PCC Page 34: After the case management conference, choosing an expert witness

Expert witnesses: it's not enough
to be wise ...

Eloquently explicated by the Chartered Institute of Patent Attorneys (CIPA), the PCC Pages seek to explain how litigation works in the recently-revamped Patents County Court (PCC) for England and Wales, taking as its theme a dispute between Cautious Co and IPOff Ltd as to whether IPOff has infringed the IP rights of Cautious in its robotic octopus. In this episode, the 34th, former CIPA President Alasdair Poore deals with a time-consuming an tricky chore where it is necessary -- selecting the right expert witness:

"Cautious's patent attorney is recovering from the attorney’s first case management conference – not an ordeal really.  Now there is work to be done.  Cautious successfully opposed IPOff’s application to use an expert in relation to Cautious’s claim for unregistered design right infringement.  The judge came to the conclusion that, bearing in mind IPOff’s statement of case, there was not really any likely to benefit to be served in having an expert.  [CPR 35 makes general provisions in relation to expert evidence.  CPR 35.4(1) provides that expert evidence will only be admitted with leave of the court, CPR 35.1 specifically provides that expert evidence should be restricted to what is required to resolve the proceedings, and CPR 35.5(1) provides that expert evidence should be given in the form of a report unless directed otherwise.  In addition, PD63 29.2 (as readers will now know by heart) provides that, for the court to make an order in relation (among other things) to expert reports, it must be satisfied that the benefit of the further material in terms of its value in resolving those issues appears likely to justify the cost of producing and dealing with it].

The other limb of Cautious’s claim is that IPOff has infringed its patent.  The IPOff Robot Octopus uses a method implemented by the software for football result prediction which infringes Cautious’s patent.  Devices, like the Robot Octopus, are also covered by the patent.  The basis of Cautious patent is to extract information from the social media in order to determine the public’s perception of whether a team is likely to win and whether conditions, such as the weather or reports in the press of their leading players off-pitch activities, are likely to affect the team’s performance.  Cautious has found that much better predictions can be made than relying on the sports “experts”.  This is stepping perilously close to excluded subject matter perhaps, but Cautious is confident that the combination with a toy indicator such as an octopus is still completely new and inventive.

Cautious’s patent attorney argued, that in a case as simple as this one, an expert should not be required.  Despite his persuasive arguments, the judge nevertheless ordered that the parties exchange expert reports from a single expert. Among other specific areas, the reports should cover common general knowledge, in particular bearing in mind the paucity of published literature in fields such as this.  The parties should seek to agree as much as possible of what was common general knowledge in advance, and to provide an agreed summary of the background technology (see the draft CMC order appended to the PCC Guide, page 25)

Now Cautious's patent attorney, rather late in the day, must go about selecting a suitable expert.  This illustrates one of the potential hazards in the PCC.  Identification and selection of an expert can be a very time-consuming process (before one even starts to obtain their evidence).  Unlike other areas of law, experts in patent cases are often uniquely selected for a particular issue.  A search for a suitable expert can be expensive, difficult and time-consuming. Not surprisingly Cautious's patent attorney was reluctant to incur such additional costs before confirming that an expert is necessary.  Now there is some time pressure. 

When selecting an expert, Cautious’s patent attorney needs to think about a number of issues.   The expert’s:

• experience in the field;
• professional credibility;
• independence;
• impartiality;
• confidence;
• reliability;
• approachability;
• past experience;
• good drafting skills;
• good oral presentation

 (List adopted from Practical Law (http://uk.practicallaw.com). 

This may be a counsel of perfection.  No expert Cautious’s attorney has encountered before in the patent field had all these qualities!  But they are a good checklist. In addition, Cautious needs to check on availability, conflicts, and terms of engagement for the expert – and that the expert is willing to turn up in court and give evidence.

A further factor which Cautious's patent attorney needs to bear in mind is that the expert is under a duty to assist the Court, and this overrides their duty to their client (CPR 35.3).  This is an aspect of impartiality, but it is often difficult for an expert instructed by one party not to push that party’s case, or for the advisor not to push his party’s case on to the expert.  The duties of an expert are set out in the leading case, the "Ikarian Reefer" [1993] FSR 563 (more on which later) and the guidance given in PD35, especially at PD35 2.1 and the Protocol on Instructing Experts.

Just how damaging is this?  Well take a look at a couple of cases:

In Cala Homes (South) Ltd and others v Alfred McAlpine Homes East Ltd [1995] EWHC 7 (Ch) – a copyright case – Mr Justice Laddie took exception to the expert’s approach to giving expert evidence.  The expert, who was eminent in his field, had written an article entitled 

“The Expert Witness: Partisan with a Conscience” (not a good start), including a description of the court process as “mak[ing] no pretence of determining the truth”, and an argument that “If by an analogous 'sleight of mind' an expert witness is able so to present the data that they seem to suggest an interpretation favourable to the side instructing him, that is, it seems to me, within the rules of our particular game, even if it means playing down or omitting some material consideration.”

The judge’s conclusion: “Most witnesses would not be prepared to admit at the beginning of cross examination, … that he was approaching the drafting of his report as a partisan hired gun. The result is that the expert's report and then his oral evidence will be contaminated by this attempted sleight of mind. This deprives the evidence of much of its value. I would like to think that in most cases cross-examination exposes the bias. Where there is no cross-examination, the court is clearly at much greater risk of being mislead.”

One lesson here (in addition to true impartiality) is to make sure you know what your expert has written – even if it is not as critical as this about the process of giving expert evidence, it could be inconsistent with his actual testimony.

A more recent patent case, SmithKline Beecham plc v Apotex Europe Ltd [2003] EWHC 2939 (Ch), also illustrates the potential traps.  Mr Justice Pumphrey, at paragraph 8 set out some criticism:

“[The expert’s] report stated that

            'I am currently an independent consultant, my area of expertise being the chemistry of pharmaceutical compounds.'

[He] turned out to consult only for the claimants' lawyers, and only in respect of paroxetine. I think that he was loyal to SKB, and I have little doubt that he was not willing to be entirely dispassionate between SKB and Apotex. This is a serious fault in an expert witness.”

One clearly cannot be too careful about making sure that one knows ones expert".