Summary
The judge preferred the evidence of the Defendant’s expert because of the Claimant’s expert’s approach to his task as expert, his confusion over the proper approach to what prior art was and was not in the common general knowledge, the number of assertions he made which he was forced to resile from as incorrect, and his failure to acknowledge a key fact.
Learning points
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Make sure you clearly set out in your report and CV how your knowledge and experience enables you to comment on the issues in dispute. You should ensure you have read sufficiently to compensate for any deficiencies in your direct experience.
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Provide specific details of your direct experience in the issues related to the case, e.g. “I personally designed this electric shower” rather than “I worked on the development of electric showers for six years”.
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Make sure you carefully read the opposing expert’s first report and consider how any of the matters raised might affect your opinion. Make sure you make any appropriate responses to your opposing expert’s report in your reply report or joint statement.
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Carefully re-read your reports before attending court. Not being able to recall key concepts set out in your reports will undermine the judge’s confidence in your honest belief in those concepts.
The case
This was a judgment on liability only in a claim for infringement of UK patent GB 2,466,504 relating to technology in “ablutionary installations” such as bathroom showers (‘the Patent’). The Patent was filed on 24 December 2008, which is also the Priority Date. There was no real dispute that at the Priority Date, and today, shower technology divides into two clear categories: mixer showers and electric showers. At the Priority Date, while mixer showers were commonly available with two or more outlets, electric showers on the UK market only allowed for a single outlet.
The Claimant’s case was that the Patent disclosed a dual-outlet electric shower, identified the safety risks, described how the problem arises, and proposed and claimed a novel and inventive solution. Certain of Defendant's electronic showers units infringed the Patent. The Defendant counterclaimed for revocation of the Patent on the grounds of lack of novelty, obviousness, and insufficiency.
The issues
The issues were:
Patent validity
1. Are the Relevant Claims of the Patent novel over UK Patent Application No 2,274,985A (“Deeley”)?
2. Are the Relevant Claims of the Patent inventive over: (i) Deeley in conjunction with the common general knowledge; and (ii) the common general knowledge?
3. Are the Relevant Claims of the Patent invalid for lack of sufficiency as pleaded in paragraph 17 of the Amended Defence and Counterclaim?
Patent infringement
4. Do the products of the DuElec Range (and each of them) fall within the scope of protection of the claims 1 and/or 4 of the Patent (whether on the basis of normal construction or by reason of equivalence)?
For the purposes of Issues 1 and 2, the Defendant read Deeley with a cross-reference to UK Patent No 2,219,497B (“McMaster-Christie”), cited within Deeley.
The experts
Mr A acted for the Claimant, and Mr B for the Defendant. Both experts provided two reports and attended court and were cross-examined.
Mr A
Mr A is a product approval consultant operating through his own firm since 2020. From 2010 to 2019 he worked at Bristan Group, a UK company engaged in the design and manufacture of showers, with responsibility for developing new products, including a new shower range.
The judge noted that Mr A’s experience working in the arena of showers post-dates the Priority Date by 18 months. However, she accepted that, although Mr A only worked in the shower industry from 2010, he gained sufficient knowledge then, checked by his later reading to prepare for this trial, to be both secure and credible in his understanding of what was the common general knowledge at the Priority Date.
Mr A had been asked by his instructing solicitors to describe the common general knowledge in relation to showers at the Priority Date. He was provided with Deeley by the Claimant’s solicitors, and from the references in that located a copy of McMaster Christie which had not been provided by the solicitors. He discussed both patents with the solicitors and was provided with the additional information he required. The judge noted that “[t]his is, in my judgment, the proper way for an expert to go about his task.”
The judge found Mr A “to be a very good witness, careful credible and reliable, and I am satisfied that if he did not know if something was within the common general knowledge at the Priority Date or not, he would have said so.”
Mr B
Mr B worked in shower industry design at the Defendant from 1989 to 1995. He said he worked on the development of instantaneous electric showers throughout his time there, but in cross-examination noted that he had only personally designed one electric shower. He later worked in showers and water heating development.
The judge accepted several criticisms of Mr B made by the Claimant’s counsel.
The judge accepted the criticism of Mr B’s approach and agreed with the Claimant's counsel that she could not be sure to what extent hindsight played a role in this analysis of the prior art.
Mr B also conceded during cross-examination that he had made two errors in setting out the steps which were taken in the design process of an electric shower product to avoid the risks of unintentional flow restrictions. He accepted that the first was equally true for mixer showers and the second was not true at the time of the Priority Date.
Mr B also failed to acknowledge in either of his reports that there were no dual-outlet electric showers on the UK market at the Priority Date, despite Mr A’s having made that point explicitly in his first report. Mr B only acknowledged this fact in oral evidence. The judge considered that that failure to acknowledge that there were no dual-outlet electric showers on the UK market at the Priority Date was a surprising omission given the subject matter of the Patent.
Mr B also considered that “there were (and are) certain commercial barriers to selling electric showers with multiple outlets” (despite not explicitly acknowledging that there were, in fact, no such products on the market in the UK at the Priority Date). However, Mr B resiled from both of the “commercial barriers” he identified in cross-examination. In response to a query from the judge, Mr B agreed that there was nothing about the UK market at the Priority Date which would lead him to suspect that a dual-outlet electric shower would have a different reception in the marketplace than it did when it was eventually launched a few years later.
Mr B also stated in his report that there were two distinct concepts disclosed by Deeley. However, when asked about this in cross-examination, he could not remember what the two distinct concepts were and asked to look at his report. While the judge had no evidence to support the contention of the Claimant’s counsel that these concepts were introduced by the Defendant’s solicitors, she considered that that fact Mr B could not remember what the two distinct concepts were undermined the whole idea that second disclosure existed.
The judge concluded that the concerns about "[Mr B]’s approach to his task as expert, his confusion over the proper approach to what prior art was and was not in the common general knowledge, the number of assertions he made which he was forced to resile from as incorrect, and his failure to acknowledge a key, now accepted, fact that there were no multi-outlet electric showers on the UK market at the Priority Date means that where the parties remain in dispute I generally prefer the evidence of [Mr A].”