Preparing The Expert Report In A Patent Case ' A Collaborative Exercise To Be Approached With Caution

• Published date: 20 December 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Bereskin & Parr LLP
• Author: Mr Adam Bobker

The recent trial decision in Rovi Guides v. Bell, 2022 FC 1388 is an exceptional case that proves the rule that the preparation of expert evidence in a patent case is necessarily a collaborative exercise between technical expert and patent counsel. At the same time, the expert is ultimately the sole author of his or her report and must be, and be seen to be, objective and impartial. ^[1] If an expert report is partisan, it may be exposed as such in cross-examination. In this latest Rovi decision, it came out on cross-examination that the expert's report included passages from a different expert's report, without attribution. The Court described this as "plagiarism pure and simple" and said it "puts into real doubt the impartiality and independence of the expert". The Court did not exclude the expert's evidence, but it undermined its weight.

The Court in Rovi cited Moore v. Getahun, 2015 ONCA 55 which commented on the role of counsel in preparing expert reports in patent cases at [55] - [59]. There, the Ontario Court of Appeal cited Medimmune Ltd. v. Novartis Pharmaceuticals UK Ltd. [2011] EWHC 1669 (Pat), for the proposition that "in ... patent law, expert witnesses "require a high level of instruction by the lawyers" which may necessitate 'a high degree of consultation' involving an iterative process through a number of drafts."

The Court of Appeal repeated the caution from Medimmune, however, that since "this process entails a risk of loss of objectivity on the part of the expert," it is "crucial that the lawyers involved should keep the expert's need to remain objective at the forefront of their minds at all times." The Advocates Society, which was an intervener in the Moore v. Getahun appeal, had published Principles Governing Communications with Testifying Experts, which the Court of Appeal said, "provides a thorough and thoughtful statement of the professional standards pertaining to the preparation of expert witnesses". These Principles are an appendix to the Moore v. Getahun decision.

For patent litigation counsel, the Medimmune decision contains a patent focused discussion of the process of working with an expert to prepare their report. The discussion includes the following useful points:

1. Consultation is proper. Nevertheless, the expert's report should be, and should be seen to be, the independent product of the expert uninfluenced as to form or content by the exigencies of litigation.^[2]
2. Counsel should ensure that the expert is properly...