Mr Justice Birss shines light on experiments and scientific advisers in English patent litigation

The AmeriKat keeping herself entertained with
chemistry jokes while her opponent conducts
repeat experiments

In her first week of law school well over a decade ago, the AmeriKat read her first English court judgment.  It was most likely some classic tort or contract case (see Carlill v Carbolic Smoke Bomb or Caparo v Dickman).  Having read the first few pages, the AmeriKat recalls stopping, looking up to the creaking bookshelves lining the balcony walkway and thinking "I must be missing something".  And indeed, she was.  She was missing all the years leading up to the decision - the party-party correspondence, interim hearings, evidence preparation, experiments, surveys, expert reports and trial.  Now, with hindsight, had she been aware of the procedural rigmarole, the often tediously boring cases would have come alive. Without this procedural context, law students may often not be live to the importance of interim hearings in shaping a case.  Thus, the AmeriKat took note on Wednesday when she read the interim decision of Mr Justice Birss in Electromagnetic Geoservices v Petroleum Geoservices  [2016] EWHC 27.

The decision is jammed packed with meaty case management issues and some useful reminders for those engaged in the wonderful world of:

• experiments (permission granted for the defendants to rely on the experiments to prove facts)
• scientific advisers (adviser to be appointed for pre-reading teach-in)
• allocation of patent cases to judges (explanation of our esoteric ratings system)
• amendment of pleadings to bring in acts that have a foreign element (permission granted, but at the claimant's risk in the event that if additional disclosure is required on such acts the issues may have to be hived off for determination after trial).  
• permission to cross-examine a witness (permission granted but in respect of matters contained in the statement subject to the hearsay notice)

Background

No CEM needed to find the oil in this case

At issue between the parties is the Claimant's patent EP (UK) 1 256 019 entitled "Method for determining the nature of subterranean reservoirs". Electromagnetic Geoservices (the Claimant) claims that Petroleum (the Defendant) infringes its patent. Petroleum says the patent is invalid.   The patent relates to a method of finding hydrocarbons (oil or gas).  The patent was previously upheld as valid by the Court of Appeal following an action between Electromagnetic and Schlumberger.  In the UK Court of Appeal's decision, Lord Justice Jacob explained that the solution to the problem of how to find oil was solved by the patent in providing a method of using marine Controlled Source Electromagnetic (CEM) surveying on a previously identified layers to determine if it contained oil.  Identifying the layers by seismic methods is problematic in that although it can distinguish between rock and fluid, it cannot distinguish whether that fluid is oil (good) or water (bad).  But because water and oil have different electromagnetic (EM) properties, using an EM field assists.  The claim at issue requires the transmission of the EM field and its reception and "seeking, in the wave response, a component representing a refracted wave."  In crude language, the refracted wave will flow faster and more strongly through oil than through water.

The parties are also involved in parallel proceedings in Norway where the patent was found invalid for lack of novelty in February 2015.  This judgment is subject to appeal.   In that case, the parties submitted expert evidence which included the results of computer modelling.  The computer simulation modeled, for example, what happens when an EM field is applied to a model strata.  In the English proceedings, the computer model was held to be subject to the Notice of Experiments regime (see Connsafe v Emtunga [1999] RPC 154).

Take home points

The case makes for an interesting read as to how the Patents Court will approach various case management issues.  Although the AmeriKat could regale readers with the ins-and-outs of the arguments on the facts (and she is sure you would all be incredibly interested), the more valuable parts of the decision to her are where Mr Justice Birss gave general guidance on experiments, scientific advisers, judge allocation and cross-examination.  She summarizes these points as follows:

Experiments

How many can you properly identify?

1. Notice of Experiments, as used in patent ligation, are essentially a Notice to Admit Facts.  The facts are those which are proved by the experiment.   
2. A Notice of Experiments must comply with Civil Procedure Rule's Practice Direction 63 7.1:  a party seeking to establish any fact by experimental proof conducted for the purpose of litigation must serve a notice "stating the facts which the party seeks to establish".  
3. The "notice" element refers to the fact that it is a notice that an experiment will be done to prove the facts (unless admitted). That experiment is usually the "repeat" experiment (the first experiment will have been done internally when preparing the Notice).  
4. Complying with this rule requires the parties to know what role the experiments have in the case and the facts the experiment is intended to prove.  Setting these out in the Notice, lets the other party and the court know what the point is of the experiments.  
5. This makes it easier for the court to make appropriate case management directions with respect of the notice, namely in giving permission for the party to rely on the experiments to prove the facts.  
6. The court may allow a party to rely on the first unwitnessed experiment (the one conducted to prepare the Notice) but the permission to rely on the experimental evidence is generally in respect of the repeat experiment.  The court may decide that a repeat is disproportionate but that is another matter.  Parties should cater for repeats in their litigation timetable for this reason.  
7. Importantly, if a party changes its case but wishes to rely on the same experiment to prove something different, they may need permission to amend the Notice (see for example, the issue that occurred in Molnlycke v Brightwake [2011] EWHC 140).  
8. When asking the court to make further directions with respect to experiments, the party relying on the experts must explain to the judge, even if in the most broad language, what role the experiments play in the case.  
9. The Notice is important, but so is the requirement that the other party properly responds to the Notice.  
10. If the responding party admits the facts in the Notice, the experiment need not be relied upon.  If the experiment is still relied upon, it may point to something else being proved by the experiments which is not in the Notice.  

Scientific Adviser

As long as what you say is transparent,
there should be no problem....

1. Scientific advisers can be appointed to assist the Patents Court under section 70(3) of the Senior Courts Act 1981.  These rules are set out in paragraph 5.10 and r35.15. of the Civil Procedure Rules Practice Direction 63.  The role of the adviser or assessor is set out in Halliburton v Smith [2006] EWCA Civ 1599.  
2. The scientific adviser's perception must be that of a fair minded and reasonable observer who helps the court evaluate the technical evidence.  The adviser must ignore all extraneous opinion and noise. 
3. There can be concerns about the transparency of the information the court is receiving from the scientific adviser, especially in relation to points in dispute between the parties.  
4. These concerns can be addressed (usually at less cost), by the appointment by the Patents Court of a technically qualified person from the UK Intellectual Property Office (as was done by Laddie J in PCME v Goyen [1999] FSR 801, by Floyd J (as he then was) in Qualcomm v Nokia [2008] EWHC 329 and by Pumfrey J in Nokia v InterDigital [2007] EWHC 3077 who was given a two day technical tutorial).  
5. Any written materials produced by a scientific adviser for a judge's "teach in" should be provided after the introductory course has taken place.  This allows the parties to comment on the materials at trial.  

Judge allocation

The judge allocation roulette - who could it be?
You won't know until a couple days before trial
(if you are lucky)....

1. For those unfamiliar with the English Patents Court, the court operates a technical rating system from Category 1 to Category 5, with Category 5 the most technically (not legally) complex.  The purpose is to allocate patent cases to the appropriate judge.  
2. As emphasized by the judge, the system "does not and is not there to allocate cases to individual judges, it exists because the Patents Court has the benefit of judges with different kinds of experience and seeks to make the most efficient use of the available judicial resources"(Merpel wonders if there is also a warning not to judge shop by trumping up your technical rating somewhere in there...).   
3. Even where a case is allocated as a Category 4/5, it does not mean that a Category 4/5 judge will always hear that case - they may be unavailable.  At the moment, the Category 4/5 judges are Mr Justices Arnold, Birss and Carr  - or, as Merpel is calling them, the ABCs of the English Patents Court.  In the previous case concerning this patent, Schlumberger v EMGS, Floyd J was down to hear the case but things changed before trial and the case had to be heard by Mann J.  Mr Justice Mann was assisted by a scientific adviser (as was the Court of Appeal) (see above). 

Cross-examination of hearsay evidence

Mr Justice Birss - tackler of case
management issues, keeper of bees

Mr Justice Birss also grappled with the ability of a party to cross-examine a witness whose statement is subject to a Civil Evidence Act (hearsay) notice on matters not confined to the "contents of the statement" as per CPR 33.4(2).  The corresponding statutory provision - section 3 of the Civil Evidence Act 1995 - is not limited to the contents of the statement but refers to giving leave to the other party to call the witness to cross-examine him on the statement "as if he had been called by the [party serving the notice] and as if the hearsay statement were his evidence in chief".  This is wider than the CPR provision.  However, the judge held that the CPR rule was not an accident.  He stated:

"If the cross-examining party could cross-examine more widely they would be able to introduce new evidence, effectively in chief, on new topics not foreshadowed before, whether in a witness statement or otherwise and do so using the techniques of cross-examination. What would happen then? Would the party serving the original notice then be able to cross-examine its own witness on these wider issues but only re-examine on the issues in the hearsay notice? That is a recipe for confusion. Leading new evidence in chief in this way could be unfair to the party serving the hearsay notice who may have had no notice of any of it. In my judgment that is likely to be why the rule was drafted as it was. So the cross-examination permitted by an order under r33.4 is cross-examination confined to the contents of the statement. No doubt that could include matters going to credit but the permission given under the rule does not extend more widely. No doubt the court could, in the exercise of its overall case management powers, permit wider cross-examination in a proper case but to do so would require careful consideration of the consequences. Turing to this case, I am satisfied that cross-examining under the rule is appropriate, given Mann J's approach to Dr Eidesmo's evidence. I am not satisfied that cross-examination on a wider basis is made out on this application."

The AmeriKat commends readers to keep this decision to hand as it provides useful guidance on patent procedural issues.  And to law students across the country, a suggestion - make that tedious case you are reading come to life by paying a trip to the Rolls Building where you can see the fate of cases unfold in front of you!