Evidence: expert witnesses, primers and process descriptions

Expert witnesses; and primers and process descriptions and time estimates; and use of evidence in foreign proceedings

The responsibilities of, and the weight to be given to the evidence of, expert witnesses.

In Cartonneries De Thulin SA v C T P White Knight Limited the judge pointed out that obviousness is for the court, “A jury question”. Earlier cases do not say that an obviousness attack must fail if the only expert witness states that the alleged invention is not obvious. Despite the witness, the judge found the patent obvious.

In Scanvaegt International A/s v Pelcombe Limited the Court of Appeal said that as none of the expert witnesses were experts on construction of patent specifications, they could not give worthwhile evidence as to their meaning. Claim construction is for the court. The court quoted with approbation Lord Tomlin in British Celanese Limited v Courtaulds Limited.

Primers; and accuracy in product and process descriptions; and accurate time estimates.

In Chiron v Evans Medical the judge repeated the Courts’ comments on the importance of primers and the parties’ duty to do what they can to limit the areas of dispute and to help the Court understand the science involved. The Judge considered that a properly drafted primer helps to achieve these objectives. The Judge stated that it would be much better if the parties attempted to agree the contents of a primer before it is submitted to the court; and that this should have been prepared and approved in time.

In Hoechst Celanese Corporation v BP Chemicals the judge complained at the failure to produce a primer explaining the technology at all.

In PIFCO Limited v Philips Domestic Appliances and Personal Care B.V. and Another Philips gave a process description instead of discovery of the allegedly infringing method of manufacture. During trial it became clear that a new process description was needed. When the trial resumed its complexion had changed substantially.

While refusing to allocate blame, the judge pointed out that it does provide a useful lesson in the preparation of process descriptions. The rule requires a product or process description to include “full particulars of the product or process alleged to infringe, including if necessary drawings or other illustrations”. The criterion by which the adequacy of such a description is to be judged is whether it provides enough information for the court to arrive at a “yes/no” answer to the issue of infringement. Experience is beginning to suggest that the main problem with descriptions is that they contain factual inferences without setting out the primary facts from which the inferences have been drawn. The Defendants operated two machines. These functioned in different ways. Not until the new process description had been prepared, was it possible to deal satisfactorily with the issue of infringement.

In Consafe UK Engineering Ltd v Emtunga UK Ltd the judge pointed out that a product description must include “full particulars of the product or process alleged to infringe”. “Full particulars” means particulars sufficient to enable all issues of infringement to be resolved to avoid discovery.
In Visx v Nidek the Court expressed its concern at the gross underestimate given of the time required for the hearing of an appeal and castigated Counsel as a result.

Use of evidence in foreign proceedings

Open Litigation (I)

In Visx v Nidek, the Court of Appeal was asked to decide whether evidence given in US deposition proceedings and interrogatories answered in the US were privileged. The information in the depositions and interrogatories would allow the Defendants to plead prior disclosures which might render a UK patent invalid.

The Court of Appeal stated that while “No doubt the depositions came into existence for the purposes of litigation...but in the presence of both parties...It was not in the public interest...to exclude from disclosure these depositions when they are not privileged in the US and privilege has not been claimed in Canada”.

The Court held “a document containing answers to Interrogatories which is served upon another party is not a privileged document…The answers may be confidential and restriction may be placed upon disclosure, but the document is no more privileged than is a pleading”.

Open Litigation (II)

However, in SmithKline Beecham Biologicals SA v Connaught Laboratories Inc SmithKline sought to use documents obtained in English proceeding for the EPO and in the Japanese Patent Office.
Connaught resisted on three grounds.

• The disclosure sought would be a clear breach of the confidentiality agreement between the parties.
• Such disclosure would breach the implied obligation of confidence which applies to all discovery documents.
• This is a case where even at this stage it would be appropriate to make an order to apply the provisions of Order 24, Rule 14A. [Maintaining the confidentiality restriction on discovery documents read in open court].

It was agreed between the parties that the documents which SmithKline wished to disclose were subject to the implied obligation of confidence and were covered by the confidentiality agreement, at least initially.

The judge had only read the various papers in his room. The proceedings in court were no different from a notification in open court following a hearing in camera. SmithKline had failed to show that the documents they wished to disclose had been read in open court and fell within Rule 14A. Without leave the implied obligation of confidentiality continued to apply.

As to the confidentiality agreement, while it was not strictly necessary to decide the point, the judge took the view that, once the conditions of Order 24, Rule 14A are met and the documents have been read in open court even if the parties have agreed to the contrary, given the interests of the public, it is almost inevitable that the Court would direct that confidentiality was lost.

Finally the judge refused to give leave to use the discovery documents outside the litigation in which they were disclosed. (Leave will only be given in special circumstances and where the release will not occasion injustice.) The judge did not think it would be right to release documents which otherwise would be under an embargo so as to supplement the material before a foreign court or tribunal because he has been told that without it that court or tribunal was incapable of doing justice. There is no suggestion that the EPO or the Japanese Patent Office feel that there are inadequacies in their procedure which need supplementing by an injection of selective discovery from the United Kingdom.