Patents - Hill v Touchlight Genetics Ltd.

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Jane Lambert

Patents Court (Mr Justice Mellor)  Hill v Touchlight Genetics Ltd and others [2024] EWHC 533 (Pat) (08 March 2024)

The High Court has power under s.70 (1) of the Senior Courts Act 1981 to call in the aid of one or more assessors specially qualified, and hear and dispose of the cause or matter wholly or partially with their assistance if it thinks it expedient to do so. Subsection (3) of the same section requires rules of court to make provision for the appointment of scientific advisers to assist the Patents Court in proceedings under the Patents Act 1977 and for regulating the functions of such advisers.

S.70 is implemented by CPR 35.15.  Para (2) of that rule mandates the assessor to assist the court in dealing with a matter in which the assessor has skill and experience. He or she is obliged by CPR 35. 15 (3) to take such part in the proceedings as the court may direct and in particular the court may direct an assessor to –
(a) prepare a report for the court on any matter at issue in the proceedings; and
(b) attend the whole or any part of the trial to advise the court on any such matter.
If the assessor prepares a report, CPR 35.15 (4) requires the court to send a copy to each of the parties; before the trial has begun and to allow the parties to use it at trial.

Para 5.10 (1) of the Part 63 Practice Direction enables the court to direct at the case management conference that a scientific adviser be appointed under s.70 (3) of the Senior Courts Act 1981.  The court can also direct 
the preparation of a document setting out basic undisputed technology under para 5 (10) (2).   Lord Justice Chadwick discussed the jurisdiction to appoint scientific advisors and reviewed the cases relating to their appointment in Halliburton v Smith [2006] EWCA Civ 1599.   In Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA ("EMGS") [2016] EWHC 27 (Pat), [2016] FSR 25 Mr Justice Birss explained the categorization of patent cases on a scale of 1 to 5 and the allocation of cases involving the most difficult technologies (categories 4 to 5) to judges who are best qualified to deal with difficult technical issues.  Even though he could try category 4 or 5 cases, Mr Justice Birss asked the parties in EMGS to arrange a non-controversial introductory course for the trial judge by the scientific expert (probably over no more than a day) before reading into the case in any depth.

Readers will have noted that there is some overlap between the roles of assessors or scientific advisors appointed under s.70 of the 1981 Act and that of expert witnesses.   Both have a duty to help the court on matters within their expertise and CPR 35.3 (2) spells out that the expert's duty overrides any obligation to the person from whom the experts have received instructions or by whom they are paid.  In the second case management conference in Hill v Touchlight Genetics Ltd and others  [2024] EWHC 533 (Pat) a dispute arose before Mr Justice Mellor as to whether the court should appoint a scientific advisor or direct expert evidence to be exchanged.  The learned judge remarked in para [1] of his judgment that this was the first time the point had arisen.

The issue arose in an entitlement action, that is to say, a dispute over the ownership of the right to apply for patents.  Readers who are unfamiliar with this area of the law will find some information in my article Disputes over Ownership of Inventions of 6 Aug 2015 in NIPC Southeast as well as guidance on How to avoid Entitlement Disputes  22 June 2023 in NIPC Inventors' Club.  As the claimant's counsel submitted. entitlement actions are usually resolved by hearing officers in the Intellectual Property Office without the need for expert evidence.  He referred to one case where expert evidence was adduced but the hearing officer did not find it particularly helpful.  The technology in this case was complex but it was unlikely to be controversial.  If and in so far as the trial judge might require guidance it was best provided by a court-appointed scientific advisor.

The defendants replied that the appointment of a scientific advisor with experts would be unprecedented and would place them at a disadvantage.  The claimant had an intimate knowledge of the scientific and technical issues even though she was to testify as a witness of facts.  It was likely that her answers in cross-examination would refer to the technology.  Unless the defendants had their own experts in court it would be difficult to challenge the claimant's evidence. 

The judge seemed to accept their submission,  He said in para [41]:

"I am driven to the conclusion that Dr Hill's side are so fixed on having a SA because they perceive it will give them a forensic advantage at trial."

Between paras [43] and [45] he compared the roles of scientific advisors and expert witnesses:

"[43] The role of a SA and the role of technical expert evidence in patent proceedings have this in common: the purpose of both is to educate the Court in the relevant technology.
[44] A SA normally provides a teach-in during pre-reading before the trial (or appeal) actually commences. A degree of transparency is ensured by any materials used during the teach-in being provided to the parties after the teach-in has occurred. But that cannot provide complete transparency because the parties never get to know what was discussed orally.
[45] However, as already indicated, there is a clear distinction between those roles: a SA is not there to address any technical disputes, that is the province of expert evidence, to the extent that expert evidence is appropriate and admissible."

He concluded that he should not appoint a scientific advisor unless satisfied that no technical issues of any significance would arise at trial and in the circumstances of the case he was not so satisfied even though it might be a somewhat unusual entitlement dispute.  The claimant had indicated that her fallback position was that if expert evidence was to be ordered such evidence should be served sequentially.   As the defendants had no objection, his lordship directed: 

"Each party has permission to call one technical expert witness in the field of molecular biology to address technical aspects arising in the context of Issues 2, 3, and 6 from the Agreed List of Issues and to assist with educating the court on the technology and to understand what is disclosed in technical documents.

Pursuant to CPR 35.12, I will also direct a discussion between the experts for the purpose of seeking to reach agreement on the technical issues, and preparation of a statement for the Court setting out those issues on which they agree and those on which they disagree, with a summary of their reasons for disagreeing."

He left the dates for sequential exchange and other details to be agreed by the parties and told them to draft an order giving effect to his judgment.

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