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".

Experts and scientific advisors: their role in EU patent litigation

PatLit received a most excited email from Professor Sir Robin Jacob (IBIL), drawing our attention to an original and unusual  conference. Is this the first time that an event on this subject has been put on?  Here are some details:

The Role of Experts & Scientific Advisors in Patent Litigation in the EU

UCL Institute of Brand and Innovation Law (IBIL)

Tuesday, June 11, 2013 from 8:45 AM to 6:00 PM (BST)

London, United Kingdom

The advent of the European Unitary Patent and Unitary Patent Court raises acute questions as to how the court is to receive, use and particularly evaluate expert evidence. It will involve something of an amalgam of UK and continental procedure.

This conference will bring together lawyers with patent expertise from a variety of continental jurisdictions to describe the system in their domestic jurisdiction (USA, The Netherlands, Germany, UK, Spain, France, Sweden, Denmark, Switzerland and Italy). It also does something for the first time - bringing technical experts who have given evidence in UK courts to discuss the advantages and disadvantages of the UK system. The event also includes judicial input from the Court of Appeals for the Federal Circuit of the USA, UK, Germany and Holland 

Of significance in very high tech cases in recent years has been the use by the court of scientific advisors. Two experts who have done this job will talk about their experience - again a matter of great interest generally and perhaps of particular application in the new court. 

This conference is accredited by the SRA and the Bar Standards Board with 6.5 CPD hours. It also constitutes relevant CPD for IPReg. 

For further details and registration, click here.

Boot camps: do expert witnesses need them?

I've just been reading an advertisement for a Patent Expert Witness Boot Camp presented by Patent Calls (details here). The very concept, and its presentation, signify instantly that it's a US initiative.  The rubric reads as follows:

"Patent Litigation is often compared to war, and you wouldn't go to war without first going to Boot Camp, would you?

Patent Calls' Patent Expert Witness Boot Camp is intended to help technology experts learn and improve upon the skills needed to be an effective witness in patent trials. Successful participants will be able to approach their work with greater confidence and improved understanding of the role of the expert.

Participant cost is $6,000 and includes both lodging and meals".

An admittedly brief online search has failed to unearth any equivalent Boot Camps or training schemes for patent expert witnesses in the continent of Europe, or indeed anywhere else.  It seems to me that what we regard as training an expert witness is something else -- training the witness to serve the requirements of the party paying hs or her fees and expenses.  Have I missed something? If so, PatLit would like to receive comments from patent expert witnesses, and from those who hire and examine them, as to whether Europe should be building a corps of effective technology witnesses.

Problems, solutions, 'tis and 'tisn't: Schlumberger on appeal

The Case of the Appeal-Proof Metaphor has just been the subject of a successful appeal, as can be seen from a perusal of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, a decision of the Court of Appeal for England and Wales this Wednesday.

This note does not propose to discuss the merits of the appeal (neatly summarised by the IPKat here), but merely focuses on two issues that emerge from the judgment of the court, delivered by Lord Justice Jacob: (i) the application of the problem-solution approach to the question of inventive step and (ii) the role of expert witnesses who hold divergent opinions. First, obviousness:

"... the correct approach in this case is to start with the real problem faced by exploration geophysicists. Did they appreciate they had a solvable problem? One then asks whether the notional exploration geophysicist who read the cited prior art would see that the answer was to use CSEM [Controlled Source Electromagnetic surveying], or if not that, at least that CSEM had a sufficient prospect of being useful that it was worth asking a CSEM expert.

The problem must also be approached the other way round, from the point of view of the CSEM expert. Would he or she know of the exploration geophysicists' problem and, if so, would he or she appreciate that CSEM had a real prospect of being useful to solve the problem?

In short: was the marriage obvious to either notional partner?

One further approach is not necessary: that is to ask whether the notional team including both types of expert would see that CSEM would solve or stood a very good chance, of solving the problem. ...

There is danger to be avoided. There are cases where, even though you can, in retrospect, clearly see that there was a problem and articulate what it was, workers at the time did not do that. They did not say: "this is our problem. If only we had a solution to it." Instead they simply put up with things as they were. Then the essence of the invention is the insight that there was a solvable problem at all. ..."

Secondly, dealing with experts with conflicting opinions:

"I should also say something about how the court should deal with the conflicting opinions of the experts on obviousness. It is not a matter to be decided by choosing between one expert who says 'tis and one who says 'tisn't. A mere assertion of opinion is of no real value. I put it in this way [in two earlier decisions]

"But just because the opinion is admissible: it by no means follows that the court must follow it. On its own (unless uncontested) it would be "a mere bit of empty rhetoric" ... What really matters in most cases are the reasons given for the opinion. As a practical matter a well-constructed expert's report containing opinion evidence sets out the opinion and the reasons for it. If the reasons stand up the opinion does, if not, not".

I have no hesitation in repeating this. It cannot be emphasised enough. Reasons for the opinion are what really matter. It follows that it is generally not enough for the court to conclude that it accepts the opinion of one expert or the other. It too must descend into the reasons for the opinions."

When experts change their minds

In Edwards Lifesciences AG v Cook biotech Inc [2009] EWHC 1304 (Pat), a decision last Friday by Mr Justice Kitchin of the Patents Court, England and Wales (noted by the IPKat here), a question was raised regarding the credibility of an expert witness. In particular, does the fact that an expert changes his opinion undermine his value as an expert? No, according to the judge, who explained as follows:

"9. Professor Rothman is a consultant cardiologist and the Director of Cardiac Research & Development at Barts and the London NHS Trust and Honorary Professor of Interventional Cardiology at Queen Mary, University of London. Interventional cardiology has been the focus of Professor Rothman's entire career and he is recognised as one of its pioneers. He has worked with cardiovascular stents since the early 1980s and over the years has advised many different companies operating in the pharmaceutical and medical device sectors in relation to a wide range of devices used in conjunction with interventional cardiology.

10. Edwards accepts that Professor Rothman is a skilled and expert cardiologist but contends his evidence was partisan, as illustrated by a marked shift in his opinions from those he held in an earlier case between Edwards and a company called CoreValve. I think it fair to say the opinions expressed by Professor Rothman in his reports in the two cases are indeed different in material respects and this formed the basis of a good deal of his cross examination. However, as Cook submits, opinions may change in the course of a case, particularly after cross examination, and I accept that in formulating his reports in this case Professor Rothman may have given further consideration to the abilities of the ordinary skilled person. Importantly, I believe Professor Rothman answered the questions put to him fairly and frankly and I found his opinions cogent and reasonable".

Expert witnesses: is there a better way?

Scinopharm Taiwan Ltd v Eli Lily & Co [2009] EWHC 631 (Pat) was a ruling last Friday from Mr Justice Kitchin in the Patents Court, England and Wales. It's the sort of patent cases that law bloggers dread: lots of discussion of the technology and the patents themselves, but not much in the way of law. Reading the judgment one receives the impression that most of the six days spent in court must have been given over to a careful weighing up of the testimony of two extremely erudite, credible expert witnesses whose erudition and credibility was unable to overcome the differences between their -- or one might say their sides' -- respective positions. There was a further problem, it seems. One side's expert was not familiar with some of the practical problems that those working in the field had experienced. The other side's expert gave answers that "... tended to be full ... because he did not properly understand the questions being put to him". 

It is significant that proposals for reform of patent litigation tend to assume that the appointment of partisan experts is a good thing. Certainly the fact that a party has a 'tame' expert who views its position sympathetically is a comfort -- but where the other party has the same comfort the gain is arguably illusory. If each side were to nominate an expert, and the two experts were between them to nominate a single, neutral expert, much time, effort, cost and indeed potential damage to the credibility of the experts might be saved. It is time for those who advocate the maintenance of the present system of witnesses taking sides to offer some firm justification, in theory or in practice, if they wish to convince others that there is a case for retaining what looks to some like a wasteful duplication of efforts and resources.