Shakeup in evidence preparation for patent oppositions

By Wayne Condon.

Key Points:
A party in a patent opposition case had to turn over to the other side drafts it had given to its expert witness.

A recent decision by the Deputy Commissioner of Patents in Warner Lambert Company v Cardinal Health, Inc [2006] APO 14 is likely to lead to a change in practice in the preparation of expert witness evidence in patent oppositions.

The patent applicant requested the Commissioner to issue a notice to the opponent to produce:

• All documents sent by the opponent or its representatives to [one of the expert witnesses relied upon] regarding preparation of evidence in support of the opposition, including instructions given to that expert.
• All of the expert's written responses including drafts of declarations.
• All documents sent by the opponent or its representatives to [the second expert] regarding his utility experiments including all instructions on what experiments were considered or required.
• All of the second expert's written responses including drafts of declarations.
• All file notes and memoranda made by the opponent or its representatives relating to the preparation of the declarations [of the two experts relied upon].

The Commissioner has power to require production of documents under section 210 of the Patents Act 1990. The Deputy Commissioner considered that the standard of preparation of expert evidence in matters before the Federal Court should apply equally in proceedings before the Commissioner. The Deputy Commissioner particularly referred to the expert witness guidelines which apply in the Federal Court and, in particular, to guideline 2.7 which states;

"There should be included in or attached to the report;

(i)   a statement of the questions or issues that the expert was asked to address;

(ii)   the factual premises upon which the report proceeds; and

(iii)   the documents and other materials which the expert has been instructed to consider."

The Deputy Commissioner was aware of the common practice of providing expert witnesses in patent opposition proceedings with drafts of their declaration which they are asked to agree to or not. The Deputy Commissioner expressed the concern that this may lead to a reasonable inference that the draft may have influenced the expert with the consequence that the effect of those drafts on the expert's opinion should be open to scrutiny. The opponent's objection to production of the requested documents on the grounds of privilege was therefore rejected and the opponent was required to produce the documents.

This decision seems to be entirely appropriate and is obviously consistent with the Federal Court expert witness guidelines which apply in respect of litigation commenced in that Court. Although the argument was advanced by the opponent that, as a matter of public policy, patent opposition proceedings should be run expediently and inexpensively, this was no reason, according to the Deputy Commissioner, to justify a different standard of evidence preparation to that which would apply in a court.