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.

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.

Patent professionals as expert witnesses? Not a good idea in Malaysia

An interesting issue arose recently in the Kuala Lumpur High Court, Malaysia, in Ronic Corporation v Cadware Sdn Bhd (D5-22IP-74-2010), an infringement claim and invalidity counterclaim in respect of a patent for a 'device for sensing and alarming the absence of water in a home machine for manufacturing soybean milk, watery bean curd and bean curd", the patent disclosing a circuit used for sensing and sounding an alarm when the absence of water is sensed.

The issue of invalidity was heard first and the defendant invoked as its expert witness a practising patent agent.  The expert evidence on the other side was supplied by an engineer specialising in electronics engineering and a professor specialising in the field of electrical engineering, brought in from Korea.

Holding the patent to be valid, the court expressed the view that the expert called by the defendant was not a person skilled in the art, as such a person must have a practical interest in electronic circuits in his or her day-to-day work (ie an engineer specialising in electronics or similar). A patent agent cannot be considered to have practical interest in the matter, said the court, as he or she would not have considered the invention at all, had he or she not been called as a witness in this case.

Source: "High Court upholds validity of patent and dismisses defendant's challenge", Contributed to International Law Office by Michael Soo and Wendy Lee (Shook Lin & Bok, Kuala Lumpur).

Matching of expert evidence to a patent's hypothetical addressees

Yesterday's ruling of Mr Justice Arnold (Patents Court, England and Wales) in Generics [UK] Ltd (t/a Mylan) v Yeda Research and Development Co Ltd & Another [2012] EWHC 1848 (Pat) is a lengthy but well-structured decision with three pages of contents to help the reader navigate its contents. A short note on it can be found on the IPKat here.

This post just picks up one small point: the treatment of expert witnesses. In this trial, as in many, a great deal of attention was paid to the nature of the addressee of the patent of which the validity was in contention and to the expert evidence that was to establish their state of knowledge and understanding.  Arnold J handled these issues like this at [81] to [82]:

"... there is no fundamental dispute as to the identity of the skilled team to whom the Patent is addressed, but there are certain differences as to the level of expertise of some members. Broadly speaking, it is agreed that the skilled team would comprise the following:

i) Someone with an interest in the treatment of MS. This person is likely to be a clinician by training, although a clinical qualification may not be essential.  ...

ii) Someone with experience in assessing the adverse effects of drugs in both in vivo tests such as the mouse lethality assay and in vitro tests .... This person is likely to be a toxicologist by training, although a toxicological qualification may not be essential. ...

iii) A synthetic chemist with expertise in synthesising polydisperse polymers.

iv) An analytical chemist with expertise in amino acid analysis.

v) An analytical chemist with expertise in SEC".

Regarding the experts put forward by the parties the judge observed at [85] to [86]:

"The expert witnesses called by the parties do not precisely correspond to the five disciplines I have identified as comprising the skilled team [ahead of trial it might not be fully possible for the judge to identify with certainty the components of a skilled team but, in an ideal world, it would be great if the parties could go away and choose their experts in accordance with a list of disciplines identified before trial, at the case management stage]. Furthermore, there is not a precise correspondence between Mylan's witnesses and the Defendants' witnesses, in particular since one of the Defendants' witnesses did double duty as discussed below. Yet further, there is some overlap between some of Mylan's witnesses. Still further, both counsel submitted that a witness called by the other side possessed greater expertise on a topic than another witness called by that side. Nevertheless, for convenience I will put the experts into pairs based on the skilled team....

... a general point which is convenient to note here is that a number of the experts had previously given evidence in the US proceedings. Both counsel submitted that the other side's witnesses who had done so had become entrenched in their views as a result. I think that there is some truth in this, and I have borne this factor in mind in assessing the relevant witnesses' evidence [again, in an ideal world, it would be good if both parties had to share a single expert on each issue that required expert evidence, as happens in some other areas of civil litigation, but it is generally insisted by patent lawyers that this is both impossible and workable. It would be good to revisit this issue]".

Wise after the event: does expert evidence induce hindsight?

Another warning about the relationship between expert evidence, inventive step and hindsight was delivered by the Court of Appeal for England and Wales in Apimed Medical Honey Ltd v Brightwake Ltd [2012] EWCA Civ 5, in which that court allowed an appeal against a decision of Judge Michael Fysh QC.

Apimed's patent specification described a medical composition for a wound dressing made mainly of honey, which was combined with a "gelling agent" so as to result in a flexible sheet or pliable putty that could be made to fit a wound. The specification gave examples, the majority of which used sodium alginate as a gelling and viscosity increasing agent. Judge Fysh found the patent to be technically simple: the skilled addressee, who would already be carrying out  research and development of contemporary surgical dressings, could rely upon a consultative combination with persons concerned with the in situ treatment of wounds with commercially available dressings such as tissue viability nurses and specialist consultants. According to the judge, the skilled addressee did not include alginate chemists, rheologists, epidemiologists, materials scientists or honey experts. Judge Fysh then construed the phrase "natural based gelling agents" as meaning not only agents causing the honey to form a gel, but also agents causing an increase in the viscosity of the honey sufficient to allow it to be made into a putty or rolled sheet. Finally, based on evidence from (i) a tissue viability nurse that she had been adding honey to alginate dressings for approximately 10 years before the patent date, and (ii) an earlier article about the role of honey in the management of wounds, the patent was obvious because the availability of alginate dressings was commercial and their use was common general knowledge.

Allowing Apimed's appeal, the Court of Appeal (for whom Lord Justice Kitchin delivered the judgment) took the view that Judge Fysh had accepted expert evidence that an obvious way to address the application and retention of honey was to make it thicker by use of a thickening agent, and that alginate was an obvious candidate because of being commonly used in the wound environment. However, he had not considered that the only way alginate was used in the wound environment was in the form of calcium or sodium-calcium alginate pads, which did not act as a gelling agent as called for by the claim. The Court of Appeal drew attention to the words of Mr Justice Kitchin (as he then was) in Abbott Laboratories Ltd v Evysio Medical Devices UCL [2008] EWHC 800 (Pat), [2008] RPC 23, where he said (at para 180):

" ...  It is also particularly important to be wary of hindsight when considering an obviousness attack based upon the common general knowledge. The reason is straightforward. In attacking a patent, attention is focused upon the particular development which is said to constitute the inventive step. With this development in mind it may be possible to mount an attack which is unencumbered by any detail which might point to non obviousness: Coflexip SA v Stolt Comex Seaway Ltd (CA) [2000] IP&T 1332 at [45]. It is all too easy after the event to identify aspects of the common general knowledge which can be combined together in such a way as to lead to the claimed invention. But once again this has the potential to lead the court astray. The question is whether it would have been obvious to the skilled but uninventive person to take those features, extract them from the context in which they appear and combine them together to produce the invention".

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.

Evidence in process patent infringement proceedings: can you help?

PatLit publishes this evening a reader's request for information:

"In process patent infringements the problem is that the patent holder has considerable problems in presenting evidence on the process actually used by the alleged infringer. In some cases the reversed burden of proof in TRIPS Article 34 (or rather its domestic implementation) may be applied. This does not however resolve the problem. The alleged infringer is usually more than eager to present evidence (via expert witnesses) that the process used is completely different from the patented process. The patent holder and the court may naturally rely on these expert witnesses, but due to risk of bias, since the witnesses have been called by the alleged infringer, the best way to resolve this evidentiary problem would be for the court to engage an independent expert who would visit the plant in order to find out what process has been used.

Now to my question: I have heard that Mr Justice Laddie may have used this type of independent expert at least in one case where the process was located in India. Have I been misinformed or is there such a case?"

Does anyone know? If you do, can you please post the response below so that all PatLit readers can share it?