Three’s a Crowd: Federal Court Massages Out LELO’s Extra Expert

EIS GmbH v LELO Oceania Pty Ltd (Expert Evidence) [2024] FCA 1334

Background

In a recent development in the ongoing patent dispute between EIS GmbH (EIS) and LELO Oceania Pty LTD and LELOiAB (LELO), Justice Downes of the Federal Court has ruled on the participation of an expert witness in joint expert conferences.  The proceedings concern EIS’ allegations that LELO infringed patent AU2018200317, which relates to feminine pressure wave massagers.  LELO has denied infringement and cross-claimed for revocation.  The trial is scheduled for February 2025.

This decision follows an earlier judgment in the same proceedings we previously reported on, in which Justice Downes granted leave to LELO to rely on evidence of experiments performed by Mr Duff.

The primary issue before Justice Downes in this decision was whether Mr Duff should be permitted to participate in joint expert conferences concerning novelty and inventive step, following EIS’ application seeking orders against his participation.  EIS also sought orders denying LELO permission to rely on a substantial portion of Mr Duff’s ninth affidavit at trial (of which there were ten affidavits in total), which was intended by LELO to serve as evidence ‘in reply’ on the issues of novelty and inventive step.

Key Issues 

LELO submitted that, as Mr Duff had given evidence-in-chief on the issues of novelty and inventive step, it should be entitled to rely upon Mr Duff’s ninth affidavit as evidence on novelty and inventive step.  However, Justice Downes observed that it was not apparent that Mr Duff had given expert evidence on the issues of novelty and inventive step for the following reasons:

(i) the first four of Mr Duff’s affidavits lacked both the expert declaration required by r 23.12(1)(b) of the Federal Court Rules and the necessary acknowledgement under r 23.13(ga);

(ii) Mr Duff did not appear to have been specifically instructed to address those issues in any of the first eight affidavits; and

(iii) there was a lack of clarity around which parts of Mr Duff’s affidavits constituted expert evidence in chief on novelty and inventive step.

Justice Downes also considered that EIS had proceeded on the basis that Mr Duff was not being called as an expert witness in relation to novelty and inventive step, having not been aware of LELO’s intention until four weeks prior to the scheduled conferences when the proposed ‘Topics for Joint Expert Conferences’ was served.  Her Honour accepted EIS’ evidence that they had prepared for trial on the understanding that LELO was calling only one expert on these issues (someone other than Mr Duff).

LELO attempted to rely on oral submissions made by its senior counsel during an interlocutory injunction hearing in December 2023 as providing notice of Mr Duff’s status as an expert on the issues of novelty and inventive step.  However, Justice Downes found these submissions only related to one affidavit, of which only four paragraphs were arguably relevant to novelty and inventive step.  Her Honour also rejected LELO’s argument that statements made during later case management hearings were sufficient to put EIS on notice of its intention to rely on Mr Duff as an expert on these issues.

Importantly, Justice Downes also noted that LELO had never raised with her that it intended to rely on two experts on the issues of novelty and inventive step, and had it been raised, would have expressed concern about having two experts from one party on the same issues.  Justice Downes cited the observations of Beach J in Novartis v AG Pharmacor Pty Ltd [2022] FCAFC 58 at [25]:

…the default position is that a party should not adduce expert evidence [in the context of patent litigation] from more than one expert in any single discipline, absent telegraphing its intention to do so to the opposite party and the Court at the earliest opportunity.

Lastly, given the conferences were scheduled to commence only a week later, EIS’ expert would have to review Mr Duff’s first four affidavits and the impugned paragraphs of the ninth affidavit (which she had not yet seen) prior to the conferences.  Her Honour deemed this unsatisfactory, noting that an expert should not be required to absorb, consider and deal with evidence “on the run”.  Furthermore, Justice Downes was concerned that having an additional expert and material would leave insufficient time to address all topics in the conferences and lead to inefficiencies at trial.

Outcome

Justice Downes ordered that Mr Duff was not permitted to participate in the joint expert conferences concerning novelty and inventive step.  The question of whether LELO can rely on select paragraphs of Mr Duff’s ninth affidavit was reserved for determination at trial.

Implications

Justice Downes’ decision reinforces several key principles relating to expert evidence in patent proceedings.

First, LELO’s late indication that Mr Duff’s evidence was relevant to novelty and inventive step, coupled with the absence of the necessary expert declaration, demonstrates the need for parties to give clear and sufficient notice as to the expert evidence they intend to rely on.

Second, experts must have adequate time to properly consider evidence before conferences.  Justice Downes found it unacceptable that EIS’ expert would need to review multiple unseen affidavits just before the conferences were scheduled to begin.

Third, parties must clearly identify which parts of affidavit material constitute expert evidence on specific issues.

Finally, as demonstrated by Justice Downes’ endorsement of the Novartis principle, the Court will not look favourably on parties seeking to rely on more than one expert in respect of a single discipline, especially without early notification to both the opposing party and the Court.

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