Changes To Expert Witness Rules In Patent Litigation: What Are The Effects On Current Litigation In Canada?

Changes To Expert Witness Rules In Patent Litigation: What Are The Effects On Current Litigation In Canada?

Ken Anderson is a JD Candidate at Osgoode Hall Law School and currently enrolled in Professor Ikechi Mgbeoji's Patents course, in Fall 2011. As part of the course requirements, students are asked to write a blog on a topic of their choice.

In August 2010, amendments to the Federal Courts Rules respecting expert witnesses came into effect. The rule changes reflect an attempt to accomplish three broad goals: (1) promote expert impartiality, (2) provide mechanisms to better enable courts to understand and identify scientific issues at stake, and (3) stream-line the litigation process.

Nowhere were the amendments expected to have a greater impact than in the scientifically complex world of patent litigation. Issues inextricably linked to expert witnesses routinely make or break patent claims, such as identifying the “person skilled in the art” or determining whether claims sufficiently demonstrate “promised utility” which, according to the Federal Court of Appeal, generally requires the assistance of experts. The amendments were strongly debated and met with a range of criticism. One year later, although some insight into the operation of the new rules has been provided, the debate remains largely unresolved because the more controversial measures have yet to be put to use.

A Code of Conduct for Expert Witnesses was added as a schedule to the Rules, informing experts of their general duty to assist courts independently and objectively. It also sets out guidelines on expert reports, instructing experts to identify their reasoning, scientific research, and assumptions underlying their opinions. Similar measures to encourage impartiality and forthrightness in experts were key recommendations of the high-profile 2008 Goudge Inquiry. The Code was met with relatively little debate, likely because no enforcement mechanism was included.

The legal significance of the Code’s impartiality obligations were at issue in Hospira Healthcare v Eli Lilly Canada. The appellant argued that an employee of the respondent was ineligible to appear as an expert because it violated the Code’s explicit mandate of independence. The Federal Court of Appeal rejected this submission, reaffirming the common law practice that independence affects the weight attributed to evidence, rather than admissibility. The impartiality obligations of the Code do not appear to contain any special legal connotation and are unlikely to have significant impact on patent litigation.

Another amendment requires counsel to raise “known objections” to the admissibility of a party’s expert at the pre-trial conference; the hope being that trial would proceed more efficiently if evidentiary arguments were already settled. The Intellectual Property Institute of Canada (IPIC) did not disagree in principle with this measure; rather, it recognized a timing issue. Admissibility is generally dependent on the content of an expert’s testimony, which is contained in the expert report. Yet under the Rules, reports must be issued to opposing counsel at least 60 days before trial, well after the pre-trial conference would have concluded.

The Supreme Court of Canada weighed in on the timeliness of objections to the admissibility of expert evidence in Masterpiece  v Alavida Lifestyles. Although much of the judgement is specific to trademark confusion, the Court’s message was clear enough: the admissibility of evidence is an issue to be determined early in trial or, ideally, during pre-trial case management. In other words, case conferencing judges and counsel ought to strive to cooperate with the new rule.

A more contentious rule change is the new discretionary power of courts to order experts to confer before trial, with or without the presence of counsel, and to provide a joint statement. Ideally, this is an early opportunity for experts to narrow the technical issues in question.  However, the most controversial amendment is an Australian import known as “hot-tubbing.” The court may order experts to form a panel during trial and experts may direct questions to other panel members with leave of the court. Supporters, including Binnie J., contend that hot-tubbing makes it easier for judges to identify subtle differences between expert opinions, and that experts are more likely to exercise greater responsibility and caution while in the presence of colleagues. However, many IP litigators feel the new practice is counterproductive in that it rewards more vocal and aggressive experts. Further, the IPIC also strongly opposed hot-tubbing because it requires an unacceptable amount of judicial intervention, it decreases the effectiveness of cross-examination, and it risks experts acting as advocates.

The case of Pfizer Canada  v Mylan Pharmaceuticals offers some insight into this debate. Effective pre-trial management and cooperative counsel successfully narrowed a technically complicated patent case down to a single issue for trial. There is no mention of whether the new power of the court to arrange pre-trial conferencing of experts was used in this case, thus the result suggests that efficient resolution of complex technical issues may not require pre-trial expert conferencing. On the other hand, if the procedure was used, it could reflect the value of the new procedure. Moreover, a considerable portion of this decision was dedicated to the court’s analysis of the evidence presented by five experts and their cross-examinations. This outcome may demonstrate that the traditional adversarial system is already effective at assisting judges in determining expert evidence. In other words, hot-tubbing may not provide any meaningful assistance for its stated purpose. That being said, the amendments’ full potential to impact patent litigation, especially hot-tubbing, remains inconclusive.