Patent law is one of the most technically demanding legal areas \u2014 a techno-legal domain where judges and patent attorneys often encounter difficulty in understanding the facts and technologies discussed during patent litigation. A scientific advisor or technical expert in the relevant technology assists the court in translating complex scientific and engineering concepts into terms that judges and legal practitioners can comprehend. Patent-inexperienced judges must devote considerable time merely to understand the technological jargon deployed in technical disputes. Courts therefore refer extensively to expert opinions when formulating judgements, and may appoint an independent expert to address factual issues in addition to party-appointed experts. The opinion of experts may be challenged by cross-examination.<\/p>\n
During patent infringement proceedings, the patented technology is examined thoroughly. The initial focus rests on the claims of the patent, where advances over the prior art are analysed, and the inquiry then shifts to comparing the claim elements with the potentially infringing product or process. A patent is said to be “literally infringed” if the claims exactly describe the potential infringing product or process \u2014 such cases are generally straightforward with respect to the need for a technical expert’s opinion. Complexity arises when the infringing product or process does not exactly “read on” the claim, and the claim mapping shifts to the Doctrine of Equivalence. The inputs of the technical expert assume importance when equivalence comes into consideration. The scientific expert must, however, remain cognisant that the role is to explain, define, and interpret technological aspects for a legal decision rather than a scientific one.<\/p>\n
Expert testimony concerning infringement may encompass multiple aspects, including the manner in which claims read on the accused products, the results of testing conducted to prove or disprove infringement, and proof of active inducement or contributory infringement. Expert opinions relating to patent validity may cover matters such as anticipation, inherency, the scope and content of the prior art, the differences between the prior art and the claimed invention, and how a person of ordinary skill in the art would understand the teachings of the prior art. Expert views on whether a person of ordinary skill would be motivated to combine the prior art, the level of ordinary skill in the art, and secondary considerations of non-obviousness \u2014 such as long-felt need, unexpected results, failure of others, and commercial success \u2014 carry weight when judgements are formulated. The testimony of technical experts may also be sought on enablement and written description issues.<\/p>\n
Patent law in India expressly addresses scientific advisors in Section 115 of the Patents Act, 1970, which states:<\/p>\n
“In any suit for infringement or in any proceeding before a Court under this Act, the Court may at any time, suo moto or on an application made by a party, appoint an independent Scientific Advisor to assist the Court or to inquire and report upon any such questions of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.”<\/p><\/blockquote>\n
Illustrative Cases: Enercon GmbH v. Enercon India Limited<\/h2>\n
The disputes between Enercon GmbH, Germany and Enercon India Limited (EIL), an Indian subsidiary of Enercon GmbH, illustrate the decisive role of technical experts in patent proceedings. In these matters, Patent No. 197959 (IN\/PCT\/2000\/00124\/CHE) and Patent No. 199045 (IN\/PCT\/2001\/1600\/CHE) were revoked by the Intellectual Property Appellate Board (IPAB) on grounds of obviousness and lack of inventive step, based on analysis of the experts’ affidavits submitted by both parties.<\/p>\n
The following paragraphs from the IPAB’s order in the revocation proceedings concerning Patent 197959 highlight the significance of expert evidence:<\/p>\n
Para 29<\/strong> states:<\/p>\n
“It was pointed out at para 240,( of the UK judgement) page 78. (of the revocation application) that the court, based on opinion and cross examination of experts on both the sides (Dr. Taylor for Alloys Wobben and Prof. Green from Vestas’s side), held at the priority date dc-rating was common general knowledge as it is part of most basic knowledge of any electrical engineer it would have been trivial to implement the same on wind turbines at the date of priority.”<\/p><\/blockquote>\n
Para 31<\/strong> states:<\/p>\n
“It was also submitted that the claim 1 does not require the wind turbine to de-rate to zero. It is enough that the amount of power which is emitted is reduced, even before reaching a defined minimum network voltage value Vmin. The UK court found, on cross examination, that experts from both sides, agreed that the above feature is obvious Therefore, it was submitted that claim 2 of the impugned patent is obvious and does not involve an inventive step in view of common general knowledge.”<\/p><\/blockquote>\n
Para 49<\/strong> states:<\/p>\n
“Further, the attention of the Board was invited to page 65 (of the revocation application), paragraph 152, (of the UK judgement), where it was shown that Dr Taylor the expert of respondent on cross examination agreed that it was conceptually obvious that the wind energy systems would have to stay connected to the network (in case of faults), when such wind energy systems have attained certain power capacity, because it would be a requirement for them to comply. However the expert believed that technically implementing LVRT would not be obvious because it would involve a lot of technical knowhow and different techniques than what is required for a conventional power plant.”<\/p><\/blockquote>\n
Disclaimer<\/h2>\n
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.<\/p>\n","protected":false},"excerpt":{"rendered":"
Scientific advisors play a pivotal role in patent litigation by clarifying complex technical issues for the court. Their expertise aids in interpreting patent claims, assessing infringement, and influencing judicial decisions, as demonstrated in significant Indian patent cases.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":83,"footnotes":""},"categories":[6,14],"tags":[7606,1837,2789,16,158,609,850,7607],"class_list":["post-30733","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-expert-witness","tag-indian-patents","tag-patent-disputes","tag-patent-infringement-2","tag-patent-litigation","tag-patents-act-1970","tag-scientific-advisor","tag-technical-expert"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30733","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=30733"}],"version-history":[{"count":4,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30733\/revisions"}],"predecessor-version":[{"id":149934,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/30733\/revisions\/149934"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=30733"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=30733"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=30733"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}