposium, “Design Law 2018”, covering theory and practice applied to testing the impact of visual design on consumer decision making and related research.
For the past 40+ years, Mr. Mauro has been the president of MauroNewMedia, Inc. (“MNM”), a consulting firm in New York, providing product development research and design solutions to leading U.S. and international corporations and government agencies. He has executed research and development programs for many large corporations including AT&T, Apple Computer, Motorola, Hewlett Packard, General Motors, General Electric, and NASA among others. He is named inventor on U.S. and foreign utility and design patents and currently has before the PTO patents on various product categories. He is a Certified Human Factors Engineering Professional and obtained such certification from the Board of Certification in Professional Ergonomics (BCPE). His certification number is 1312.
Mr. Mauro earned a Bachelor of Science Degree in Industrial Design from Art Center College of Design in Los Angeles, having been awarded a full expense scholarship based upon recognized academic excellence. In 1976, he received a Masters Degree in Ergonomics from New York University (NYU). While at NYU, he was a National Institute of Occupational Safety and Health research fellow at the Rusk Institute of Rehabilitation Medicine. Prior to founding his own firm, he was employed by the design firms of Raymond Loewy International and Henry Dreyfuss Associates, where he managed many large-scale design projects for national and international clients.
Upon being nominated and appointed to the first Presidential Design Awards Committee by the Reagan Administration, Mr. Mauro selected projects that qualified for Presidential Design Awards in the category of product design and established the criteria by which designs were selected. He has been chairman of two American National Standards Institute (ANSI) standards committees and has also served on numerous design awards committees, including the Industrial Design Magazine Annual Design Review.
He is a member of numerous professional societies including the Industrial Designers Society of America, the Human Factors and Ergonomics Society and the Usability Professionals Association. He has been quoted in leading business publications including The Wall Street Journal, Business Week, Fortune, Science, Scientific American and other publications. He has appeared on national television as an expert in product design.
Mr. Mauro has received leading awards for product design, user interface design and human factors/ergonomics research. He has received the Alexander C. Williams award from the Human Factors Society for outstanding contributions made to a major operational man-machine system. He has also received awards and citations from NASA and the Association of Computing Machines.
His experience covers both in-depth working knowledge of formal usability science and detailed product design for a broad range of software and hardware applications spanning commercial and consumer applications. Additionally his professional background covers new product development and product design methodologies related to overall product development life-cycle optimization, feature and function definition, consumer testing and human factors engineering. He also has a working knowledge of primary issues related to economic modeling of new product features/functions and their implications for high level market timing.
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Paul Thurman has over 20 years of advisory and management experience helping a variety of Fortune 500 firms realize value from innovative business, operations, and technology strategies. He has held senior positions at Booz Allen Hamilton and American Express and has served public and private sector clients on six continents.
Paul has consulted to several global financial services, healthcare, insurance, retail, and consumer products firms across a number of business disciplines. His consulting work has focused mostly on analytical modeling to support strategic planning and decision-making, corporate cost management, and technology integration. He has also developed solutions around customer segmentation, demand forecasting, and experience mapping as well as surveying methods and models for litigation support in the copyright, trademark, and business interruption claim domains. He currently runs his own management and education consultancy and is a frequent conference presenter.
Highlights of his recent experience include:
Paul currently teaches strategic management and data analysis courses at Columbia’s Mailman School of Public Health. He has taught courses in decision, risk, and operations in the full-time and Executive MBA Programs at the Columbia, London, and University of California, Berkeley business schools, and at Columbia’s School of International and Public Affairs. Paul was also a Healthcare Research Fellow, Professor, and MBA Director at the Moscow School of Management SKOLKOVO in Russia, and he has held professorships in China, India, Brazil, Greece, Saudi Arabia, Chile, Australia, and Iceland. Paul has received numerous teaching and educational leadership awards and is a very popular speaker and presenter at industry and professional conferences around the world.
In addition to his faculty appointments, Paul serves as a clinical professor and affiliated researcher at the National Cancer Institute’s Center for Cancer Research at the National Institutes of Health. His recent peer-reviewed research has focused on scientific collaboration and its effect on research quality, and also on cancer drug patents, FDA approvals, and market pricing. He is the author of MBA Fundamentals Statistics, (Kaplan, 2008; CreateSpace 2016), Pocket Guide to Data Analysis (Kaplan, 2009), and co-author (with Thomas P. Ference) of MBA Fundamentals Strategy (Kaplan, 2009; CreateSpace 2016).
Paul is also lead editor and chapter author, with colleagues from around the world, of Female Immigrant Entrepreneurs, Father-Daughter Succession in Family Businesses, Entrepreneurship and Sustainability, and Leadership and Change Management: A Cross-Cultural Perspective, four research compendia published by Gower (UK) from 2010-2016. In 2013, Paul completed a text for the SAS Institute, Propensity Scoring and Adjustment for Causal Inference, and presently, in addition to leading a USAID-funded efforts to reform public health education in Mozambique, Sierra Leone, and Congo, Paul is working with the World Bank to develop a workshops and instructional materials on data analysis and decision-making in fragile states focused on the country of Sudan. He also expects to publish his 10th book, a text on strategic planning and decision-making (for the SAS Institute), in early 2019.
Finally, Paul has served on the boards of the Greenburgh (New York) Nature Center, the Scarsdale (New York) Teen Center, and currently sits on the advisory boards of a number of entrepreneurial ventures. Paul received his BS in mathematics from Stanford University and his MBA (highest honors) from Columbia. He also completed doctoral work in health policy and management at the State University of New York and earned his Doctor of Business Administration (DBA) degree from Ecole des Ponts Business School in Paris, France.
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Over the past 40+ years Mr. Mauro has executed hundreds of complex usability and user interface optimization projects in the following general categories. The following is a partial list.
• Aerospace vehicles and support equipment
• Agricultural equipment
• Aviation instrumentation
• Banking and securities
• Commercial communications
• Commercial interiors
• Complex text search and databases
• Complex cell phones and PDA
• Computer software for inexperienced users
• Consumer appliances
• Consumer cameras
• Consumer communication devices
• Consumer products and related electronics
• Consumer product packaging
• Control display enhancement
• Corporate communication systems (E-Based)
• Correctional facilities
• Defense and military systems
• Direct mail content analysis
• Energy management systems
• Exhibit design and sales delivery systems
• Executive training systems
• Electronic Kiosks and ATM Machines
• Fast food systems
• Fire safety products
• Games and toys (electronic and traditional)
• Hand-held products
• Hazardous materials packaging
• High technology medical systems
• Home appliances
• Instruction manuals (online and traditional)
• Large volume equities trading systems
• Lighting systems and related products
• Materials handling equipment
• Medical products and systems (numerous categories)
• Office equipment and duplicating devices
• Open office furniture systems
• Packaging, labeling, and warnings
• Personal care products
• Personal computers (software / hardware)
• Process control and power generation (nuclear / fossil fuels)
• Production equipment and processes
• Public spaces and parks
• Recreational equipment
• Retail sales environments (layout v motivations)
• Sales and marketing presentations
• Securities trading systems (specialist firm)
• Securities trading systems (broker)
• Securities trading systems (booth)
• Securities trading systems (trade desk)
• Securities trading systems (hand-held)
• Securities trading systems (reporter devices)
• Signage systems (information delivery)
• Slurry pump design and related work environments
• Systems furniture/training centers
• Small business computers (software / hardware)
• Underwater diving systems
• Wrist mounted devices (complex multi-function products)
• Web-based delivery of products and services (wide range of applications)
• Workstation and workplace optimization
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Over the past 40+ years, Mr. Mauro has been retained by the following law firms as an expert witness or expert technical consultant covering a number of complex IP related cases.
• Allegretti & Witcoff
• Arnold & Porter
• Banner & Witcoff Ltd.
• Amster, Rothstein & Engelberg
• Clausen, Miller et al.
• Cushman, Darby & Cushman
• Davidson & Associates Ltd.
• Debevoise & Plimpton
• Dushman, Friedman & Gray
• Dykema, Gosset, Spencer, Goodnov & Trigg
• Fish & Richardson, LLP
• Foster, Swift et al.
• Gibson, Dunn & Crutcher
• Greenberg Traurig LLP
• Harness, Dickey & Pierce
• Hogan & Hartson
• Jerome Levy & Associates
• Jones Day
• K&L Gates LLP
• Keck, Mahin & Cate
• Kenyon & Kenyon
• Kirkland & Ellis LLP
• Lyon & Lyon
• Lieberman, Levy, Baron & Stone
• McDonnell, Boehnen, Hulbert & Berghoff LLP
• Mayer, Brown & Platt
• Mudge, Rose, Gutherie, Alexander, Ferdon
• Orrick, Herrington & Sutcliffe LLP
• Perkins & Coie LLP
• Perz & McGuire
• Pillsbury, Madison & Sutro LLP
• Pillsbury Winthrop Shaw Pittman LLP
• Plunkett, Cooney
• Polsinelli & Shughart P.C.
• Sidley Austin LLP
• Shook, Hardy & Bacon
• Tory, Tory, DesLauriers & Bennington
• Willkie Farr & Gallagher
• Woodcock, Washburn, Kurtz, Mackiewicz & Norris
• And others
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