Expert Evidence in Patent Litigation Nisha Anand, Partner Slides by John Durland

Table of Contents Weighting Experts’ Evidence: Expert Blinding Testimony Expertise Process Relationship to party Expert Blinding

Weighting Experts’ Evidence

How are experts commonly discredited? Testimony Expertise Process Relationships

Eurocopter v. Bell Helicopter Textron Canada Ltee, 2010 FC 1328 Weighting Experts’ Evidence Expertise Courts have been quick to discredit evidence where the expert steps beyond their expertise. An expert cannot: Eurocopter v. Bell Helicopter Textron Canada Ltee, 2010 FC 1328 Opine on areas of domestic patent law,1 Offer an opinion on construction where not qualified as POSITA,1 Make conclusions on infringement,2 Become an expert for the sake of a proceeding,3 and Exceed their qualifications.4 1. Eurocopter, 2010 FC 1328. 2. Halford v. Seed Hawk Inc., 2001 FCT 1154 at para 25. 3. Eli Lilly Canada v. Apotex Inc., 2007 FC 455 at para 205. 4. Dow Chemical Company v. Nova Chemicals Corp., 2017 FC 350 at para 35. Admission of expert evidence depends on: Relevance, Necessity in assisting the trier of fact, The absence of any exclusionary rule, and A properly qualified expert

Weighting Experts’ Evidence Process Judicial commentary has emphasized the need for methodical, scientific, and impartial preparations made by experts. Experts have stumbled where: Viewpoints were unsupported by evidence or unduly speculative,1 Conceptual mistakes were made and later attempts at correction made,2 Improper and unscientific tests were conduct,3 Materials were prepared entirely by counsel,4 Counsel may collaborate in drafting expert reports, but reports must remain independent product of expert,5 Where underlying factual assumptions could not be proven,6 Instructions were not understood,7 and A results driven approach was taken.8 Assistance going to form not substance has long been an acceptable practice of counsel,1 Practice points have been developed by the federal court,2 including: Counsel may help focus a report on the relevant issues; Report should be the independent product of expert uninfluenced by exigencies of litigation; Experts should conduct their own prior art searches and other important research; English law on experts in patent litigation has been cited with approval by provincial courts,3 and Provincial courts have also added substantively to the judicial conversation on drafting:4 Counsel involvement in preparing, drafting, reviewing, and editing a report is to be encouraged; and The independence and objectivity of expert witnesses is fostered under existing law and practice in a number of ways 1. Surrey Credit Union v. Wilson (1990), 45 BCLR (2d) 310 at para 25; Janssen Pharmaceutica Inc. v. Apotex Inc., 2001 FCA 247 at para 53. 2. Dimplex North America Ltd. v. CFM Corp, 2005 FC 586 at para 44; Eli Lilly & Co. v. Apotex Inc., 2009 FC 991 at para 62; Uponor AB v. Heatlink Group Inc., 2016 FC 320 at para 203. 3. MedImmune Ltd. v. Novartis Pharmaceuticals UK Ltd., [2011] EWHC 1669. 4. Simon v. Canada (Attorney General), 2018 ONSC 3741 at para 55; Moore v. Getahun, 2015 ONCA 55 at paras 56-61. 1. Dow Chemical Company v. Nova Chemicals Corporation, 2017 FC 350 at para 35; AstraZeneca Canada Inc. v. Apotex Inc., 2017 FC 726 at para 135. 2. Excalibre Oil Tools Ltd. v. Advantage Products Inc., 2016 FC 1279 at para 102. 3. Fournier Pharma Inc. v. Canada (Minister of Health), 2012 FC 740 at para 126; Laboratoires Servier v. Apotex Inc., 2008 FC 825 at para 341. 4. Janssen Pharmaceutica Inc. v. Apotex Inc., 2001 FCA 247 at para 28 5. Dimplex North America Ltd. v. CFM Corp, 2005 FC 586 at para 44; Eli Lilly & Co. v. Apotex Inc., 2009 FC 991 at para 62; Uponor AB v. Heatlink Group Inc., 2016 FC 320 at para 203. 6. Pfizer Canada Inc. v. Apotex Inc., 2005 FC 1421 at para 125. 7. Pollard Banknote Ltd. v. BABN Technologies Corp., 2016 FC 883 at para 197. 8. Airbus Helicopters, S.A.S v. Bell Helicopter Texteron Canada Ltee, 2017 FC 170 at para 103.

Weighting Experts’ Evidence Testimony Testimony is the Court’s opportunity to vet any expert’s bias, and is often where an expert shows their true colours. Experts should avoid: Being advocates for their party’s case, Refusing to concede points that may be unfavourable to their party’s case, and Being quarrelsome, dogmatic and combative during examination. Eli Lilly Canada v. Apotex Inc., 2007 FC 455 at para 220; Merck & Co. v. Apotex Inc., 2005 FC 755 at para 64. Teva Canada Limited v. Janssen Inc., 2018 FC 754 at paras 121, 121 and 130. Janssen-Ortho Inc. v. Novopharm Ltd., 2006 FC 1234 at para 13.

Weighting Experts’ Evidence Relationships It’s okay to know each other, it’s not okay to be in cahoots. AstraZeneca Canada Inc. v. Mylan Pharmaceuticals ULC, 2017 FC 142 at para 72: “Suffice it to say that pharmaceutical experts often appear before the Court for the same party, and may have even been previously employed by that party. But this does not mean that they lack independence, and it certainly does not mean they are not impartial: to suggest that their opinions have been tainted by prior work or affiliations can only hold water with compelling evidence of the same.” Janssen Pharmaceutica Inc. v. Apotex Inc., 2001 FCA 247 at para 28: “…Dr. Van Lommen is said to lack the requisite independence to be considered an expert. He is a long-time employee of Janssen who have an obvious interest in the outcome of the proceeding. His evidence should therefore have been given little or no weight.” Ratiopharm Inc. v. Pfizer Ltd., 2009 FC 711: “I regret that I will give little weight to Dr. Cappucino’s evidence. His close ties with the generic pharmaceutical industry makes me apprehensive in placing substantial reliance on that evidence however well meaning his intent may have been.”

Expert Blinding

Blinding Preparing Experts This Photo by Unknown Author is licensed under CC BY-SA Blinding When considered, blinding goes to weight and not admissibility. During the teens of 2000, a bundle of precedent formed in support of blinding,1 These cases were predicated on the proposition that the “construction exercise should be carried out uninfluenced by knowledge of the invention claimed”,2 Working against this argument was the proposition that evidence needs to be directed to where the “shoe pinches”.3 More recently, the scope of expert blinding has been walked back:4 Shire: favouring the evidence of experts who have been blinded has not been raised to the level of a legal principle that must be applied in all cases, and is merely persuasive; Gilead: the blinding of a witness may be a factor, one of perhaps several, that goes to credibility and weight, but it is not a matter that goes to admissibility. 1. AstraZeneca Canada Inc. v. Apotex Inc., 2014 FC 638; Teva Canada Innovation v. Apotex Inc., 2014 FC 1070; Takeda Canada Inc. v. Canada (Minister of Health), 2015 FC 570; Allergan Inc. v. Apotex Inc., 2016 FC 344. 2. Teva Canada Innovation v. Apotex Inc., 2014 FC 1070 at para 85. 3. Shire Biochem Inc. v. Canada (Minister of Health), 2008 FC 538 at para 22. 4. Shire Canada Inc. v. Apotex Inc., 2016 FC 382 at paras 42-48; Gilead Sciences, Inc. v. Canada (Minister of Health), 2016 FC 856 at paras 32-36; Bayer Inc. v. Cobalt Pharmaceuticals Co., 2016 FC 1013 at para 64; MediaTube Corp. v. Bell Canada, 2017 FC 6; AstraZeneca Canada Inc. v. Mylan Pharmaceuticals ULC, 2017 FC 142 at para 77; Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2018 FC 259 at para 203.

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