IP Expert Witness Services: Design, Utility, Trade Dress & Copyright For Leading Corporations and Law Firms

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.

Charles L. Mauro CHFP

Summary of Expertise

Over the past 50+ years, Mr. Mauro has served as an expert for leading companies in 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.

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.

GUI Design and GUI Patent Litigation Experience: More than 50 year of experience with human computer interaction design, research, user testing and product development. Primary inventor of numerous industry standard GUI solutions utilized on a global basis. Experience ranges across entire modern history of standard workstation/desktop applications and extensive experience with GUI design and user testing for mobile applications and mobile device GUI design. Invited lectures at USPTO, MIT, Stanford, UPenn and other leading institutions focused on GUI innovation, design, patents and IP litigation. Served as expert witness in major GUI cases involving both desktop and mobile GUI design subject matter. Extensive experience in human factors research related to GUI design and assessment. Represented leading clients in IPR proceedings related to GUI innovation.

Branding Experience: Extensive experience in the relationship between brand formation and product design as it relates to corporate brand identity. Working knowledge of the primary issues related to the economic modeling of new product features/functions and their implications for high level market timing and market acceptance by consumers. Experience with developing complex product branding strategies using visual product design vocabulary and shape grammar systems, as well as executing consumer research to validate brand attribute conveyance as a function of product design configurations in the marketplace. Used validated visual design brand attribute testing and consumer ratings systems to assess the visual design of products in competitive market settings. Designed and managed product design branding and brand attribute research for leading corporations and served as an expert resource for brand development strategy based on visual product design optimization. Examined the impact of product naming vs. product design on purchase-decision impact and brand development for high-technology personal-electronic products. Worked as a key member of large corporate brand development teams and executive committees.

Survey Experience: Accepted in court as a survey expert. The Empirical Ordinary Observer Test (EOOT) design patent survey methodology developed by my firm has been accepted in court.

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. He has 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.

Background Overview

Over the past 50+ 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.

Detailed Background and Qualifications

For the past 50+ years, Mr. Mauro has been the president of MauroUsabilityScience, Inc. (“MUS”), 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. Most recently he was selected by the Human Factors and Ergonomics Society as a “Titan of Industry” for HF Research. He has received the IDSA Lifetime Personal Contribution Award. 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 W. Thurman DBA, MS.

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:

• Supported forensic accounting and litigation efforts related to business interruptions claims related to September 11th events, Hurricanes Maria and Sandy, and other natural disasters
• Advised firms related to trade dress and copyright claims using advanced statistical surveying and modeling techniques (in Federal court)
• Redesigned National and Strategic Growth Account team structures and processes for a global consumer electronics firms and multi-line insurance conglomerates. Developed metrics and measurements to improve performance, and created incentives by tying job performance to specific financial and operational goals
• Conducted survey and in-market tests of new consumer experiences (in-store merchandising, product placements, and sales associate interactions) for major luxury retailers and technology manufacturers inside and outside the US
• Facilitated clinical and management improvements for several leading US healthcare systems, payers, and provider systems
• Consulted to several global, US, and state governments and government agencies with respect to healthcare policy, innovation efforts, “governpreneurship,” and drug development and testing

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 50+ 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
• Ceiling fans
• Child/infant carriers and support systems
• Child/infant products and toys
• 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
• Vaporizers
• 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 50+ 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
• Akerman
• Amster, Rothstein & Engelberg
• Arnold & Porter
• Banner & Witcoff Ltd.
• Bryan Cave Leighton Paisner LLP
• Clausen, Miller et al.
• Cole Schotz PC
• Cushman, Darby & Cushman
• Davidson & Associates Ltd.
• Debevoise & Plimpton
• Dunlap Bennett & Ludwig
• Dushman, Friedman & Gray
• Dykema, Gosset, Spencer, Goodnov & Trigg
• Fish & Richardson, LLP
• Foster, Swift et al.
• Fox Rothschild LLP
• Gibson, Dunn & Crutcher
• Greenberg Traurig LLP
• Harness, Dickey & Pierce
• Hogan & Hartson
• Irwin IP
• Jerome Levy & Associates
• Jones Day
• K&L Gates LLP
• Keck, Mahin & Cate
• Kenyon & Kenyon
• Kirkland & Ellis LLP
• Latham & Watkins
• Lyon & Lyon
• Lieberman, Levy, Baron & Stone
• Mayer Brown
• McDermott & Will
• 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.
• Saul Ewing Anrstein & Lehr LLP
• Sidley Austin LLP
• Shook, Hardy & Bacon
• Tory, Tory, DesLauriers & Bennington
• Willkie Farr & Gallagher
• WilmerHale
• Witten LTD
• Whitaker Chalk Swindle & Schwartz
• Wolf, Greenfield Sacks, P.C.
• Woodcock, Washburn, Kurtz, Mackiewicz & Norris
• And others
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SSRN Publications

We have published papers on SSRN covering development and validation of our empirical ordinary observer test (EOOT) for design patent infringement, the future of design patent protections, validation of our neuroscience human factors and ergonomic assessment methodologies for measuring impact of seating system design on video gameplay performance, as well as analyses of the appropriateness of FDA human factors and usability testing guidance for producing medical products that are safe and effective for intended users once in the marketplace. Below is a partial list of our key papers on SSRN. Click the paper title to access the full paper on SSRN.

• Development and Validation of an Empirical Ordinary Observer Test for Design Patent Infringement 
• Why the Future of Design Patent Protections Will Rely on Modern Neuroscience, Not Constitutional and Legal Reversionism
• Development and Validation of Neuroscience-Based Human Factors and Ergonomic Assessment Methodologies for Measurement of the Impact of Seating System Design on Video Gameplay Performance
• A Critical Analysis of FDA Guidance for User Percentile Device Design Criteria Versus Currently Available Human Factors Engineering Data Sources and Industry Best Practices
• Analyzing Current FDA Human Factors IFU Guidance Through the Lens of a Rapidly Changing Medical Drug Delivery Device Landscape

Legal Journals and Textbooks

We have also published in legal journals and textbooks on topics related to the future of design patent protections and modern neuroscience and its impact on design law. Below is a partial list of our legal journal and textbook publications. Click the title to access the publication.

• Berkeley Technology Law Journal – Why the Future of Design Patent Protections Will Rely on Modern Neuroscience, Not Constitutional and Legal Reversionism
• Research Handbook on Design Law Legal Textbook – Chapter 16: How Different is Different? Modern Neuroscience and Its Impact on Design Law

Seminars/Webinars

We are often asked to present seminars/webinars on current complex intellectual property issues and our litigation research services. Below is a partial list of seminars/webinars we have presented in the recent past. Seminars/webinars that are available for viewing on YouTube are hyperlinked below.

• APA-IPL Fall Institute 2022 – How the Neuroscience of the Metaverse Impacts Design Patent Infringement and IP Protection Strategy
• Strafford CLE Design Patent Litigation Webinar 2022- Design Patent Litigation: Increasing the Probability of Success in Infringement Outcomes Utilizing Science-Based Empirical Ordinary Observer Testing Methods
• ABA-IPL Design Rights Committee 2021 – 40 Years and Counting as a Design Patent Expert Witness
• ABA-IPL Design Rights Committee 2021 – Can Modern Neuroscience Build a Better Ordinary Observer Test and Improve Litigation Outcomes
• Protecting Designs Now and In the Future – IPO Association 2020 Annual Meeting Presentation
• IDSA Voices Series 2020 – The Good, The Bad, and The Ugly: How Recent Design Patent Cases will Impact Design Protection and New Research

Television Appearances

We have appeared on television in interviews discussing current technology trends and issues. Below is a partial list of our television appearances. Click the title to access a video of the appearance.

• Bloomberg TV – Charles L. Mauro Insights on Candy Crush Upon IPO

Awards

A list of our awards can be found HERE.