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

• Published date: 20 December 2022
• 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...