The Federal Court has recently focused on the propriety of the information provided to experts prior to the experts forming their opinions in patent cases. There were several cases that appeared to suggest what the Court considered to be the proper approach. In Teva Canada Innovation v. Apotex Inc.,1 Justice Gleason preferred the evidence from Apotex's experts for a number of reasons, including the blinding of its experts:
I agree that the manner in which the experts were retained and instructed in this case provides a reason to prefer the evidence of the Apotex experts over that of the Teva experts. Because they did not know what alcohol Apotex had used in its Products when they conducted their construction exercise, their interpretation was undertaken in accordance with the direction from the Supreme Court of Canada, requiring that the construction exercise be uninfluenced by concerns over infringement or invalidity. The Teva experts, on the other hand, conducted their construction of the terms with a view to the potentially infringing substance.2
Further, the Court stated: "I disagree with Teva that all that counsel did when it provided its experts with extracts from the Apotex ANDS and NOA at the outset was to alert them to the issues that were relevant and thus to focus their analyses on "where the shoe pinches"." 3
The Court in AstraZeneca Canada v. Apotex Inc. also preferred the evidence of Apoex's experts because the experts were blinded.4
However, in Eli Lilly Canada Inc. v. Apotex Inc., Apotex tried to rely on Justice Gleason's decision in Teva Innovation. Justice Gleason refused to prefer the evidence of Apotex's experts on the basis that they were blinded: "In Teva and AstraZeneca, the approach taken was found to undercut the experts' credibility as it led to an improper results-oriented opinion. Neither case can be read for the position that Apotex sought to advance here, namely, that in any case where one party blinds its experts but the other does not, the former's evidene is to be preferred. Rather, these two decisions must be limited to the facts that arose in these cases." 5
Similarly, in Shire Canada Inc. v. Apotex Inc.,6 a decision issued on April 7, 2016, Apotex argued that its expert witnesses should be preferred because Apotex blinded its experts. For example, its experts did not see the Notice of Allegation nor were they told of Apotex's legal position. Apotex argued that, because claim construction must be completed before infringement or validity is considered, providing information about the allegedly infringing product or relevant prior art could lead to the expert's analysis becoming a results-oriented one. The Court concluded that this is not a legal principle that must be applied in all cases and there may be no reason for concern regarding blinding depending on the opinion. The Court also noted that there are circumstances in which blinding may not necessarily lead to more reliable evidence. The Court did not consider the blinding of the experts by Apotex in this case to be conclusive.7
In comparison, in a decision released April 1, 2016, the Court preferred the evidence of Apotex's expert because of the expert's expertise but also because her opinion was "offered with no possible influence". 8 The Court in particular noted that Allergan's expert had discussed the patent and the NOA with counsel for Allergan whereas Apotex's expert provided an opinion on the common general knowledge and the prior art without knowledge of the patent in issue or the position of the parties. 9
At the moment, it is difficult to determine the best way to approach elicting expert evidence but these decisions should certainly be taken into consideration at the time of contacting experts.
Footnotes
1 Teva Canada Innovation v. Apotex, 2014 FC 1070 at para. 94-97 [hereinafter Teva Innovation].
2 Ibid. at para. 94.
3 Ibid. at para. 96.
4 AstraZeneca Canada v. Apotex Inc., 2014 FC 638 at para. 321-324.
5 Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC 875 at para. 166.
6 Shire Canada Inc. v. Apotex Inc., 2016 FC 382.
7 Ibid. at para. 42-47.
8 Allergan Inc. v. Apotex Inc., 2016 FC 344 at para. 16.
9 Ibid. at para. 13-16.
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