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23 December 2019
In IP litigation, expert testimony is common and important. Experts may provide the court with a scientific primer in highly complex cases. In patent litigation, experts may:
In trademark cases, experts may conduct surveys to assess reputation or likelihood of confusion. For remedies, experts may model the marketplace or calculate the amount of damages suffered or profits earned as a result of infringement. The outcome of many high stakes IP cases has turned on expert testimony. It is therefore vital for every IP litigator to understand how to effectively use experts.
This article focuses on the theoretical aspects of expert testimony: an expert's role, the test for admissibility and some procedural considerations.
The role of an expert is to assist the court, not to advocate. In White Burgess Langille Inman v Abbott and Haliburton Co (2015 SCC 23), the Supreme Court of Canada noted that experts "have a special duty to the court to provide fair, objective and non-partisan assistance".
The Federal Court has codified this special duty in the Code of Conduct for Expert Witnesses, which states that experts owe a general duty to assist the court impartially on matters relevant to their area of expertise. Some provinces, including Ontario and Quebec, have adopted similar rules. Experts who fail to comply with this special duty may have their evidence excluded or given little weight (eg, see Federal Court Rule 52.2(2) and Alfano v Piersanti (2012 ONCA 297)).
In R v Mohan ( 2 SCR 9), the Supreme Court of Canada set out the following four requirements for admissibility of expert evidence:
In Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27), the Supreme Court of Canada disregarded expert evidence in a trademark case for failing to satisfy the second requirement for admissibility. The court applied the general principle that experts should not be permitted to testify unless their testimony is likely to be outside the judge's experience and knowledge.
Special procedural rules governing expert evidence are set out in the Federal Courts Rules and the Rules of Civil Procedure for each province. Apart from codifying the role of experts, such rules address:
For example, absent leave, litigants in Saskatchewan and the Federal Court are limited to five experts, while litigants in Manitoba, New Brunswick, Ontario and the territories are limited to only three. In some jurisdictions, like the Federal Court, expert witnesses may be ordered to confer with one another in advance of a hearing to narrow issues in dispute.
In patent cases, the Federal Court has issued a notice to the parties and profession requiring parties that intend to establish any facts through experimental testing to notify adverse parties of:
Failure to follow this procedure may prevent a party from leading evidence relating to the experimental testing.
Given the prevalence of expert evidence in IP cases, it is important for IP litigators to appreciate the role of experts, understand the test for admissibility and be familiar with all applicable procedural rules.
For further information on this topic please contact Mark Biernacki or Tierney GB Deluzio at Smart & Biggar by telephone (+1 416 593 5514) or email (email@example.com or firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
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