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".

The infringer hasn't been born -- and the judge wasn't born yesterday

The Patents Court for England and Wales gave judgment today in ConvaTec Ltd and others v Smith & Nephew Healthcare Ltd and others [2011] EWHC 2039 (Pat), an infringement-and-validity trial heard by the Patents County Court's Judge Birss, sitting as a High Court judge.

The most interesting thing about this fairly unexceptionable case (from this blogger's point of view is an observation made by the judge in the context of claim construction. At paragraph 68 he said:

"In my judgment both sides' original arguments risk committing the fallacy warned against in Nobel v Anderson (1894) 11 RPC 519. A patent is to be construed as if the infringer had never been born".

This point must be one that is at the forefront of British judges' minds of late, since the same principle was cited almost exactly a month ago by Mr Justice Floyd in Cephalon v Orchid & Mylan [2011] EWHC 1591 (Pat), (noted here), in paragraph 35 of his judgment.  Counsel, take note!

Court stays olanzapine infringement/invalidity action pending payment into court

Eli Lilly and Co Ltd v Neopharma Ltd and Gurnos Ltd [2011] EWHC 1852 (Pat) is a Patents Court decision of Mr Justice Floyd which doesn't seem to have found its way on to BAILII yet.

Pharma company Eli Lilly owned a patent for the anti-psychotic drug olanzapine. Neopharma and Gurnos were also pharma companies; Neopharma was dormant, but it did hold the EU marketing authorisation for generic olanzapine. In January 2008, the defendants launched a generic version of the drug, without telling Eli Lilly. A month later, Eli Lilly found out and obtained an interim injunction. Neopharma and Gurnos admitted infringement, but argued that the patent was invalid. In July 2008, in separate proceedings Dr Reddy's unsuccessfully challenged the validity of the same patent and Eli Lilly was granted a certificate of contested validity. Dr Reddy's had maintained that the patent was invalid for lack of novelty, based on an earlier publication ('Chakrabarti'), and for obviousness, based on an earlier UK patent document ('235'). In these proceedings, Neopharma and Gurnos also relied on a third piece of prior art, an article by Sullivan and Franklin. Unimpressed, Eli Lilly applied for summary judgment against them and/or security for costs. The defendants counterclaimed.

Before the court, Eli Lilly pressed for summary judgment on the ground that Neopharma and Gurnos had no real arguable case. Neopharma and Gurnos said in turn that it proposed to adduce different evidence in relation to 235 and Chakrabarti, and that Sullivan and Franklin was not relied on in the Dr Reddy's case.

Floyd J granted Eli Lilly summary judgment regarding the challenge to the patent's validity based on obviousness via the 235 patent. The challenges to validity based on Chakrabati and Sullivan & Franklin would be allowed to proceed: while they were pretty unpromising, they were just about arguable and hadn't been raise

The judge felt it was right for Neopharma and Gurnos to make a payment into court to provide security for Eli Lilly's costs. For one thing, their attempts to revoke the patent in other countries had failed, the patent having  been found valid in Germany, Austria, Slovakia, the Czech Republic and Romania and, beyond the European Patent Convention zones, in the United States, Canada. What's more, they had behaved reprehensibly in launching the generic version of the drug without telling Eli Lilly first. Requiring them to make a payment into court was not disproportionate particularly since, if they didn't have to give security, there was a risk of injustice to Eli Lilly if the invalidity claim failed. Moreover, Parliament had intended patentees to enjoy better protection in the event of a second attack on a patent, which is why section 65 was put into the Patents Act 1977 in the first place. That payment would be reduced to take into account the fact that the challenge based on the 235 patent would no longer have to be tried. However, a stay of the invalidity proceedings would be granted until the money had been paid into court.

PatLit thanks Tom Mitcheson (instructed by Simmons and Simmons on behalf of Eli Lilly) for drawing his attention to this decision.

European Commission Report on IP Enforcement: not much news on patents

Last week the European Commission published the Report on EU customs
enforcement of intellectual property rights (pdf alert).

As we read in the report:

“With regard to suspicion of patent infringements, the main categories of products detained were electronic devices working with MP3/DVD technology, unrecorded CD/DVD and medicines”.

We reproduce below two of the graphics of the report, showing that 0,44% of the products seized in 2010 where suspicious of patent infringement (454.550 from a total of 103.306.928). The patented products seized represent the 2,28% of the value (Euro 25.309.194 from a total of 1.110.052.402).

Patent invalidity in Singapore – is it a black and white issue?

With thanks to Kin Wah Chow of Rouse Indonesia for this update.

Singapore is fast becoming a choice venue for IP owners to set up R&D facilities and file test cases in court. Because of its historical connections, and the fact that its Patent Act is modeled on the UK Act, Singapore courts typically refer to landmark English cases for familiar judicial statements in determining novelty, obviousness and sufficiency. The adoption of established English cases and law is good in principle in providing certainty and clarity to IP owners who are familiar with litigating in developed IP litigation forums such as the UK. Dedicated IP courts, like those in the UK, are likely to help the Singapore court become a high quality IP court in Asia. A recent case indicates this is unsurprisingly a work in progress and that, not for the first time, UK law and judicial statements in these landmark cases may not be as immediately clear to the relatively unfamiliar reader as they might be. In the Singapore High Court decision in Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting [2011] SGHC 36, the court had to consider issues of novelty and insufficiency.

The patent related to the operation of an taxi rooftop display indicating the occupied, off-duty or availability status of the taxi. Another feature of the invention was to prevent taxi drivers from having manual control of the display - this is achieved by using the onboard taxi meter to control the rooftop display so that the display of "HIRED" will only come on when the taximeter begins its charging mode.

Novelty

On the novelty question, the judge sought to apply the reverse infringement test referred to in General Tire v Firestone [1972] RPC 457 which is stated as follows:

....if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. 

... If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.....

On the facts of the case, the judge had to deal with a feature that was not specified in the prior art - the patent claim include the integer of a multi-coloured display whereas the prior art does not specify whether the display is multi-coloured or not. The judge nevertheless found that it was common general knowledge to use multi-coloured display even if the prior art is silent on whether the display should be multi-coloured or monochrome.

This led the judge to find that the prior art anticipated claim 1 of the patent. He reasoned as follows:

Where it is already common knowledge at the date of publication of the prior art that electronic displays for …. can be either monochrome or multicoloured and when the prior art description does not specify that the electronic display must be monochrome or must be multicoloured but merely stipulates as one of the integers that an electronic display is to be used, I would construe the scope of the prior art to cover both monochrome and multi-coloured electronic displays within that integer. The drafter of the [prior art] document must have intended to cover unambiguously both alternatives and not merely the use of a monochrome electronic display to the exclusion of the multicoloured, or the use of a multicoloured electronic display to the exclusion of the monochrome in his inventive concept.

In analyzing this passage, it is possible that the judge might have fallen foul of the clarification of the distinction between novelty and inventive step in Sachs LJ’s judgment in General Tire that

... if, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.

The judge said that the above clarification only applies when the disclosure is vague. In the case before him, the use of a muliticoloured display was common general knowledge at the material time and the person skilled in the art would arrive at the end result of using a multi-coloured display even if the document does not specify whether the display should be multi-coloured or monochrome. The author respectfully submits that the end result might be correct but the inquiry should have been from the obviousness angle.

The clarification in General Tire was laid down for good reason, to avoid the blurring of the distinction between anticipation (lack of novelty) and obviousness. Once a prior document has to be supplemented by either another disclosure or common general knowledge, the inquiry falls under the realm of obviousness. Support for this can be found in the UK Patent Office Manual:

3.45 If the invention can be produced by combining the teaching of one document with common general knowledge or with standard practice in the art, then even if the inventor has not conceived it nor the applicant presented it in such terms, there is a strong presumption that such a combination would be obvious to the skilled person. If, in his application, the applicant refers to prior art as “conventional”, this may be taken to indicate that the prior art is common general knowledge (NEC Corporation’s Application (BL O/038/00)).

Insufficiency

On the question of insufficiency, the court has to consider how the skilled person would understand the specification, and in order to do so, evidence of how the skilled person would read it, and what the common general knowledge was, is needed, usually from an expert. A lay person reading a patent specification might think that there are gaps that make it impossible to put the invention into practice. However, the question has to be viewed through the eyes of the skilled person, with the requisite technical skill, utilizing his common general knowledge. Without evidence on that question, there is very little basis on which a court can decide that a specification is insufficient. That this position is also correct in Singapore is supported by the premise, which applies in Singapore, that it is for the party challenging validity to prove it.

On the facts of the case, the judge did not identify support for his ultimate conclusion from any expert evidence. On this issue, the judge referred only to the testimony of the patentee's expert, who testified that the drawings were sufficient for him to work the invention even if the text of the specification alone was not. Notwithstanding the patentee's view that the specification was sufficient (and more particularly the diagrams which comprise flow charts), the judge found the specification failed to provide sufficient disclosure for the person skilled in the art to work the invention. However, on the face of the decision this author is not certain that the Court was in a position to reach that conclusion.

PCC Page 33: Octopus dress and address

While the Patents County Court
is less formal than the High Court,
counsel should not be too casual ...

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 33rd, former CIPA President Alasdair Poore describes the Case Management Conference and some tricky little matters of etiquette, like what to wear and what to call the judge.

"Cautious’s patent attorney has been diligently pursuing his client's claim in the PCC against IPOff, whose Robot Octopus product clearly infringes Cautious's patent and unregistered design rights. He has at last got through the case management conference (CMC) – something of a hurdle on his first case in the PCC, or so he thought. He reports to his mentor on the directions the judge made for the defendants to amend their pleadings and follows up with a bit of a saga about the CMC itself:

Dear P., I have just got through my first trial -- the CMC. Actually it went pretty smoothly. As you know I had discussed the proposed directions with IPOff’s solicitor and, despite my first impressions from his condescending correspondence, actually he was pretty reasonable. Of course that does not make his client’s case any better – and it's important to keep the personalities separate from the merits. So we got a number of the directions agreed in advance, but that still left quite a lot for argument.

Some key points came out of it. As you know IPOff’s claim for threats was transferred from the Patents Court to the PCC, and that case has been consolidated so that it can be heard with Cautious’s claim. [If the claims were started separately, even if they relate to broadly the same subject matter, should they be consolidated, or should they be kept separate so that the costs cap applies to them independently? Thoughts please.] IPOff had set out their threats claim in a thoroughly unspecific way, and also not particularized the enormous amounts of damage arising from the threats. The judge ordered that they amend their existing particulars of claim to conform to the requirements in the PCC [CPR Pt 63.20 (2)]. In other words, he asked that they set out all facts matters and arguments in relation to the threats claims. [Judge Birss QC considered the question of amending the pleadings (as well as costs) when transferring a case from the High Court to the PCC in Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC 16 (the first of three Westwood v Knight PCC judgments). His conclusion was set out in paragraphs 19 to 27. The defendant (counterclaimant) had already set out extensive detail, including 46 pages of annexes; the claimant had also set out facts and arguments concisely so that there was no need to add to those, except for one point: to particularize details of the use of a further device, the “cherub with legs of a satyr” (para 21). The judge also permitted addition of references to the pre-action protocol, so that shorter time limits for the defence could be relied upon – not a requirement in this case (para 23)]. He also ordered that the claimant have the relevant people (who knew the facts) sign the statement of truth in relation to the claim. [The claimant in Westwood v Knight sought to add a statement of truth signed by the relevant representatives from the claimant so that the statement of case could stand as a witness statement. The judge agreed. (para 24 to 26)]. I am confident that, when we see that detail, it will be clear that they have absolutely no case on that.

The judge also order that further particulars be given of the allegations of independent creation of the Robot Octopus – which, as you know, IPOff assert they created independently. Clearly there was a lot missing here and I suspect that, when they try to set out all the facts and arguments, this claim will fall apart. [A party may seek to have part of a statement of case struck out on the grounds that amongst other things it does not comply with the Civil Procedure Rules CPR3.4(2)(c) (and therefore lead the other party to seek to amend) or further information (particulars) may be requested as provided in CPR18 and Practise Direction PD18, but usually a request should be made for the information in advance.]

Finally, the judge reserved the position in relation to costs in the High Court. [He did this in Westwood v Knight, saying that, despite it being desirable to have reasonable certainty on costs, not much had happened in that case in the High Court, and it was preferable to reserve costs (para 28)]

I will report on the expert witnesses separately.

Going back to the hearing itself, I had prepared bundles of documents, so far as they were needed in accordance with the PCC User’s Guide (see para 2.5 (page 13) and PD63 para 5.9 – Judge Birss reminds that ths should be read in the context of the PCC already having many of these documents) and the Chancery Guide (Appendix 6, page 164). I submitted skeleton arguments setting out my reasoning, much as we discussed and worked through together. I gather they are not always necessary but it seemed like a good idea to file them in this case. [See Vivienne Westwood, para 15: “In the Patents County Court parties' skeleton arguments at the interim stage need not be filed if they are not necessary. Nevertheless it is obvious that in some cases a skeleton argument on at least some issues will be needed at the CMC. The matter needs to be approached on a case by case basis”]

The most traumatic moment was actually the day before the CMC. I realized I had no idea what to call the judge, or whether I should wear a gown or something. Seems quite simple questions really, but quite nerve-racking. So I asked around the office. No-one there was sure. So I called the High Court: they said you should call him “Sir” and sounded astonished that I would not already know. Having heard some people say that he should be called “Your Honour”, and other saying barristers called judges in the County Court “Sir” I thought I should check on that trusty resource, the internet. There I was at least consoled that I was not alone in having problems with this question: “I'm a lawyer and appeared in front of them all at some point. I haven't always managed to get it right either.”

Eventually I called a patent agent friend who had actually appeared. He explained that a county court judge should be called “Your Honour”. I tried that out and it seemed to work just fine. I had also confirmed that for the CMC I was not expected to wear a gown, although I had brought the one from the CIPA offices just in case.

Actually the hearing was just fine. Not something to be nervous about in the future – or at least only as nervous as makes sure that you do the preparation properly.”

Westwood v Knight [2010] EWPCC 16 also contains examples of directions as does the PCC User’s Guide".

New book, with sample chapter on patent infringement

Note: this book notice substantially reproduces the content of a post earlier this morning on The SPC Blog here, since its subject matter is of interest to readers of PatLit too.  Apologies are offered to the small number of readers who are email subscribers to both weblogs.

Pharmaceutical, Biotechnology and Chemical Inventions: World Protection and Exploitation is the title of a blockbuster of a book, edited by Duncan Bucknell.  Divided into two volumes, this work covers a lot of ground that is of clear and immediate interest to readers of this weblog who hail from pharma companies, as well as the lawyers and patent attorneys who represent them.

According to the publisher, Oxford University Press, the work is "written by a handpicked team of expert practitioners" from each of the 12 jurisdictions which it spans. "Handpicked" makes it sound rather as though they grew on trees, which conjures up some delightful imagery.  You can check the identities of the authors here.  Anyway, as OUP says:

"This book highlights the special issues arising in obtaining, commercialising, enforcing or attacking intellectual property rights (including protection of regulatory data) in the pharmaceutical, biotechnology and chemical industries across the world's key jurisdictions. It is unique in presenting topic matter horizontally by subject to facilitate comparison between country practices. 

The first two chapters give a general introduction to the differences between the jurisdictions and an overview of some of the key concepts in patent law. The remainder of the book is dedicated to a detailed analysis of the major legal issues arising in these areas of technology. 

Each component chapter has a comparative introduction, looking at the variances in the laws of different domains, followed by side-by-side analysis of the relevant regimes, including tables and flow-charts which summarise and explain the key legal concepts. The jurisdictions covered are the United States, Europe (UK, Germany, Netherlands, France and Italy), Japan, Canada, Australia, India and China".

As is only to be expected, the book deals extensively with patent litigation issues. In particular, readers are treated to the following:

Part G. Invalidity proceedings and strategy
1: Overview
2: Third part intervention during prosecution
3: Opposition proceedings
4: Re-examination
5: Revocation/nullification proceedings
6: Declarations of validity 

Part H. Infringement
1: Overview
2: Literal infringement
3: Infringement equivalents
4: Contributory infringement
5: Infringement proceedings & strategy
6: Remedies for patent infringements
7: Restrictions on remedies 

Part I. Defences to infringement
1: Overview
2: Prior secret use
3: Experimental use and clinical trials
4: The Bolar exemption
5: Contributory infringement
6: Parallel importing and exhaustion of rights 

Part J. Patent litigation strategies
1: Overview
2: Court hierarchies
3: Overview of litigation
4: Preliminary injunctions
5: Split trials
6: Summary judgments
7: Multi-jurisdictional strategy
8: Practicalities of litigation
9: Settlement of litigation

The publishers offer a sample chapter, this being the one on Infringing Acts and 'Literal Infringement', which you can peruse here at your leisure.

PatLit readers may be excited to discover that The SPC Blog is running a competition, for which the prize is a copy of this giant book.  The rules are as follows: your task is to state which country should be included in the second edition as the 13th jurisdiction, in addition to the 12 key jurisdictions analysed in this work, explaining in not more than 30 words why it should be included. Please email your answer to The SPC Blog here, with the subject line "Bucknell Book". Entries should be received by not later than midnight (BST) on Sunday 24 July. So far, some very curious suggestions have been received, a sign that the summer vacations are imminent ...

Bibliographical data.  Hardback, 2 volumes, 2,536 pages. ISBN 978-0-19-928901-1. Price £295.00. Book's web page here.

Counsel for disputants must not teach experts to become partisan, warns judge

At over 71,000 words and with 578 paragraphs, Mr Justice Arnold's ruling this morning in the Patents Court, England and Wales, in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Another [2011] EWHC 1669 (Pat) is not easy to digest. We know that, to be valid, a patent must be novel -- but now it seems we are receiving judgments as long as a novel.

Other blogs will discuss this case on a variety of grounds, but PatLit focuses on just one thing: the very helpful summary of the duties of the expert witness as they are applied to patent litigation. Said the judge, at paragraphs 109 to 114:

"109. Expert witnesses in patent litigation stand in a rather unusual position. 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 [Presumably those who fail are discarded; those who succeed may not be needed again]. 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 [The task is made more difficult by the fact that they are being to describe the characteristics of an individual or team which may be strongly shaped by evolving judicial guidance which they may not fully appreciate]. 

110. 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 [Good point]. 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. 

111. It is obvious that this process entails a risk of loss of objectivity on the part of the expert even if the expert is striving to remain independent and impartial. It is therefore crucial that the lawyers involved should keep the expert’s need to remain objective at the forefront of their minds at all times [a counsel of perfection?]. If they cause or allow the expert to lose his objectivity, they are doing both the expert and their client a disservice. They are doing the expert a disservice because he may be subject to criticism during cross-examination and in the court’s judgment as a result. They are doing the client a disservice because partisan expert evidence is almost always exposed as such in cross-examination, which is likely to reduce, if not eliminate, the value of the evidence to the client’s case [the ritual of cross-examination with a view to exposure may be difficult to eliminate, since it runs deep in the psyche of the lawyer'expert relationship, whether in IP or beyond it]. 

112. I will illustrate this point by reference to two common traps for the unwary. The first lies in discussing the prior art. The expert will generally be asked by the party instructing him to express an opinion as to whether taking a particular step would or would not have been obvious to the skilled person at the relevant date in the light of certain prior art. Suppose the instructing party contends that the step would be obvious. The lawyers show the expert the prior art after having carefully explained to him the correct approach to this question, and ask him for his opinion. The expert expresses his genuine, independent and impartial opinion that taking the step would indeed have been obvious. Then the lawyers assist the expert to draft a report expressing that opinion. When drafting such a report, there is a natural tendency to focus on the parts of the prior art document which support the opinion which the expert holds. It is often the case, however, that there are parts of the document which point the other way or might be thought to point the other way or are equivocal. (Otherwise, it is unlikely that there will be a dispute.) It is important that the lawyers bring home to the expert the need to give a balanced account of the document in his report. The expert may think, for example, that such a passage is ambiguous and therefore best ignored; but if those instructing him allow him to pass over that passage in silence in his report, the inevitable consequence is that he will be confronted with that passage in cross-examination, asked why he did not mention in his report and accused of failing in his duty to the court. 

113. The second example arises out of the fact that it is not uncommon for an expert witness to have some involvement with the invention in issue, or a similar invention, in the past. For example, he may have published a paper commenting on the invention or have been a named inventor on a patent application claiming a similar invention filed before or after the one in suit or he may even have given evidence in some form (such as a declaration filed with a patent office). The lawyers who are instructing the expert should make sure that the expert discloses such contributions and, where appropriate, explains them in his report. I am not suggesting that it is incumbent on the expert to carry out a search for such documents, merely that the expert should reveal what he is aware of. It should be brought home to the expert that the lawyers for the opposing party are likely to comb through his published papers and other publicly accessible records (such as patent office files); and that, if they find something relevant that has not been disclosed by the expert in his report, then the expert may be accused in cross-examination of failing in his duty to the court if it appears to favour the opposing party. If this is not made clear to the expert by those instructing him, then the expert may find himself in an uncomfortable position even though he had thought he was complying with his duty to the court (e.g. because he thought at the time of preparing the report that the material was not significant). 

114. 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. It is regrettably true that from time to time an expert witness does succumb to the temptation of giving partisan evidence, and that is clearly unacceptable. But 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 [and woe betide the next counsel to appear before Arnold J and have this passage quoted back at him when he has led the expert to appear partisan]. It is also important that courts should be cautious about criticising an expert witness purely on the basis of omissions from his report unless it is clear that the fault lies with the expert rather than those instructing him, bearing in mind that the court will not usually be privy to the expert’s full instructions ...".

This seems very sensible and PatLit is sure that the other Patents Court judges agree.

Pfizer: Abuse of dominant position? (2)

In November we made reference to the investigation started by the Italian Autorità Garante della Concorrenza e del Mercato (here).

It is investigated if Pfizer has tried to artificially extend the protection over EP0364417 until January 2012, trough Divisional Application no. EP1225168 (Latanoprost). The arguments used by the Italian Authority to start the investigation can be read here.

According to the Italian Law (art. 14 ter of Law no. 287/90), companies investigated can offer commitments to exclude anticompetitive effects. If those commitments are accepted by the Italian Authority, the case can be closed.

In this case Pfizer has offered the following commitments:

1.- An open and free non exclusive licence in Italy, Spain and Luxemburg over EP 1225168. Interested parties may become licensees by just submitting a letter of acceptance to Pfizer.

2.- Renounce to actions brought against AIFA e Sifi spa and others at Regional Amministrative Court of Lazio.

3.- Accept claims (legal and administrative costs excluded) filed at Courts of Milan and Rome against Pfizer by following plaintiffs.

• Tubilux Phrama spa

• Alapis sa

• Ratiopharm Italia srl

• Ratiopharm Gmbh

• Mylan spa

• Idustriale Chimica srl

• EG spa

4.- Renounce to preliminary injunction requested by Pfizer against Sifi spa at the Court of Milan

5.- Renounce to the extension requested on January 10, 2011 over the paediatric use.

6.- Inform the consumers though its website (during 3 years) about alternative Latanaprost products available in the market. Inform doctors and pharmaceutics (during 6 months) about available products in the market.

The Italian Authority will take a decision regarding Pfizer's offer before 29 July 2011.

Full text submited by Pfizer here

Nortel: And the winner is…

Last Thursday Nortel announced the Winning Bidder of its Patent Portfolio for a Purchase Price of US$4.5 Billion (here)


As Nortel informs, “After a multi-day auction, a consortium emerged as the winning bidder with a cash purchase price of US$4.5 billion. The consortium consists of Apple, EMC, Ericsson, Microsoft, Research In Motion and Sony”.

George Riedel, Nortel’s Chief Strategy Officer and President of Business Units, claims that "the size and dollar value for this transaction is unprecedented, as was the significant interest in the portfolio among major companies around the world."

Living the figures aside (even if hard), I’m surprised to see Microsoft among the winners. Two weeks ago, we read (here):

“Microsoft didn’t bid on the patents. It didn’t have to, company officials said, as Microsoft had “worldwide, perpetual, royalty-free license to all of Nortel’s patents that covers all Microsoft products and services, resulting from the patent cross-license signed with Nortel in 2006.”

If that information was correct, when and why has Microsoft joined the bid?

Apart from that, I wonder how bad is for Google the result of the bid.

On April 4, 2011, Kent Walker, Google’s Senior Vice President & General Counsel referred to Google’s US$ 900 million bid in the following terms:

“one of a company’s best defenses against this kind of litigation is (ironically) to have a formidable patent portfolio, as this helps maintain your freedom to develop new products and services. Google is a relatively young company, and although we have a growing number of patents, many of our competitors have larger portfolios given their longer histories.” (here)

This means that Gogle has failed in obtaining a “formidable patent portfolio” to use against patent infringement claims. As we have seen, among those that will acquire Nortel’s Patent portfolio we find Microsoft who may then have more arguments in its “battle” against Google. Bear in mind that Microsoft filed action against Motorola for the use of Android (here).

More than ever, this Mobile wars seem like a chess game.

Rising from the ashes of the ECJ ruling: the Unified Patent Court

PatLit thanks Professor Steve Peers (right, University of Essex) for preparing this hugely helpful note on the draft agreement on the Unified Patent Court which has so exercised us all of late. He writes:

"The draft treaty on a unified patent court follows the steer given by the Commission's non-paper on this issue, discussed by Member States' ministers in May. The suggestion then was to respond to the Court of Justice's negative opinion on the draft treaty creating a court with jurisdiction over EU patents and European patents alike by amending that draft treaty as follows: (a) only EU Member States would be parties, ie not the EU itself and not any non-Member States; and (b) making specific adjustments to reflect the Court of Justice's concern that the patent court should be subject to the same controls as regards EU law as the national courts of Member States. Otherwise the substance of that treaty would remain basically the same, in particular as regards the patent court's exclusive jurisdiction over key aspects of patent litigation, and the basic structure of the patent court (several first instance divisions, a centralised appeal division).

The outgoing Hungarian presidency of the EU Council has therefore drawn up a revised draft treaty which follows these precepts, but adds a few additional suggested changes. It has also suggested a revision of the draft Statute of the Court to match.

The presidency did not list the changes which it made to the draft treaty as existed in 2009, and therefore did not explain those changes either. The following is a list of the changes as far as I can discern them (leaving aside some consequential amendments), with some comments on their implications:

(a) the name of the court is now the 'Unified Patent Court'; 

(b) the EU is not to become a contracting party, and neither are any non-Member States -- although the first recital in the preamble still refers to the EEA (ie including Norway, Iceland and Liechtenstein) for some unknown reason;

(c) recitals 3, 4, 7 and 9-14 in the preamble are new. Note that recital 14 (the last one), as suggested by the non-paper, invites the two Member States (Spain and Italy) who are not taking part in enhanced cooperation as regards the EU's unitary patent to sign up to this treaty, as regards litigation over European patents only; 

(d) the old recital 3 (now 5) in the preamble is amended to refer to jurisdiction over revocation; 

(e) the old recital 4 in the preamble, which invited all EPC states to sign the treaty, has been dropped; 

(f) a new second para in Article 1 explains the patent court's role in the judicial system of the EU; 

(g) some amendments to the definitions in Article 2 were necessary to take account of the changes in contracting parties, also the nature of the EU (now unitary) patent project;

(h) in Article 3 there is no longer a reference to compulsory licences - this issue has been dropped from the unitary patent project and left to national law, as confirmed by recital 9a in the preamble to the agreed text of the unitary patent regulation; 

(i) in Article 9 and throughout, the 'Mixed Committee' is now renamed the 'Administrative Committee'; 

(j) a new Chapter IIIA - Articles 14a to 14d - concerns the role of EU law - and deals with in turn i) the primacy of EU law (new Article 14a); ii) preliminary rulings to the Court of Justice from the patent court on EU law issues (Article 14b) - this was Article 37 in the 2009 version, and remains unchanged apart from being 'gussied up'; iii) damages liability for Member States if the patent court gets EU law wrong, as the Court of Justice insisted upon (new Article 14c); and iv) liability for Member States pursuant to the EU law infringement procedure, again if the patent court gets EU law wrong, as the Court of Justice insisted upon (new Article 14d). It should be noted that the Court of Justice would not have jurisdiction to interpret the patent court treaty itself - it would have done in the 2009 version, by virtue of the EU being party to the treaty creating the patent court; 

(k) the old Chapter IIIA becomes Chapter IIIB - now Articles 14e to 14k; 

(l) the EU Commission loses a role drawing up the patent court's rules of procedure (Article 22(2)) - in fact the Commission already drew up draft rules of procedure, which presumably will not just be thrown in the bin; 

(m) there is a new clause on languages (Article 31(3)), designed it seems to boost defendants' rights - this is perhaps a response to concerns expressed in the *Advocates-Generals' opinion* on the draft patent court treaty on this issue; 

(n) as regards decisions on the validity of a patent, the cross-references to the EU Regulation have been removed (Article 38a(2) and (4)); 

(o) the EU no longer has a role in the budget committee (Article 57a); 

(p) the Commission is no longer involved in the advisory committee (Article 57b); 

(q) accession is now open to any Member State of the EU, rather than any signatory of the EPC (Article 58a); 

(r) there is a new clause allowing for simplified revision (Article 58d(1)) - the previous paras 1 and 3 have been dropped. Oddly there is no longer any reference to amending the treaty by the usual means of treaty amendment; 

(s) the treaty now is more clear about its entry into force (Article 59) - it will enter into force when a (so far unspecified) number of Member States have ratified - including the 3 Member States with the biggest number of European patents - this basically follows Article 6(1) of the London Agreement on EPC patent translation - that agreement named the minimum number of parties as 8. In contrast the draft EPLA referred to ratification by only one of the three states with the biggest number of patents, plus an unspecified minimum number of states. This draft raises the prospect that the treaty will not need to be ratified by all of the EU Member States (or even all of them participating in the unitary patent) to enter into force. This is crucial because, in the agreed text of the unitary patent regulation, the unitary patent cannot be operational until the patent litigation treaty enters into force -- and because there were, of course, problems in the past ratifying the two earlier attempts at a Community patent convention (1976 and 1989) among all EEC Member States".

NOTE: since posting this, Steve has written to suggest that it might be useful for readers to have a link to the 2009 version of the patent litigation treaty, ie the draft which the ECJ rejected and to which he referred: it's here.

UK IPO litigation manual refreshed

If you are likely to be embroiled in proceedings before the UK's Intellectual Property Office, you might want to take note of the fact that its Litigation Manual has been updated. This manual provides guidance on the administrative procedure for patent and design right proceedings before the IPO: it includes detailed desk instructions on the practices and procedures for formal examination and processing of statements and evidence filed in inter partes proceedings before the Comptroller and in the formal processing of ex parte proceedings.

The IPO updates the manual regularly. Helpfully, it marks changes by placing a line in the margin of the text. It also provides a schedule of the latest changes in the Introduction.