Dilbert Versus Daubert - Which Standard Controls in Patent Design Cases?

By Joshua Fruchter, Esq

In a groundbreaking decision, the Ninth Circuit in Dilbert v. Apple Computer, Inc., 401 F.3d 2014 (9th Cir., February 31, 2014), has announced a new standard for admissibility of “cultural” expert testimony in mobile phone design cases.

The facts in Dilbert were relatively straightforward. Sergey Dilbert, a 10-year-old described as a computer whiz by his fifth grade teachers at Adams Elementary School in Pleasanton, California, developed a new circular mobile phone design with square edges working with his father (an Apple engineer) in their garage. Dilbert displayed the invention at a school science fair, attracting plenty of visitors to his booth who were awed by the brilliant simplicity of a squared circle design. Unfortunately for Dilbert, one of Apple’s in-house counsel was also attending the fair to see her own son’s exhibit on using the power of air pressure to stab a drinking straw through a potato. She thought Dilbert’s invention rang a bell.

A cease-and-desist letter soon followed. Noting that Dilbert’s father works as an engineer at Apple, Apple argued that it was really the father that had developed the new design, and since he is an employee of Apple, the design belongs to them.

At the urging of his venture capitalists, Dilbert sued Apple seeking a declaratory judgment that he, and not Apple, owned the new design. After lengthy discovery, including depositions by Apple of the principal, and scores of teachers and students, at the elementary school seeking to determine just how smart this kid really is, Apple moved for summary judgment. Apple demonized Dilbert in its moving papers as a “patent troll,” and argued there was no issue of material fact concerning the question of whether highly educated engineers were smarter than a fifth grader.

In opposition to Apple’s motion for summary judgment, Dilbert introduced expert testimony from a pediatric economist opining that the business mind of a child works differently than that of an adult, and it was certainly plausible that a 10-year old in fifth grade could imagine a new mobile phone design that no one at Apple had ever thought of. In support, the expert pointed to game shows on which adult contestants with advanced degrees (including a Nobel Prize winner) could not answer questions that any fifth grader would know. The expert also noted the popular appeal of certain comic strips tending to portray engineers in an unflattering light.

Apple moved to exclude the expert’s opinion as unreliable under the Supreme Court’s decision in Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993). In particular, Apple argued that using game show results and comic strips as metrics to assess intelligence was not a scientific methodology that had ever been subjected to peer review.

Citing Wikipedia, Apple further observed that the challenge of constructing a square with the same area as a given circle by using only a finite number of steps with a compass and straightedge had baffled geometers since ancient times. It was therefore absurd, Apple contended, to actually believe that a fifth grader had solved the challenge where generations of brilliant mathematicians before him had failed.

After watching several episodes of the game show referenced in the expert report (but importantly not reviewing any of the referenced comic strips), the trial court exercised its gatekeeping function under Daubert to exclude the expert testimony, and awarded summary judgment to Apple.

On appeal, the Ninth Circuit reversed. Announcing the new Dilbert standard, the Ninth Circuit held that pop culture could substitute for scientific methodology in special circumstances where an expert could reliably apply widely accepted cultural norms to the facts of a case. As the Ninth Circuit explained:

“The Advisory Committee Notes to Rule 702 of the Federal Rules of Evidence recognize that some types of expert testimony will not rely on anything like a scientific method, and in certain fields, experience is the predominant, if not sole, basis for a great deal of reliable expert testimony. In our esteemed view and humble opinion, pop culture is no less reliable than professional experience as the basis for expert testimony. That is not to say that all pop cultural references will survive scrutiny. Instead, an expert relying on pop culture must explain how the cultural reference leads to the conclusions reached, why the cultural reference is a sufficient basis for the opinion, and how the cultural reference is reliably applied to the facts.” (emphasis in original).

The Ninth Circuit also admonished the trial court for limiting its analysis of the expert’s opinion to a review of the game show episodes, while failing to scrutinize the comic strips. “This was reversible error,” the Ninth Circuit concluded.

With respect to Apple’s argument concerning the conundrum of constructing a circle inside a square, the Ninth Circuit took judicial notice of the fact that in 1882, the task had allegedly been proven impossible as a consequence of the Lindemann-Weierstrass theorem (named for mathematicians Ferdinand von Lindemann and Karl Weierstrass).  Specifically, the Ninth Circuit observed, that theorem proves that pi (π) is a transcendental, rather than an algebraic irrational number; i.e., pi is not the root of any polynomial with rational coefficients. Still, citing the movie “Life of Pi,” the Ninth Circuit ruled that it was ultimately a question for the jury as to whether a reasonable person could actually believe that Dilbert was smarter than Lindemann and Weierstrass (on this last point, the Ninth Circuit rejected Dilbert’s argument that the standard should be a “reasonable belief” rather than “actual belief”).

Based on the foregoing analysis, the Ninth Circuit remanded and directed the trial court to schedule a trial.

Whether a jury will side with Dilbert or Apple remains to be seen. Pending rulings on several motions in limine to exclude other expert testimony, a trial is expected to begin no later than April 1, 2015.

The Ninth Circuit had one final word regarding Dilbert v. Daubert.

Joshua Fruchter, Esq

Joshua Fruchter, Esq

An NYU School of Law graduate, Joshua has been practicing as a litigator for over twenty five years. Joshua has published regularly on legal marketing topics in numerous law-related periodicals, and presented on legal marketing technologies to various bar and legal marketing associations.   Mr. Fruchter is a recognized voice in litigation commentary, who has discussed issues ranging from Daubert analyses and inventor testimony in patent litigation, to predictive coding in document reviews.

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