Sunday, 27 July 2014

Expert can be "too clever" and still do his job

Rovi Solutions Corporation & Another v Virgin Media Ltd & Others [2014] EWHC 2301 (Pat) is a decision of John Baldwin QC (sitting as a Deputy Judge of the Patents Court, England and Wales) earlier this month. The subject of the judgment, in the fourth of a series of actions in which Rovi was suing Virgin, was the validity of a patent belonging to Rovi.  This blogpost is just focusing on one element of the judgment: the court's assessment of the role of the expert witness:

The judge said, at [14] to [16]:
"14. The expert witness instructed by Virgin was Mr Kerr. He was a business/IT consultant with extensive experience in the telecommunications, multimedia and TV areas up to 2001 and, subsequently, in more general communications and IT systems. His experience and expertise in the interactive TV/VOD arena spanned 19 years from 1981 to 2000. During this time he covered system-level architectures, designs and performance.

15. Mr Kerr was a very impressive and knowledgeable witness who was able to explain concepts clearly and succinctly. I found him very helpful.

16. Mr Abrahams, counsel for Rovi, had two main criticisms. The first was that Mr Kerr was much too clever and imaginative to be able to give an opinion upon what the skilled addressee might learn from a document or what the skilled addressee might do in consequence of any teaching in a document. But, as Jacob LJ explained in Technip France SA's Patent [2004] RPC 46 at [11] – [15], it does not really matter whether or not the expert approximates to the skilled team, what matters is how good he is at explaining things and what are the reasons for his opinion".
It's good to be reminded that being too clever needn't be a bar to discharging one's duties as an expert witness though, presumably, when it comes to issues of inventive step, some expert witnesses will be valuable to a party defending the validity of its patent if they're neither that clever or that imaginative.

This blogger is sad that the judge's quote began at [11], when [10] is the bit that contains one of Jacob LJ's most memorable lines. Speaking of the person skilled in the arts:
"The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned".

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