On the Role of Scientific Advisers: Transparency and Expectations

PatLit is pleased to have received a guest post by Chartered and European patent attorney Kirwin Lee. Kirwin discusses a very interesting character in the UK patent litigation: The "Scientific Adviser", who is a sort of private teacher which may be hired by the Judge and not to be confused with court-appointed experts. Here are Kirwin's thoughts on this issue:

Although English courts have had the power to call in the aid of scientific advisers (or “assessors”) since 1883, most of our readers are probably aware that this power is scarcely exploited. The disinclination of judges to call upon expert assistance at trial may be due to the technical rating system operated by English patent courts - where cases are categorised by technical complexity before trial so as to ensure that they are allocated appropriately to judges. An inadvertent result of this is that when the court does decide to appoint a scientific adviser in a case, you are almost certainly guaranteed the decision would be an interesting read.

Recently Mr Justice Birss handed down the decision in the case Electromagnetic Geoservices ASA v Petroleum Services and Ors [2016] EWHC 881 (Pat). The trial lasted for 11 days in the Patents Court, which was considered lengthy for one patent. However, as the proceedings were settled shortly before judgement, the decision was relatively brief (only two pages long) and included mainly Birss J’s deliberation on the advantages of appointing a court scientific adviser.

To provide a bit of background, the case concerned a dispute relating to the complex technology of marine CSEM (Controlled Source Electromagnetic) and was rated Category 5, i.e. most technically complex. Although Birss J himself has a technical background and is a Category 4/5 patent judge, it was ordered in an earlier interim decision ([2016] EWHC 27 (Pat)) that a neutral scientific adviser was to be appointed following a proposal by the defendant PGS.

Birss J indicated that the private teach-in session with the appointed expert Dr. Karen Weitemeyer, in which he was able to ask candid questions in the absence of the parties, allowed the speeches and cross-examination to proceed more briskly than would have been otherwise. This significantly improved the Court’s comprehension of the key issues and therefore saved time and cost. Birss J also explained that such “further step” was useful and proportionate in facilitating the understanding of the Court of not only the experts’ opinions but also the material on which those opinions are based and the reasons for them. As also noted in the decision, “what matters is not the opinions the experts' express as to the conclusions to be reached but the reasons they give for them”.

It is worth noting that the claimant/patentee EMGS had previously argued against the appointment of a scientific adviser on the grounds that the case was within the ability of Category 4/5 judge. EMGS also had concerns that a lack of transparency of the information being received by the Court would lead to the inability of the parties to challenge or address any views imparted to the judge by the appointed expert. Perhaps in a bid to address these concerns, the Court decided to settle in advance the set of instructions provided to the expert, the instructions explaining the identified topics to be covered. In addition, written materials of the teach-in were provided to the parties afterwards, such that they could comment on the materials at trial.

The particular problem relating to the perceived lack of transparency and the potential influence of an adviser on judges’ views was recognised in Halliburton v Smith [2006] EWCA Civ 1599. The appointed expert of the case Professor David Limebeer sent an e-mail message to the members of the Court in attempt “to highlight the key engineering issues in dispute and to propose a possible way forward”. This e-mail prompted the appellent Halliburton to seek removal of the professor as the scientific adviser, on the account that he had allegedly expressed opinions which were not within the remit of his role in the case.

The Court of Appeal disagreed and refused to revoke the appointment. In the judgment by Lord Justice Chadwick it was pointed out that it would be inevitable that there will be matters in complex technical fields upon which it will be impossible for a skilled and experienced scientific adviser to avoid expressing an opinion. The need for fairness was discussed comprehensively in the decision, where Chadwick LJ commented that the fairness requirement was met since the opinions expressed in the professor’s email was disclosed and the parties were given the opportunity to comment as they see fit. Lord Justice Chadwick also clarified the role of a scientific adviser: “to help us understand that evidence, to help us consider whether the judge fully understood that evidence, and to help us evaluate the conclusions which the judge reached on that evidence”.

The two cases discussed above highlight a number of issues worth bearing in mind when dealing with cases where scientific advisers are appointed. The court appears to be fairly flexible on what an appointed scientific adviser is allowed to contribute to the case, as long as the parties are given the chance to comment on such contribution at trial. The uncertainty of what and how educational materials is presented to the judges and the inability to vet the material may induce anxiety for the litigants. Nevertheless, in some instances this may be alleviated when the Court appoints a technically qualified person from the UKIPO, as they are often seen as being more impartial than lay advisers who do not possess any prior legal training. This was the case in PCME v Goyen [1999] FSR 801 and Qualcomm v Nokia [2008] EWHC 329 (Pat).

As a further interesting note, even though scientific advisers are rarely utilised in UK patent litigation, it may be prudent for IP law practitioners to become accustomed to dealing with technical experts during litigation, as the Unified Patent Court (UPC) rules provides for a technical judge to be included in the panel upon the request of a party or a panel.