PCC Page 35: rowing against the tide of expert enthusiasm

Extravagantly elucidated 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 35th, former CIPA President Alasdair Poore continues with a warning about the deployment of expert witnesses who are too enthusiastically partisan.

"Cautious’s patent attorney has located an enthusiastic expert, who is willing to give evidence in the PCC and who is a;sp available at the right time.  The expert has already prepared an initial draft of his evidence and has sent it to Cautious's patent attorney.  He has added some comments in his covering letter:

“Thank you for instructing me on this matter.  I am really keen to support Cautious.  Although I do not know them personally, I have watched their progress and I think they are a fantastic company.  Looking at IPOff’s web site, they are not of the same calibre at all.  Their product just looks like a copy of Cautious's ideas, and they are just ripping Cautious off, and I have made that clear in my report.  As you know I have some of my own patents in this field – I don’t want to mention them because you said I was to be a non-inventive expert – and my view is that Cautious has really beaten the field here.

You referred me, in your instructions, to a couple of pieces of material from quite an old text book.  I thought it better not to mention them, or what you told me in my summary of instructions.  I think that the book is pretty old, and is a potential diversion – better not to give the other side something to get their teeth into.

I also did a little background work.  I did a retrospective analysis of football results using one of the algorithms mentioned in the patent.  Couldn’t seem to get it to work.  Won’t mention that either, but I would be interested to talk to Cautious to see if I have got something wrong.”

Last week (PCC34) set out some of the principles for instructing an expert.  The practice in intellectual property cases is littered with traps.  Mr Justice Arnold explains some of the problems well in Medimmune Limited v Novartis Pharmaceuticals UK Limited and Medical Research Council [2011] EWHC 1669 Pat Ct reported a month ago, starting at para 99.  At para 114 he says: “The law reports are littered with cases, including some patent cases, in which judges have criticised expert witnesses for failing to be objective or in other ways.”  Cautious's patent attorney needs to be careful not to head the same way.

Fortunately, some mending can be done to the approach taken by the expert.  First of all it is worth saying (again) that the Protocol for the Instruction of Experts to Give Evidence in Civil Claims, referred to last week, gives some excellent guidance on how to instruct an expert.  But reading a few cases gives more of a flavour of what can go wrong – especially as, as Arnold J says: “Expert witnesses in patent litigation stand in a rather unusual position” (para 109).  He explains:

“They are generally leading scientists or engineers in the field in question. Frequently they are academics. Sometimes they are consultants. In most cases, they will not have given expert evidence in patent litigation before, although there are exceptions to this. Not only that, but also they will generally have little experience of the patent system. Where do they have experience, it will generally be as inventors named on patents. As such, they may have had scientific input, but generally they will have learnt little about patent law in the process. In some fields, they may also be accustomed to using patents and patent applications as sources of technical information, but again without necessarily understanding much about patents themselves. When asked to prepare an expert report in a patent case, they will have to consider such questions as the identity and attributes of the person skilled in the art to whom the patent is addressed, the common general knowledge of the skilled person and whether something would or would not be obvious to that person in the light of particular prior art given the constraints imposed by the law of obviousness. Usually, this is not a task of which they will have any previous experience.”

He continues, explaining that the legal advisors will, almost inevitably, be heavily involved in preparing the expert report, and the report may even be drafted by the lawyer – looks like a departure from the injunction that a witness statement should be in the witnesses own words.  Of course that is precisely what the lawyer has to be careful to avoid:

“For these reasons expert witnesses in patent actions require a high level of instruction by the lawyers. Furthermore, even if they are experienced authors, they need considerable assistance from the lawyers in drafting their report. In practice, most expert reports in patent cases are drafted by the lawyers on the basis of what the expert has told them and the draft is then amended by the expert. This, of course, requires the lawyers to understand what the expert is saying. It follows that the drafting of an expert's report in a patent action involves a steep learning curve for both the expert and the lawyers. The lawyers are learning the technology and the expert is learning enough of the law to understand the questions he must address. It follows that a high degree of consultation between the expert and the lawyers is required. Frequently, the preparation of the report will involve an iterative process through a number of drafts.” (para 110).

It is the lawyer's job to make sure that an expert is not just told of his primary duty to the Court, and says that his report reflects that duty, but that the expert actually embodies that principle in the evidence given: 

“I wish to emphasise that the lawyers who instruct expert witnesses bear a heavy responsibility for ensuring that an expert witness is not put in a position where he can be made to appear to have failed in his duty to the court even though he conscientiously believes that he has complied with that duty.” (Arnold J, ibid, para 114).  

Indeed perhaps a failure to do that will not just undermine a case but (if it amounts to inappropriate pressure) amount to a contempt of court (see Glaxo Group Ltd’s Patent [2004] EWHC 477 (Ch)).

So what is wrong with Cautious's expert’s approach so far.  Some annotations may shed some light:

“Thank you for instructing me on this matter.  I am really keen to support Cautious. [CPR35.3 makes clear that the overriding duty of the expert is to help the Court, and this overrides any duty to the party paying their bill.  PD35 2.2 provides “Experts should assist the court by providing objective, unbiased opinions on matters within their expertise, and should not assume the role of an advocate.”  The expert’s comments savour of both losing objectivity and being an advocate for Cautious – both are wrong and likely to undermine the expert’s credibility] Although I do not know them personally, I have watched their progress and I think they are a fantastic company.  Looking at IPOff’s web site, they are not of the same calibre at all.  Their product just looks like a copy of Cautious ideas, and they are just ripping Cautious off, and I have made that clear in my report. [In addition to PD35 2.2 making clear that an expert should not be an advocate for the party paying his bills, para 4.4 of the Protocol makes clear that an expert should confine themselves to issues which are material to the dispute – and in any event the report should only cover those issues on which the expert has been permitted to give evidence: copying is not one of them] As you know I have some of my own patents in this field – I don’t want to mention them because you said I was to be a non-inventive expert – and my view is that Cautious has really beaten the field here. [The expert should mention all matters which are material to their evidence (As PD35 2.3 makes clear “Experts should consider all material facts, including those which might detract from their opinions.” Even though in this case it might not detract).  Their own contribution to patents in the field may well be relevant, and even if not identified as part of the instructions, should be considered as to whether they are material – see for example Medimmune, para 134]

You referred me, in your instructions, to a couple of pieces of material from quite an old text book.  I thought it better not to mention them, [One cannot emphasise PD35 2.2 enough: “Experts should consider all material facts, including those which might detract from their opinions.”] or what you told me in my summary of instructions. [Even more dangerous ground here.  CPR35.10(3) provides: “The expert’s report must state the substance of all material instructions, whether written or oral, on the basis of which the report was written”, and PD35 3.2 provides: “An expert's report must … contain a statement setting out the substance of all facts and instructions which are material to the opinions expressed in the report or upon which those opinions are based”.  This is reinforced by CPR 35.10(4) which follows: “The instructions referred to in paragraph (3) shall not be privileged against disclosure but the court will not, in relation to those instructions (a) order disclosure of any specific document; or (b) permit any questioning in court, other than by the party who instructed the expert, unless it is satisfied that there are reasonable grounds to consider the statement of instructions given under paragraph (3) to be inaccurate or incomplete.”  The failure to disclose material instructions would open up disclosure of all the instructions.  Not a happy thought, especially given this covering note – and particularly the following paragraph in the experts covering letter, for which Cautious will have to work on a solution!]  I think that the book is pretty old, and is a potential diversion – better not to give the other side something to get their teeth into.

I also did a little background work.  I did a retrospective analysis of football results using one of the algorithms mentioned in the patent.  Couldn’t seem to get it to work. [Oh, no …. !]  Won’t mention that either, but I would be interested to talk to cautious to see if I have got something wrong.”

The good news is that, although instructions to an expert are not privileged, draft reports by the expert are privileged (subject to CPR35.10(4) – see Jackson v Marley Davenport [2004] EWCA Civ 1225.  So Cautious's patent attorney has not lost all, but there is some work to be done here".