Lifecycle of a smart idea | Prove it! The use of expert evidence in a global IP dispute

Ron: Hello. My name is Ron Dimmock and I'm an intellectual property litigation partner in the Toronto office of the Gowling WLG global law firm. Welcome. On behalf of my partners I welcome you to this webinar, the first in series of three about the evidence needed to prove your case, at trial, in a global IP dispute. This one is about the use of expert witnesses. The other two to follow, in the autumn, will cover the essential evidence to lead in a patent dispute on one hand and in a trademark dispute on the other. In our world it is becoming increasingly flattered, IP disputes are becoming wider. More global in nature. So as a global player in IP it is prudent to know the law and the practice in several key countries around the world. Today we will look at the practice and the law regarding the use of expert witnesses in the jurisdictions of the United States of America, United Kingdom, Germany, Canada and China. We are indeed fortunate to have our own legal experts in each of those five countries here to do just that. To explain how to use experts in IP cases. Before we begin the panel discussion I would like to introduce our moderator, Gordon Harris, who will then introduce the panel members to you and direct the discussion. Gordon is a partner in the UK team. He has worked in IP litigation for over 30 years and was head of IP in the UK for 25 years until just last year. He has conducted cases at every level in the United Kingdom and European courts, including the excursions to the Supreme Court of the United Kingdom and the Court of Justice, of course. From his many years of experience and success in IP litigation, Gordon has earned several glowing accolades from peers and competitors, including the remarkable moniker 'Eminent UK IP Practitioner'. To me he is Gowling's resident expert in IP litigation and a superb moderator to boot. So I turn it over to Gordon Harris.

Gordon: Thanks very much indeed, Ron, and I think for eminent read at all but anyway there we are. Welcome to this, the latest in our long running IP based webinar series, 'The Life Cycle of a Smart Idea'. I was fortunate enough to be the moderator at the very first of these events, just over a year ago, when we considered the question to rising up in the aftermath of the eureka moment and we've all covered a lot of ground since then. Today we're looking at the specific topic of expert evidence in global IP disputes. Good expert evidence that is thorough, persuasive and hard to attack can be the lead to the prompt to settlement. A good expert performance understand that deposition or during cross-examination can make or break your case. Now, there are a lot of complexities in this area and the cost and time involved in instructing experts could be so substantial that it is really rather important to get it right. Now to help us through this complex area of law and practice we have a panel of very experienced experts from around the world, including some new faces to the series, so let me introduce them to you.

First up from the United Kingdom we have Alex Brodie. Alex has been litigating patents before the UK courts since 1997. Her experience covers all areas of technology, from the simple all the way up to ... standard essential patents. She is currently acknowledged as one of the top ten tech advisors in the UK by Citywealth, has been repeatedly recognized as an influential woman in IP by WIPR and is one of the top 250 women in IP by managing intellectual property. She founded and co-heads our firm's Global Tech Sector group.

Over to Canada now for Sandra Barton. Sandra's a trial lawyer and a member of the American College of Trial Lawyers. She practices in Gowling's Toronto office. Although she practices primarily in commercial litigation/civil litigation she is regularly asked to work with our IP lawyers on complex IP disputes.

All the way up to China now for Ivy Liang. Ivy's a former IP Judge in our Guangzhou office. She's fully up to date with all the recent developments in Chinese IP law, from that capacity and the time she spent with us, and she assists domestic and foreign clients with a full range of services related to IP enforcement and litigation in China.

Last, but not least, to Germany for Michael Knospe. Michael practices as an IP litigator in his own firm these days in Munich in Germany. The financial Magazine, Handelsblatt, honours him for the fourth consecutive year in a row as one of the best lawyers in Germany in 2021 in IP and conflict resolution and IAM Patent refers to him as a battle hardened litigator and a true legal scholar with a razor sharp mind. He's listed in IAM 1000 as one of the world's leading patent lawyers and also by WTR for his trademark expertise.

Actually not last. We're now going back to America and delighted to have as a guest today, Alexander Brainerd, Lex to us, a fellow of the American College of Trial Lawyers. Lex was a trial lawyer for over 42 years. The last 20 years of his trial practice focused on IP disputes with a particular emphasis on patent litigation. Lex tried and litigated patent infringement cases in various jurisdictions throughout the United States. He's currently affiliated with JAMS as an arbitrator and mediator primarily dealing with IP disputes.

Now today I'm going to lead that team of experts through some very specific issues, which can be so important in the appointment and instruction of expert witnesses, with a series of questions to bring out the important points. You, are guests today, can add to those questions using the Q&A button at the bottom of the screen. Now if we don't manage to get through all of your questions at the end of the event we will comply a set of answers and circulate them to the audience after the event. So please feel free to ask away. At the end of our 1 hour session our panelists have bravely agreed to head into specific breakout rooms so you can join them to ask any follow up questions you would like to put. Some of you I think have already registered for that option but actually anyone can do so on the day and we'll come back to that later. I think we're going to post a link in the overall chat session right at the end. We're also going to ask some questions of you. I don't see why you shouldn't earn some of this so we'll ask some questions of you as we go along with a series of polls, using the polling system, and that's how I would like to start. So let's establish just how much experience of using expert witnesses we have in our audience. Have you ever been involved in retaining or instructing an expert witness for any IP proceedings in any forum? There's your optional answers and let's see how we go. A big majority for 'no' here at the moment so good. Everyone's got a lot to learn then. That's excellent. 'Yes in a patent action'. Very few people have used experts in trademark or copyright actions. So there we go. Now we know the background.

So to start with I want to take a global look at the reasons why expert witnesses can be so important and when they really add value. This gives me an opportunity to move around the world and I want to start with the common law jurisdictions and in particular in the US with Lex. When might you consider using expert evidence in US IP litigation? Maybe for now just, for you Lex, just focus on patents.

Lex: Sure. Well the answer is always. In the United States patent actions and intellectual property actions, in general, are almost always tried to a jury. As a matter of law juries need instruction on matters that are beyond their common understanding and knowledge. So in a patent action, for example, that's virtually everything they're going to hear. So we use experts almost exclusively covering subjects such as infringement, invalidity and damages. On the question of damages I just want to jump in here and say that there's going to be a little discussion today about whether one should use a professional expert or a non-professional expert. In other words, somebody who spends their entire professional career providing expert testimony and advice. For example, in the area of damages in the United States, every expert that testifies on the subject matter of damages is a professional expert. Either a professional accountant or forensic economists of some kind. In trademark cases you're going to get professional experts testifying, or experts testifying, about matters such as likelihood of confusion, that's also probably true in a copyright case. Also survey experts are used in patent cases to deal with the likelihood of whether the patented feature is utilized and the extent of which it's utilized. Experts in the United States are always, or almost always, retained by the lawyers and their clients. It's very rare when you get an expert witness that's utilized by the court. It's not to say the court couldn't retain or secure the services of an expert witness to assist the court in a matter of a particular technical expertise. I, for example, have served as a technical expert, so to speak, for the court in connection with a anti-trust case where I was asked to come in and rewrite and assist the parties in renegotiating a particular licence agreement that had found to be illegal as an illegal tie under a very famous anti-trust case in the United States. But the word in the United States is expert witnesses are used almost all the time in intellectual property cases because the cases are going to a jury and the jury needs the instruction of an expert witness in order to understand and get by the expert issues and the technical issues in the case.

Gordon: Thanks very much indeed. Thank you. Thanks, Lex. Let's move North to Canada. Sandra, when do you find it helpful to consider expert evidence in IP cases? I'm very happy to hear from you on either trademark or patent cases.

Sandra: For both I think you always start by turning your mind to first principles. By that I mean Canada experts are permitted to give evidence because the court needs help understanding evidence, scientific or otherwise, and/or they might need to understand the context in which the issues or dispute arose and the court doesn't have the expertise to understand it on their own. So in that case experts are required in all cases, pretty much, that involve scientific issues and in all patent cases because you want the judge to look at the patent through the eyes of the notional person skilled in the art. Patent cases, of course the type of issues you would look at are what is the invention? In other words how should the claim be construed? The tax law and validities such as the issue of novelty. Was the invention anticipated? And obviousness. Was the information available to the public and based on that information would someone skilled in the art have been able to execute it? Similar to Lex's response about trademarks in the States, you may not always need experts to assist in deciding issues of confusion but certainly survey evidence has been used. We do have a Supreme Court of Canada case that does say that this is a matter for the judge to decide whether there's confusion or not. So as I say, expert evidence may not always be required, and of course I'm going to add to that copyright cases, at times expert evidence is required. What comes to mind in that regard is with respect to musical works. An expert may need to be required to describe a chord construction or a chord progression. So there is a wide range of cases in which expert evidence would be required.

Gordon: Thanks very much, Sandra. That's great. So finishing the common law countries, Alex, experts play a very big part in IP litigation in the UK, particularly in the field of patent enforcement and validity. What are your goals when you're considering whether to use expert evidence?

Alex: I try to answer, Gordon, winning. So I'd like to win my cases so the ideal expert for me is someone who is going to truly approximate the person of ordinary skill in the art as at the prior to date in a relevant technical field. CV history and real world experience is very important. I don't just want an academic. I want someone who's been genuinely involved. I want someone who is clear and easy to understand. You know that performance in court is really important and if somebody who's a judge is going to warm to, is going to believe as somebody they can cling to with everybody else fighting. This person. This person's going to help them. This person's going to make it clear. This person's going to tell them the truth. The moment I've got the judge's trust I'm ahead. It's a mixture of professional and personal.

Gordon: I think that pretty much says it all. So let's cross the divide now, from the common law world to the civil law world, and start in Germany. Michael, what is the role of expert witnesses in German IP litigation? We can focus on patents to start with but move on from there. What are the circumstances where you might get the chance to instruct your own expert in German proceedings?

Michael: You might be aware that in Germany we do have bifurcation system, means we have a bifurcated patent litigation system. The infringement proceedings do not deal with the question of validity but we do have separate validity proceedings, therefore we have to distinguish between the two proceedings. In the infringements or novelty proceedings it is rather unusual that you bring an expert. Why? Simply because the judges at the validity court, that's the Federal Patent Court, are themselves engineers or chemists. Means they are technical experts themselves, and if you tell them I'll bring you another engineer, should that be a better engineer than she or he? So generally judges are not very fond of technical experts when it comes to validity proceedings. We have a completely different story in infringement proceedings because the infringement proceedings are proceedings that before regular District Courts are trained lawyers or judges and therefore if you do have a difficult technical question then it is very useful to bring in a technical expert by yourself. For example, if you want to demonstrate that a patent or a feature of a patent, a case that I had the other week, the switching device of the machine comprises manipulating means for switching the storage addresses. The product of defendant uses a chip now. In order to prove that this chip embodies such a switching device with manipulating means, an expert opinion might be really useful. Or another area where an expert opinion is really useful in infringement proceedings is the determination of a FRAND royalty when you use a standard essential patent. What is fair and reasonable and the area really varies between the idea of plaintiff is sometimes a thousand times more than that what you, as a defendant, deem to be a fair and reasonable royalty. In such cases an expert can also be really useful for determining a fair royalty. Besides these two typical usual proceedings we also have a preliminary injunction proceedings. These are the speedy, really, really fast proceedings and in such proceedings courts themselves never appoint an expert. Means if you want to have injunction you have to bring your expert. On the other hand, you want to avoid that an injunction will be released, you have to bring in your counter expert and these experts will then file regularly written expert evidence. Particularly, again, when the question of infringement is difficult but also in this case when the question of inventiveness is difficult. The second really specific motion is a motion for inspection of an item. In Germany we do not have pre-trial discovery proceedings which might be fine. When you come from a country, I think about the US and what Lex is sometimes reporting, discovery can be really helpful but it can also be a pain the neck and you really have to take care. But for example, in Germany you have a process patent and you have no idea whether in the manufactory of a company, the process that is patented and protected for you by your patent is really used or not, because all you see is the product as it leaves the factory and gets into the market. In the past you had to hire a detective to visit the factory of the other party. Now the law provides, for a few years, for the possibility of a motion. You can file a motion for the inspection of this process but if you want to get such a motion you really have to demonstrate sufficient likelihood of an infringement and that can be done only by an expert. Means in such a case it is really crucial that you bring a written expert opinion. Last, not least Gordon, you've also asked about trademark matters. Well, in trademark issues there's three items that a plaintiff has to show. The marks have to be similar. Okay, judges say that's up to us to decide on but whether they're similar or not. The goods and services have to be similar. Again, judges say it's up to us. But the question, whether the mark is really prominent, whether it's a strong mark or not, is a question which pursuant to our rules depends on how well known the mark is. Now judges might eventually know how well known marks in the textile industry are, for example, is Tommy Hilfiger, is Guess, is whatever these brands are, well known or not, but judges don't have any idea anymore when it comes to an area where judges normally do not deal with. For example, talking about gambling. If a judge would say, "Oh I know this mark of this game gamble," the judge would have to say, "Well, I spent every second weekend in Las Vegas." For these areas it is really helpful to bring in an expert and this expert is then normally surveyed and Empirical Legal Research Institute will, by means of a survey, demonstrate that the mark has acquired reputation.

Gordon: That's brilliant. Thank you very much. Really comprehensive answer, Michael, and hopefully the expert spends every weekend in Las Vegas.

Michael: Yeah.

Gordon: So finally then the Chinese IP legal system was designed very much with the German model in mind so there may well be similarities but, Ivy, can you talk us through how expert witnesses might be helpful in trademark or design cases, particularly in China and when you can use your own expert.

Ivy: Yes. Thanks, Gordon. Actually at the moment the term 'expert witness' is not explicitly stipulated in China's legal system, however, there are two types of litigation participants in similar proceedings who take on a similar role as the expert witnesses. The first one is the supporting expert instructed by the parties and sometimes by the court itself and the other one is, of course, internal technical investigator. For example, a party may apply for person with expertise to appear in court and give an opinion of the authentication reports or professional issues and he or she will be seen as the technical assistant to the parties and is therefore referred to as the supporting expert in China. On the other hand, in China, although some specialized IP courts across the country have been established and have centralized jurisdiction over technical cases. But unlike technical judges in Germany, as mentioned by Michael, the majority of IP judges in China are law judges without very strong science and engineering background. As such the mechanism of technical investigator was devised in 2015 by the Supreme People's Court here in China and the value of the technical investigator lies in assisting those judges in making technical determinations. I also echo Michael's point that both supporting expert and technical investigators are mostly used in difficult technical cases and the use of expert witness in trademark or design cases is pretty rare in China. The reason is that the issues in relation to the popularity of a trademark and the likely issue of confusion are considered to be within the scope of finding a flaw and therefore should only be determined by the judges, at his own discretion. That being said we did observe some use of supporting experts to illustrate the economic calculation models. To demonstrate that the composition of high amount of economic loss. Further, there's no restrictions on the use of experts in our proceedings.

Gordon: Thanks very much, Ivy, and that's a really interesting picture now of how experts can be used, particularly in Germany and China, in a way that maybe I think many of us in common law countries did not think was the case. For the next issue I want to open it up again to the panel, generally. How do you go about finding experts? Is it university professors you're looking for? Independent consultants? Experienced engineers? Do you ask your clients to help you or do you prefer to run the search yourself? Who's going to go first? Let's reverse the order. Ivy's only just finished but she's also going to start again now. So, Ivy, let's start with you.

Ivy: Yes, there's no legal requirements of a qualification of supporting experts but experts with a certain level of professional authority are normally selected to increase the credibility of the opinion in court, of course. As a client is generally the expert in the industry we always try to resort to the client, in the first instance, to get the information in relation to the possible supporting expert in the field. In terms of the court's technical investigators, as I mentioned earlier, most of them have post-secondary degrees above and an average of 9 or 10 years experience in the relevant technical field. Some of the part-time technical investigators are technical experts from the State Intellectual Property Office, Scientific Research Institute, universities or even some leading companies. Some courts have set up a pool of experts specifically for selecting technical investigators for some extraordinary cases.

Gordon: Thanks, Ivy. I'm guessing that the pools of experts are probably deeper and bigger in places like Beijing, Shanghai than the other court areas.

Ivy: Yes.

Gordon: Right. To Germany. Michael.

Michael: Now I can hear you, Ivy, in many points. So it can be a very short answer, it's really similarly to China. In many cases clients do have a clear preference, and when they do have a preference, of course we look for that. We check lists of the Chamber of Industry. We check names who have been used in other proceedings. We check whether the person of choice has made any statements, pro or con our position. Google search is really necessary, inevitable. If we want to have a motion for inspection, as mentioned before, because they will inspect the factory, the outlet, of another party. We really have to show that our expert is an independent expert beyond any doubts. Therefore, in that case, independence is really crucial and in trademark matters where we needed survey there's a small number of research institutes and if they have a good reputation, that's it.

Gordon: Thanks very much, Michael. Let's hop over to Canada. Sandra.

Sandra: I very much agree with and echo Michael's response. I would add that at times you may look into the prior art itself to see if you can identify an expert. Certainly experts would have written extensively, or definitively, in an area of concern would be viable candidates for your case. In deciding who to choose it's important that you consider a few things. First, I liked very much Alex's response earlier. You want an experienced expert because they would tend to be easier to work with, and present well, which matters in terms of developing the court and/or the jury's trust. In Canada it would be the court not a jury. But there are two pitfalls I think we should always be mindful of. I call the first one the 'professional expert' and the second one deals with experts that come from a different jurisdiction than the one in which you are practicing or arguing the case. Starting with the professional expert. A professional expert can sometimes be seen as a gun for hire and what I mean by that is someone who no longer practices in her area of expertise but rather spends most or all of her time testifying in court. Over time that can work against them. That type of expert starts to look more like a partisan advocate than an independent expert. This is especially true if that expert always acts for the same client or the same type of client. Or even worse, if it can be shown that the expert opinion on the same subject matter has changed over time seemingly to suit the client's needs depending on who the client is. I also am mindful of using experts who come from a different jurisdiction in which the case is being tried. It's just important to make sure that your expert understands what is expected of her in your jurisdiction. An example that I would use from a case I argued 2 or 3 years ago now. It wasn't an IP case but it was a case in which we called about 16 different expert witnesses and each one of them was testifying, or almost all of them, were testifying on different aspects of DNA analysis in relationship testing. My expert, by far, was the top expert in the courtroom. World renowned expert from the United States, former head of scientific research for the FBI. What I realized when I received his first draft report it was just a few pages long and it explained the invention. It explained why the invention didn't work but what it didn't do is any of the teaching in between. It didn't necessarily take on the other side's expert's reports in much detail either. There was absolutely nothing wrong with his report. In fact, it was the type of report that had been accepted in numerous, like some 50 or 60 cases in the United States, many of them in the criminal context, but it wasn't the full net that would have sufficiently educated a judge in Ontario on the science or convince the judge that the plaintiff and the plaintiff's experts were wrong. I knew that in Ontario the judge would want to feel sufficiently educated on the topic to come to his own conclusion. He wouldn't simply accept by expert's opinion based on his extraordinary credentials. So I worked with the expert to ensure that we had a more fulsome report that spanned some 50 pages and explained the science in sufficient detail for the judge to start to understand it and sufficient detail to answer the case being put forward by the other side.

Gordon: Thanks, Sandra. I had a case myself a few years ago where, going on your first point about professional experts, where the other side used an expert who had been against my client 10 years earlier, arguing the polar opposite position to the one he was being called upon to argue in our case. He used paragraphs that were the same from those same reports and then drew the opposite conclusion. The cross-examination was enormous fun as you might guess. Alex, what about the position in the UK?

Alex: For professional experts my ideal technical expert is someone who's testified a few times because I want to know that they know what they're getting themselves in for. I want to see what comments judges have been made about them in judgments. I want to see how they've performed on the transcript. I want to read their evidence. I want to get a really good feel for how this person's going to perform under pressure because as everyone's being saying around this call, you're going to win or lose your case to a great degree on performance of your expert. If they mess up, like the person on side of you Gordon, they're ... so I want some experience but I really don't mind actually what nationality or forum they're from or where they've got their experience. It's not too much of a bar but I really don't want is a hired gun. I don't want the person that Gordon had against him with me. I don't want someone who'll bend to the siren call of the matter of who's paying them the most. The issue as well is that everywhere leaves a trail, isn't it? It's not just all our Gen Z colleagues with their social media trails these days. It's also our experts who go by testimony and transcripts. So just be really careful of prior performance. A little is great. Too much is a problem. I would stress that, and I think Michael picked this up earlier, is doesn't a client talk to professional experts? You know where you need an economist or you need someone like that to talk to you about a value in the licencing chain or to perform some kind of economic analysis on data. Then I do want the most expert expert I can find.

Gordon: Exactly. Finally, Lex in the USA.

Lex: Well I guess I could just say me too but I will go into a little bit more. The resources we have in the United States are the same for virtually every lawyer and it's just a question of how you use them and when you use them. So I'll just indicate how I go about it. I would start off with my client. When I get a patent case, for example, I will spend 2 or 3 days with the technical staff of my client learning the technology, discussing how I can best present it to a jury and one of the things I always cover is their views about the best experts. Either from industry or from the academic world. So I'll compile a list to offer that endeavour. Then I'll use sort of the traditional sources that are available to me. In the United States we have expert search firms. We have expert lists. We have various resources that will get us the names of people who might have technical expertise in the area we're looking for. I will canvass universities, especially universities that have a reputation for having technical people in the areas that I'm interested in and from that I'll compile what I'll call the long list of experts I might consider. Then I engage in a pretty exhaustive research. I go into all their backgrounds, not only their technical backgrounds, but everything they've testified about. Every article they've written. Every patent authored. Every speech they've given. I'm looking for how well they do it but also whether or not they have testified, as Gordon has indicated, on matters that would be contrary to what I want from the opinion of the experts in this particular case. From that effort I develop a short list and I'm going to be presenting this expert to a jury. Maybe the list will consist of 2 or 3 experts. I will actually meet with those experts and interview them extensively. I want to find out, in addition to how well they qualify, how likeable they are, how good a teacher they are, how they'll related to the jury. I generally put them through a little mock cross-examination because I want to find out how agile they are and how well they will handle cross-examination. It's a pretty exhaustive process that I go through because, obviously we all pointed out expert witnesses are extremely important, and in front of a jury if your expert doesn't have what I'll call a good delivery system the opinion can get lost pretty quickly or get destroyed. So that's the process I use and seems to work pretty well. I will say it's rare that you find the perfect expert. There's always something that goes amiss somewhere in the expert's life in the case.

Gordon: You talk about the expert's life, I had one that died on me. But you're right. They can be a problem. Thanks very much indeed and you used the key word jury there which I think is what marks you out from all the rest of us in terms of having to understand that your expert is going to be giving witness in front of a lay jury. I want to move to the UK to start the next issue. The whole question of instructing experts has become very complex, whether it's in patent or trademark cases, and in recent years there have been a series of court decisions in the UK that have made it even more complex. So, Alex, starting with patent cases can you just give us a very quick whiz through the pitfalls and what you have to do to get it right in the UK courts?

Alex: Sure. So the big issue that Gordon's alluding to is the courts deep distrust of hindsight. They want the evidence to being given about the inventor's qualities within your patent, or the attacks that the prior art raise as to the priority date of the patent, to be as contemporaneous as it's possible to be. Bear in mind obviously trial happens much later. So to try and guard against that risk of hindsight tainting the witnesses evidence we have very strict rules in the UK. There's civil procedure laws. There's guidance notes and court judgements. In particular a train of judgments that started the case called ... There's a very strict ... sort of almost reveal bits of the case, the expert, and in strict sequence so that the patent is the last thing that they're looking at. So they're never looking at the art or the arguments with the understanding of what the eventual target is. That way the court will believe that they have been guarded against hindsight by you. The big issue here is that if the expert gets this wrong and freights a whole load of hindsight into their evidence they are not going to be criticized. It's going to be the client and the law firm for mis-instructing the expert. It's absolutely critical that this has got right and it really isn't an area for amateurs because if you get this wrong your expert evidence is tainted. If the expert evidence is tainted you've lost a large chunk of your position in the case.

Gordon: Yes, that's absolutely right, Alex, and I happen to know for a fact that very issue is being played out in court over this as we speak at the moment, in particular case. While we're looking at the common law jurisdictions, let's very quickly pop to Canada and the US. Lex, a few words on this point.

Lex: We don't have any specific instructions or guidelines that are imposed upon us by the courts, or by statute for that matter, as to how we are to interact and instruct an expert. So I think that's the short and quick answer. Obviously when you retain an expert you want to be sure that you go about instructing the expert as to what opinions you want and how they experts go about formulating those opinions and that varies lawyer to lawyer. So I would just say there's nothing imposed upon us as to how we should instruct an expert.

Gordon: Thanks very much. Up to Canada then. Sandra.

Sandra: Canada is the same as the UK in this regard in that your expert must be independent, objective and owes its duty to the court, not to the party that is paying them, but instructing experts is not as formalized in Canada as it is in the UK. So we don't have specific rules or methodology that outline a procedure to do so but there are some important points to note when instructing an expert. Probably the most obvious point, the opinion must be that of the experts. Communications with the expert are producible so you should be mindful of that. Drafts of reports are not always producible but there are some circumstances which they can be. Instructions are usually set out in a retainer letter and then repeated or revised in the final report. With respect to drafts, I think about these reasons and I always make sure that I would normally speak with my expert first, before receiving a written draft report then discuss it to make sure that we understand that we're on the same page and that we're addressing the questions that are being asked. At times you may want to have two experts. You can have one expert who's protected by litigation privilege and who can assist you in preparing for discoveries or depositions or inquiries and then have a separate expert who may help you prepare a report that will be used to testify in court.

Gordon: Thanks very much and we certainly do that in the UK. Sometimes calling the advise and assist one a dirty expert which seems a little harsh but anyway. Right, moving over to Germany. Michael, what are the particular issues which can arise when instructing an expert in German proceedings?

Michael: Again, like in the US and Canada, like what Lex said and Sandra said, we don't have any specific rules. So we just take normal common sense when choosing an expert. The expert shouldn't be too academic. On the other hand the expert shouldn't really be one sided, at least not one sided on the first glance. Take care that the expert doesn't take the wrong position and never took the wrong position. Really check what the expert ever said in the past and what statements he's made. Train the expert that the expert will make a statement right to the point.

Gordon: Thanks very much. Thanks very much indeed. Moving onto China, Ivy, are there any legal or court dictated rules which affect or limit your ability to instruct an expert in China. When you presumably heard some of these cases as a Judge, what did you do from that side of the fence?

Ivy: Yeah, very good point. At present the position is the same here as there as no specific rules on selection of supporting experts. In terms of supporting experts, as these opinions set out be the experts, generally favour the particular party who instructed them. So judges would be extremely careful when looking at this and may still resort to the internal technical investigators.

Gordon: Thanks very much indeed. That's great. Thank you panel. Let's just have a pause there and ask the audience for their views on how we've got on so far. From what you've heard from this panel so far which one of the following best describes the type of expert witness to retain or instruct in an IP proceeding? Is it a university professor who teaches the subject area? Person who's written and spoken on the subject area to become a recognized expert? Person who's worked sufficiently long in the area to have become an expert? Person who's a professional expert witness having testified before in this area? Or somebody who doesn't know anything about the subject matter but will say whatever you like for money? I'm really pleased to see that no one's opted the last one. How we're doing here? Yeah. Every other answer has got some merit. If we end the poll there I can share the results maybe. Where are we? Share. It's shared now I think. So you see the person who's worked sufficiently long in the subject area to have become expert is the one that your favouring as an audience. I think that's interesting. I think probably echoes the panel's views to a large extent. Right. Question four. We're going to have to speed up our panel a bit I'm afraid. Time is ticking against us. Once you found your expert, and instructed them according to the rules, what about the report? What is the practice in the various jurisdictions represented today? Does the lawyer write the report or is it a joint effort? Is it conventional or even law that the expert must write their own report? How do you go about this? Let's start in Canada with Sandra.

Sandra: In Canada, of course the expert's report has to be express the expert's views and the resources that the expert, he or she, has relied on themselves. I would always say that the job of a lawyer is simply to be the translator. What I mean by that is you want to translate scientific jargon, what I sometimes call Klingon, into English for the judge. In other words, readily understandable language and concepts. So this is true at the report writing stage and also at trial. So my practice is simply to provide the expert with an outline explaining the structure of the report and the issues or questions to be addressed. I will revise the report, and significantly if necessary, to make sure it is readable but I never, and you must never, change the expert's opinion or the basis for that opinion and I will get the expert to use aids like diagrams, videos, analogies. Anything that I personally feel useful in helping me learn or understand the science.

Gordon: The judges love little models. I had an expert make models once. The judge was entranced and played with them for hours. What about Germany and China? When you get the chance to choose your own expert who writes the report? Michael.

Michael: The expert writes the report. No doubt. I never had a case were we submitted the first draft of the expert without significant changes. I mean it goes back and forth until we finally end up with the presentable product.

Gordon: Yeah, I can imagine a lot of track changes going on. Ivy, in China.

Ivy: The supporting experts are normally required to set out the expert opinion in an impartial and professional way, however, in practice due to the lack of law background of this expert it is often necessary for lawyers to polish this report to make it presentable and avoid the possibility of omitting some facts in a report which would have serious adverse effect to the case and the client.

Gordon: I like the idea of polishing the report. I think that probably sums it up quite well. Alex.

Alex: I'm in full agreement with everyone else. It needs to be the expert's independent and objective opinion rendered understandable. So you can help your expert with explanations and presentation and opinions. If your reports are easier to understand, the one which is more focused and, frankly, has the more pretty diagrams in it than you will usually find.

Gordon: Thanks very much. Finally, to the USA, to Lex.

Lex: I'll be very quick on this. I agree with everything that's been said. I think there's a couple of things to keep in mind in the United States. First of all, the report itself is not admissible in evidence. So it doesn't go into evidence. Even technically in a bench trial it's heresy and should not come into evidence but obviously in front of a judge, if the judge wants the report you're going to give the judge the report. But in front of a jury it never comes into evidence. That's number one. Number two, of course you're presenting this case to a jury so you certainly want that expert to be able to appear independent, neutral. You want the expert to be able to say, "Yes, I wrote the report and every opinion that's expressed in this report, every opinion I'm going to tell you about today is my opinion." That said, what happens in the United States because draft reports are not discoverable in the United States. What happens is that usually the expert prepares a draft then there's a lot of communication, verbal and electronic, around the draft where the lawyer can weigh in and make stylistic suggestions or changes and make substantive changes or suggestions. So the lawyer's input will find it's way into the report but at the end of the day, whatever you do as a lawyer, the opinions have to be the expert's and the expert has to be able to say that with a great deal of confidence at the time they testify. So that's basically, I think we're all probably in agreement. It has to be the expert's report. It's just the level of involvement that an attorneys do. I think there's probably a little bit more involvement in the United States than perhaps in some other jurisdictions.

Gordon: There's one obvious risk, isn't there, which is if you have two experts will be along different points nonetheless. If the reports are in exactly the same style the courts going to ... who wrote them.

Lex: Absolutely.

Gordon: Okay. Now, country to country there will be particular issues which are relevant and very important and affect things locally. So let's give each country an opportunity to point out an issue that is particular to them. Starting in China here. I quite like China and Germany. Let's talk a little bit about the process of court appointed experts because they are common in those countries. So, Ivy, over to you.

Ivy: Yes, as mentioned earlier, the internal technical investigators should be only appointed by the court and this rule is somewhat similar to the Amicus career, a FRAND of the court. But some of the technical investigators are actually hired by the courts ... He or she may be involved through the whole proceeding of the case and with the judge's consent may just raise some questions to the parties. However, the parties are not allowed to make inquiries to these technical investigator and the opinion of the investigator would not be made public and therefore are not subject to cross-examination.

Gordon: Thanks very much indeed. Incidentally I just noticed there are a couple of questions in the Q&A box so I wonder if the speakers might take a look at those and see if anyone wants to try and answer those because we are going to run short a little bit on time. Michael, what's the position in Germany?

Michael: Yeah, the factual situation differs a bit from the theoretical situation. Theoretically, under German rules of civil procedure, parties just have to allege. The court would then appoint an expert. Means parties just have to allege, for example, this feature is realized or this feature is not realized because bah, bah, bah. But in order to make your allegation look a bit stronger you normally just don't allege, particularly when it's a critical situation, but you bring over your written expert opinion. Then your allegation is stronger and that means that normally the other side will bring something like a counter-expert opinion. The situation that court appoints an expert that particularly appear in a case where I have my expert and the other side has its counter-expert and, not surprising, the results of the two expert opinions clash, normally. Then the court appoints the expert. But as mentioned, theoretically courts could appoint an expert also already for situations where parties just allege. When courts appoint an expert the court will provide those parties the chance to suggest experts. Thereafter to comment on proposals made by the other side or to proposals made by the court then the expert appointed by the court will normally also deliver a written statement. Then it will also be heard. The judges will ask their questions to the expert. Both parties will have the chance to ask questions to the court appointed expert. Means that before the hearing you will have to prepare for a multitude of possible statements that this person, expert, could eventually make and about a multitude of possible answers given by the expert to questions raised. Then finally after the hearing is over you will always the chance to file written comments undertaking of evidence.

Gordon: Thanks very much indeed. Right. Moving to the UK then. There's been a lot of talk about hot tubbing, a practice which is already commonly used in Australia. Alex, what is it and how does it work?

Alex: Well, other than the rush here to prettify your garden in the midst of another lockdown, Gordon, it's about when you get both experts, you put them in the stand together and then the judge peppers them with questions. The idea is that this brings forward this sort of open and honest debate. They've got to two independent objective experts discussing between themselves the best answer to the judge's question. I think in reality what really happens is that, as with all hot tubs, the person with the dominant personality gets the best seat and is closest to the cocktails. So if your expert is a nice shy person, he's really expert but maybe not quite so elbows out as the other person's expert, this is a nightmare idea. Luckily, not caught on T5 patent matters and ... over construction court issue. Long at last.

Gordon: And no swimming costumes inside. Good. Lex, in the US.

Lex: After Alex enlightened me about hot tubbing I inquired of many of colleagues here in the United States whether they'd ever done any hot tubbing, in the legal context. They were somewhat confused so I guess it's a phenomenon in the United States. I guess the thing I would want to focus on is that in the United States, by law, judges have to be gatekeepers in terms of whether an expert opinion can go to a jury or a the trier of fact. So late in the discovery process we have a process called a Daubert or Dohbert or Dauroute motion, and it's brought more and more frequently these days because of the Federal Courts in the United States have become more rigorous about expert opinions, and the court has asked it to look at the expert opinion and determine whether it's sufficiently reliable to go to a jury. So the court actually looks for three factors. It looks for whether the report is based upon sufficient reliable facts and data. Whether a reliable method or a set of principles has been utilized by the expert and whether those principles and method has been properly applied to the data. If the report fails in any of those respects it gets tossed out very quickly. For example, a case recently, an expert was testifying about reasonable royalty. In the United States you calculate reasonable royalty on the date of first infringement. The expert utilized a lot of facts and factors post-infringement and the court tossed the opinion out. So you really have to watch what you're doing because at the end of the day the courts are very rigorous about throwing suspect opinions out and not allowing the testimony to occur.

Gordon: Thanks very much, Lex. You can see really the logic behind that, can't you, where there's a jury trial? It's really important to have that gatekeeping role. Finally then, quickly, Sandra.

Sandra: In Canada we do have hot tubbing and it could be hot tubbing is the way in which Alex described it, two experts in court. In Canada what you actually see often happening is a pre-trial procedure where experts are brought together on a without prejudice basis and they attempt to come together to see if they can narrow issues. We haven't seen that much at all in the ... cases but we expect that that will start coming. With respect to the Daubert process that Lex described in the US, we have a similar process but it's not a pre-trial motion. In fact, when the expert gets put in the stand by counsel you tender that expert for their expertise and there's cross-examination on the qualifications and so on and what we will call a voir dire. In the States they call it a voir deer, I think, and then of course in Canada we have this other fairly new phenomenon of the participant expert. That simply is an expert who's not actually retained as part of the litigation but somebody who participated in the events in question in some manner at the time in question, form an opinion at the time in question, and is permitted to give expert testimony without filing an expert report because of the participation at the time in question. There's technical requirements that have to be met but it's just something I flag for people to be aware of.

Gordon: That's very interesting. That's an interesting development. Be interesting to see that catching on. Right. I want to run around the team. 30 seconds each guys. One more time quickly, each panelist, what's your take away point? What would you like the audience to take away from today? One punchy point each, please. Lex.

Lex: I guess being a jury trial cynic I will say that the delivery system is almost as important as the opinion. In other words, if you don't have an expert that can communicate and is a good teacher, and that presents well to a jury, you can have the greatest opinion in the world but it's going to get lost somehow or destroyed on cross-examination. So, get a good opinion but also get an expert that is really going to connect with a jury.

Gordon: That's great. Thank you. Sandra.

Sandra: My point is similar. I would say that your judge is a lawyer and for the expert's role is similar in this way. Your job is to make sure that the judge or the jury understands what's being communicated and so I always say it's your job as the in between and the expert's job to translate from Klingon to, in Canada it would be English, elsewhere it would be a different language, just to make sure that there's clear understanding of the science.

Gordon: Let's face it, there are parts in Canada where it would be French. Thank you very much, Sandra. Michael.

Michael: Before appointing an expert check what she or he said/wrote about the subject in the past. It is so crucial that the statements your expert will make in a written statement or during a hearing will not be contradictory to that what she said, or what he said, or published in the past. If there's a contradiction, that's the first thing in the world, all that leads to is you'll give the other party a reason for a big party and I rather prefer to have champagne than to serve champagne to the other party.

Gordon: Thanks very much, Michael. Alex.

Lex: I'm adopting that as my new motto for life. I prefer to have champagne rather than to serve champagne. Thank you, Michael. Experts though, be strict. Be really strict with yourself, the client, your barristers that have instruct your expert so that you get it right. If you get it wrong, you will have multiple opportunities to get it wrong, but there's only one way of getting it right. So be strict with the rules on instructing experts. And have champagne.

Gordon: Always a good rule. Ivy, very last point.

Ivy: Yes, my last point is that tell a simple but good story. For complex technical cases the key is to tell a good story that judges can truly understand with the help of experts while keeping costs within budget.

Gordon: That said with the feeling of a former judge, if I may say so. Poll three, audience, last thing. Now you've had the chance to hear the full picture from around the world, what do you think is the best regime for using expert evidence in IP cases? Parties free to retain and use experts as they choose, much like the US. Experts are retained by the parties but only in accordance with approval from the tribunal, like the UK. Court appointed experts only. I don't think we've been hearing anyone doing that so far. Combination of court appointed and privately retained experts. A little bit like Germany and China. Or a board of experts agreed upon and retained jointly by the parties. Not an option we've looked at but something interesting. What do you think? Let's have a look and see how that's going. Very, very interesting. We're seeing quite a bit between towards the combination of court appointed and privately retained experts, although I think now coming up and overtaking that is, the parties free to do whatever they like. Can we end the poll there and share the results? So there we have it. Just getting over the line there. Total freedom for the parties to do whatever they like. Fair enough. Fair enough. Why not?

Sadly, I don't have any time for any further questions today and that's a shame because I think there are some good points but hopefully they'll come out in the discussions to follow. Thank you to everyone who's attended today. I hope you have enjoyed this session and learned some useful tips for future use. This is a first of a series of webinars on the question of evidence falling within our overall Life Cycle of a Smart Idea series. There will be more after to celebrate. So many thanks to you for attending today. Thank you all also to the panel. I know they put a lot of work into this novel discussion and thank you very much indeed for sharing your insights, your expertise and experience today. I found it very interesting and entertaining and enjoyed working with you all very much indeed. The webinar will shortly be posted as a recording on our website if you'd like to watch it again, or to take a particular detail, you can do so or you can share with colleagues who might find the content useful. Now if you want to learn a bit more, as I've said, some of the panelists are going chat rooms so get ready to head into one of those where you can ask follow up questions. But for now, thank you very much indeed. I look forward to seeing many of you again as our webinar series, The Life Cycle of a Smart Idea, continues. And Ron I think is going to say a few closing words. Ron?

Ron: Thank you, Gordon, for moderating so well and thank you to our panel for such an instructive and informative reviews of the laws in the practice concerning the use of expert witnesses in IP disputes around the world. Our panel experts have shown it doesn't take an expert to know how to use an expert properly, but rather by following the best practices that were described by our panel today, you can get the job done with the expert proof you need to win your case. Our panelists have indeed proven that time and time again. So as you choose, we move onto the breakout rooms or to the next time we meet again, when we discuss what needs proof in a global patent dispute and then after that what needs proof in a global trademark dispute. So long and thank you for attending.