The Intellectual Property Appellate Board (IPAB) has made many attempts to examine facts in individual cases using expert evidence to prove technical and complex facts and to set the tone for the future conduct of litigators using expert evidence.
In Fresenius Kabi Oncology Limited v Glaxo Group Limited and Anor (2013), the IPAB observed that, “we might seek the opinion of independent experts appointed by us as neutral witnesses”. This decision was prompted by an earlier critical observation by the IPAB, “We have found that when the parties furnish expert evidence, predictably the opposite side attacks the evidence. We thought this problem would be obviated by the appointment of a court witness.”
In this case, the IPAB could not do so as both the parties proposed different names. While the applicant came up with names of scientists in India, the respondent recommended names of scientists living abroad.
On appointing experts, the IPAB recommends that the expert should be agreeable to both the parties. The fees should be shared by both parties and handed over to the expert by the IPAB. “Each party paying the scientist of their choice will be an exercise in futility,” the IPAB had said.
“In the days to come, the need for such court experts will arise more frequently … [the IPAB] hopes that the members of the bar will assist the IPAB in working out a viable solution for this problem as officers of court instead of as spokespersons for the clients.”
It observed that the expertise of these scientist-witnesses will enhance the quality of the orders, putting the role of expert testimony on a higher pedestal in patent litigation and laying down the procedure to be followed and explaining what the neutral expert is expected to do.
“When we appoint a neutral witness, we would be giving the expert, the copies of the complete specifications, the prior arts and other evidence referred to by both sides. The pleadings will not be given … [the court will] request the expert to examine the materials and give his opinion on the lack of novelty, obviousness, and insufficiency,” the IPAB wrote. Copies of the expert’s opinion will be shared with counsel for both parties for their comments.
“This expert opinion will only assist us and will not bind us, ” the IPAB said.
In the Fresenius Kabi case, IPAB did not appoint an expert as the parties failed to agree on the expert suggested by the board. It, however, allowed parties to approach the IPAB when they had reached an agreement.
In Tata Global Beverages Limited, West Bengal v Hindustan Unilever Limited, the IPAB highlighted the ways in which the evidence should be presented. The IPAB said that the verification clause in an affidavit is essential, but if it is not properly drafted, the error lies on the part of the advocate.
Each expert gives his opinion and reasons, and the court or the board can decide how relevant the evidence is. The experts are respected academicians in their fields and the mere absence of verification in the affidavit may not prevent the board or court from taking the expert evidence into consideration as it will be against the principle of natural justice. The members of the bar should be cautious to avoid such errors when they draft affidavits for experts, the IPAB said.
Conflicting expert evidence
The question of relying on expert evidence is much more complicated than it is understood. The Indian Evidence Act, 1872, permits the court to rely upon the opinions of experts in their field, and the Patents Act permits the court to appoint an independent scientific advisor under section 115 to assist it upon any question of fact or of opinion not involving a question of interpretation of the law. The expert evidence will not work in cases where two experts are at odds on the technical issue. In such cases, the adjudicator can seek the help of an independent expert.
There are inherent difficulties that must be dealt with by patent adjudicators before the issue to hear or credit the expert testimony is finally resolved by the Supreme Court. If the Supreme Court decision in the Monsanto seeds case becomes the rule for expert evidence, then no lower court would shoulder the responsibility of deciding for themselves questions of infringement without the testimony of an expert even in the simplest of the cases.
Patent adjudicators will now be cautious in dealing with expert evidence and may be more amenable to seeking expert evidence in future cases to establish complex scientific facts.
DPS Parmar is a special counsel with LexOrbis’s IPAB practice group.
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