Being picky when choosing experts and preparing evidence properly
By Michael Smith

Success in a patent case is often closely related to the strength of the expert evidence heard by the court. There are many ways that expert evidence may be undermined, such as where an expert has prior exposure to the patent in suit, where evidence does not comply with the rules of the court, or where an expert’s skills and background make them too inventive. Some of the demands of properly prepared evidence may seem counter-intuitive, like when a less skilled expert is preferred to a more skilled one with a proven record of ingenuity in the relevant technology. However, the fine balance in choosing experts and properly preparing expert evidence starts to make more sense when one considers the questions which experts are required to answer, such as which improvements over existing technology would be obvious to the average person skilled in the art?

The Federal Court judgement in Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (No 2) [2013] FCA 279 (‘Bayer No 2’) delivered in April this year further supports the notion that in preparing patent cases, patent lawyers should be picky when choosing experts. The case related to a patented pharmaceutical used in a contraceptive. Bayer alleged that Generic Health infringed its patent, and in response Generic Health claimed that the patent should be revoked.

In Bayer No 2, the evidence from one of Generic Health’s expert witnesses, Dr James Rowe, was substantially discredited and this impacted the result of the case which was ultimately decided in favour of Bayer.

To put the matter in context, Dr Rowe was a very experienced expert having over 30 years of experience and multiple degrees in the relevant field (pharmaceuticals), and had actually provided expert evidence in 1998 in an earlier matter before the courts concerning a similar technology. However, it was precisely Dr Rowe’s involvement in this earlier matter which created problems for Generic Health.

The judge in Bayer No 2, Justice Jagot, found three significant inconsistencies between statements made in Dr Rowe’s 1998 evidence and his current evidence. Justice Jagot therefore considered the weight of Generic Health’s evidence to be undermined, making it easy for the judge to prefer the evidence from Bayer’s expert, Professor Davies. It is also worth noting that the judge did not respond well to the fact that Dr Rowe had been provided with Bayer’s patent at the outset of his engagement, thereby bringing into question whether Generic Health’s evidence had been affected by the “seductive clarity of hindsight”[1].

As an interesting sidenote to this case, in an interlocutory argument between the parties,[2] Generic Health sought to rely on an affidavit from Mr Burgess who had observed an experiment undertaken by a company in India in September 2012. It appears that this affidavit contained evidence of great importance that could have changed the outcome of the trial. In the end, however, the affidavit was not admissible because Generic Health failed to comply with a court rule which governs the admissibility evidence regarding ‘experimental proof of fact’[3]. This rule required Generic Health to apply to the court and obtain certain orders before the experiment was conducted. Since Generic did not comply with the rule, Mr Burgess’ affidavit was not allowed to be considered by the court.

In summary, the dispute between Bayer and Generic Health shows the multi-faceted nature of properly prepared expert evidence in patent matters, that choosing experts is a nuanced task and that evidence to be relied upon in court should always be prepared by the book.

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[1] See Alpharpharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618, at [21].

[2] Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (No 2) [2013] FCA 226.

[3] Federal Court Rules 2011 (Cth), r 34.50.