Hidden expertise in the UK Patents Court in Electromagnetic Geoservices v Petroleum Geo-Services dispute

The IPKat hiding his expertise from patent litigants,
but not the court

The IPKat was delighted to receive this guest post from Katfriend Eibhlin Vardy on yesterday's decision from Mr Justice Birss about the utility of teach-ins for judges on technical subject matter by independent scientific advisers.  Eibhlin brings us up to speed:  

"Yesterday the Patents Court handed down judgment in the case of Electromagnetic Geoservices ASA v Petroleum Geo-Services and Ors [2016] EWHC 881 (Pat). The judgment is only two pages long - not bad for a category 5 trial that lasted 11 days. The reason for such brevity is that the case settled before judgment. The judgment does not cover the substantive merits of the case, which concerned an infringement action and revocation counterclaim for a patent covering controlled-source electromagnetism, CSEM, in searching for oil reservoirs under the sea. So why the need for judgment at all?

In an earlier case management decision (reported on the IPKat here), the Court ordered the appointment of a neutral scientific adviser (see paras 27 to 36 of [2016] EWHC 27 (Pat)). At that time, the patentee, EMGS, had resisted the appointment of an expert, due to lack of transparency concerns regarding what information the Court would receive. In particular, the judge noted there was a dispute about what marine CSEM, is or encompasses. EMGS expressed concerns that a scientific adviser might impart to the judge views which relates to that sort of topic which the parties will be unaware of and cannot address. 

The Court ordered that the judge should have a 'non-controversial introductory course', from a marine CSEM expert, before he read into the case in any detail. In this latest judgment, Birss J noted that the one day teach-in from a Dr Karen Weitemeyer, made the case materials more easily digestible, and enabled submissions and cross-examination at trial to proceed more briskly than it would otherwise have done. What is key for the Patents Court is not the opinions expressed by an expert but the reasons for them, and as Birss J explained, “one cannot evaluate what one does not understand”. After the teach-in, Dr Weitemeyer played no further role in the proceedings. Birss J paid public tribute to Dr Weitemeyer, who had prepared Powerpoint slides to educate the judge on five topics identified in advance by the Court. 

How were the concerns regarding transparency addressed, given that the teach-in took place in private away from the parties? Written materials produced by Dr Weitemeyer were provided to the parties after the teach-in. The purpose of this was evidently not to allow the parties to vet the materials in advance, but it did give them the opportunity to comment on the materials at trial if they so wish. Nor was Dr Weitemeyer told about the issues in dispute between the parties. Although Dr Weitemeyer's instructions were settled by the Court, these were based largely on two primers, and short excerpts from the parties' expert reports which dealt with the background to the technology. Birss J noted that the private teach-in was beneficial in that is facilitated a candid discussion between the scientific adviser and the judge. 

The use of scientific advisers in this way is not unprecedented. For example, the late Pumfrey J received a two-day pre-trial tutorial in Nokia v Interdigital ([2007] EWHC 3077 (Pat)). The Court noted in the present case that time spent educating judges in this way is rarely wasted.

This aspect of case management may not sit entirely comfortably with litigants and legal teams, given the loss of control over the topics to be addressed and the presentation of those substantive topics. Such anxiety may be particularly acute when the teach-in takes place behind closed doors. It is difficult to speculate on the parties' motivations for settlement, but the perceived risk of the unknown could potentially have played a role. Another interesting aspect of this case is that the patent had been litigated before in Schlumberger v EMGS ([2009] EWHC 58 (Pat)) and held valid on appeal ([2010] EWCA Civ 819) - this may also have affected the parties' approach to settlement."