Anyone involved in patent disputes in Australia.
What do you need to do?Be aware of the impact of the decision on the initial instruction of expert witnesses.
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Kim O'Connell
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Robert Cooper
Shyama Jayaswal
The Federal Court has handed down a decision which highlights the importance of the careful briefing of expert witnesses with respect to obviousness (inventive step) in patent cases. The verdict is significant because the manner in which the expert witness was briefed led the court to attach very little weight to his evidence.
Mallesons acted for Esco Corporation (Esco) and Bradken Resources Pty Ltd (Bradken) in the matter v PAC Mining Pty Ltd and Central Queensland Mining Supplies Pty Ltd [2008] FCA 640. In this matter, Esco was the patentee of two Australian patents and Bradken was the exclusive licensee of those patents. Esco and Bradken commenced proceedings for patent infringement against PAC Mining Pty Ltd and Central Queensland Mining Supplies Pty Ltd (together CQMS) on the basis of three claims. CQMS counterclaimed that those three claims were invalid.
Tamberlin J held that all three claims were valid and one claim was infringed. The decision primarily turned on questions of construction of particular words in the claims. However, the decision with respect to obviousness required consideration of the evidence of an inventor and evidence of CQMS’s expert witness. ESCO and Bradken did not provide expert evidence with respect to obviousness.
With respect to obviousness, Tamberlin J made two key observations about the evidence upon which he based his decision:
- When deciding whether there has been an inventive step, the courts attach considerable weight to the evidence of the inventor.
- CQMS’s expert evidence must be approached with some caution. The expert was simultaneously informed of both the nature of the problem and also the solution ultimately supplied by the patentee at the time he was instructed. The expert’s brief included a copy of the prior art, the two patents in suit and instructions to assume that a particular problem existed with the prior art. This reduced the weight of the expert’s evidence on obviousness because of the hindsight assumptions relating to the nature of the problem, the need for a new design and the solution ultimately developed.
The court determined that the identification of the problem encountered in the prior art and the solutions proposed in the patents involved considerable inventive thought.
This decision continues the line of decisions of the Federal Court which highlights the importance to successful obviousness evidence of both the selection of expert witness and the manner in which that expert is instructed. If not prepared carefully, obviousness evidence will be held to have very little weight, be of little value in supporting your case and thus a waste of resources.