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.

Common General Knowledge and Inconvenient Details - Accord v Medac and Unwired Planet

Two recent rulings of Mr Justice Birss of the Patents Court, England and Wales contain interesting statements on obviousness attacks based on common general knowledge alone, adding some new aspects to the findings of the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159.  The problem is that what is presented as common general knowledge is necessarily a synthetic picture based on overlaps in various pieces of evidence (and the recollection of experts) where inconvenient details are inevitably (or deliberately?) left out. In Accord v. Medac, Birss J. presents the following caveat:

Obviousness over common general knowledge alone

119. I am not satisfied that the invention is obvious based on the common general knowledge alone attack relied on by Accord. That is because the relevant common general knowledge must be that in the UK (see Arnold J in Generics (UK) v Warner Lambert [2015] EWHC 2548 (Pat) at paragraphs 123-124) and in the UK the skilled clinician was unaware as a matter of common general knowledge what concentrations were being administered subcutaneously to patients and was unaware, without prompting, of any particular issue of pain arising from the subcutaneous administration. There is therefore nothing to provide an impetus to the skilled team to think about the issue at all.

120. Before leaving the argument based on common general knowledge alone, I will mention the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159 and in particular the passage at paragraph 158 which warns that such attacks need to be scrutinised with care since they can be favoured by parties because the starting point is not obviously encumbered by inconvenient details of the kind found in documentary disclosures. I respectfully agree with Floyd J. Since it seems to me that this case provides a good example of the problems identified in ratiopharm I will add a few words of my own.

121. Normally the person attacking validity will rely on a particular concrete document or well defined prior use as a starting point. The fact that such a concrete item of prior art may be part of the common general knowledge is not the point. That is different from an attack based on common general knowledge alone.

122. Many inventions involve a combination of known features. However a combination of features, all of which individually were common general knowledge, can give rise to a valid patent claim if that combination is new and non-obvious. Patent trials are inevitably ex post facto and a key problem is to identify and avoid hindsight. Combinations of features can pose a particularly acute hindsight problem. The thing about concrete items of prior art, whether they are prior published documents or prior used products or processes, is that whatever combination of features that concrete prior art consists of, is not one which was created with hindsight knowledge of the invention.

123. The problem with arguments over common general knowledge alone is that the combination of features relied on is always and necessarily one created with hindsight knowledge of the invention, and worse, is one which the person attacking validity has not been able to find as a pre-existing combination in the concrete prior art. If they had they would have relied on that concrete prior art. Either the combination has not been made in the concrete prior art at all or it only appears with additional inconvenient details. If an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct.

124. The problem is illustrated in this case. Sometimes an invention belongs to a field which is not well documented but in this case Accord did not lack possible starting points. It has pleaded two documents and could easily have pleaded others, such as the existing SmPCs for subcutaneous methotrexate. However the documents contain what might have been thought of as “inconvenient” details. Russo does not mention subcutaneous administration by name and is aimed at JCA rather than RA. Russo is also a small study and was published six years before the priority date. Jansen does mention subcutaneous and is for RA but it does not mention pain and contains the two statements referred to above which medac relies on. That the “inconvenient” details in Russo have not led to a finding of non-obviousness is not the point. To invent as a starting point in the prior art an amalgam of the best bits of the two cited documents while leaving out the inconvenient aspects, which is in effect what the argument was, created a combination which did not hitherto exist.

These wise words are re-emphasised in the most recent decision in Unwired Planet v. Huawei saga as follows:

A final general point on obviousness
233. I have addressed the obviousness arguments on their merits. However in my judgment the argument based on common general knowledge alone contained a good number of the familiar flaws in arguments of this kind which were discussed by Floyd J in Ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraph 155-159 and by me in Accord v Medac [2016] EWHC 24 at paragraphs 119-124. The argument in this case had not been properly pleaded. That is not the defendants' fault because the parties agreed to treat Mr Townend's first report as a statement of the case. However the case then shifted very close to trial, which demonstrated why it should have been pleaded properly in the first place. Furthermore the argument presented a combination of common general knowledge features which had been created with hindsight knowledge of the patent. It was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and it presented points of common general knowledge at a level of generality which itself was crafted with hindsight.   

Instructing the Expert - American Science & Engineering Inc v Rapiscan

One of the key differences between the UK patent litigation system and the continental system is the role of expert evidence, in particular when it comes to inventive step. German courts consider obviousness to be a question of law, the role of the experts being only to shed light on the knowledge and mindset of the the person skilled in the art at the priority date. Finding a compromise between both of these positions will surely be a crucial task to tackle in the first decisions of the UPC.

In the decision American Science & Engineering Inc v Rapiscan Systems Ltd [2016] EWHC 756 (Pat) (11 April 2016)  , justice Arnold shares the following general comments on how to instruct the expert:

General comments on the expert evidence
 
109. Each party contends that the other party instructed its expert to ask himself the wrong question. Both sides' solicitors proceeded in a carefully structured manner by first asking their expert to consider the person skilled in the art and the common general knowledge, then to consider the prior art relied upon by Rapiscan and only then to consider the Patent. The difference between them was that AS&E's solicitors asked Dr Bjorkholm to consider obvious developments of the prior art before showing him the Patent, whereas Rapiscan's solicitors only asked Dr Lanza to consider the question of obviousness after they had shown him the Patent.
 
110. In my view there is force in the criticisms which each side levels at the other's approach. The approach adopted by AS&E's solicitors had the advantage that it enabled Dr Bjorkholm to consider obvious developments of the prior art free from knowledge of the Patent; but it meant that he never addressed in his reports the question of whether the differences between Swift and the claimed invention constituted steps which would have been obvious to the person skilled in the art. The mere fact that a step did not occur to Dr Bjorkholm when reviewing the prior art was not sufficient to exclude the possibility that he might agree that it was obvious if asked. Unlike the person skilled in art, real people sometimes miss the obvious.
 
111. The approach adopted by Rapiscan's solicitors avoided that difficulty. The problem is that, whereas the correct question is whether, viewed without any knowledge of the claimed invention, the differences constituted steps which would be obvious, Dr Lanza expressed his understanding of the question he had been asked to consider without referring to the need to exclude knowledge of the claimed invention. Moreover, this does not appear to have been an artefact of the drafting of the report. On the contrary, Dr Lanza confirmed in cross-examination that his approach had been to consider obviousness as if the skilled person had been shown the claims and asked if they were obvious. Thus Dr Lanza does not appear to have understood the importance of trying to avoid hindsight.

Patent litigation statistics: a task for do-it-yourself enthusiasts?

The UK Intellectual Property Office has just released various bits of information sought by individuals under the Freedom of Information Act 2000 and which were supplied in May 2012.  One such request related to patent litigation. Like any other government department, the IPO is obliged to give honest and accurate answers, but doesn't have to spend much in terms of effort and resources in order to get those answers. Accordingly, responses to FOI requests often have a sort of do-it-yourself flavour.  Anyway, the IPO's entry on its website looks like this:

Subject: Patent litigation statistics

Date of response: 3 May 2012

Summary of request:

I would like to learn how to obtain UK patent litigation statistics, such as annual median
damages award. It would be excellent if the statistics shows which cases were lost profit
awards and which cases were reasonable royalties, and so on.

Response:

The costs awarded by the Hearing Officer are not recorded by us anywhere other than in the
decisions themselves, which can be viewed on our website under the heading 'Results of past
patent decisions' (see http://www.ipo.gov.uk/p-challenge-decision-results.htm).

If you use the keyword search function and search for costs you will find all the decisions
where we have awarded costs. We are not sure what you mean by the terms 'lost profit' or
'reasonable royalties'; perhaps you will be able to tell from looking at them.

We do not hold data on costs awarded at the courts. You could try the Patents Court in the
first instance (see http://www.justice.gov.uk/courts/rcj-rolls-building/patents-court).

Are the UK courts anti-patent? Judge for yourself

The debate as to whether British patent courts are anti-patent has flared up again (see the IPKat post here, plus appended comments from Lord Justice Jacob, among others). You can judge the attitude of the British judiciary for yourself here, where IP practitioner and fellow blogger Peter Groves has compiled a list of all 17 Patents Court and Patents County Court decisions on infringement and validity which have been made available on the BAILII website.

Judges to discuss Burdon Plan

This morning's IPKat post discusses the Burdon Plan, a set of suggestions laid down by patent litigator and PatLit team member Michael Burdon (right) for streamlining British patent litigation as well as making it cheaper. The 10-point plan which, is suggested, could run experimentally for a period of three years, includes capping of costs awards -- but not spending -- and fixing rigid but reasonable rules for timetabling, submission of evidence and so on. This weblog will bring news of further developments, if any ...