Expert witness evidence – are you asking the right questions?

The decision in Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587 has highlighted the importance of the initial instructions and discussions with experts in the evidence gathering process. It has also shed light on the potential liability of individuals having control over conduct ultimately held to infringe. Multisteps commenced proceedings against Specialty Packaging, and its director Mr Ainslie, for infringement of two innovation patents and registered designs in respect of produce containers, with the Court finding the patents and designs to be valid and infringed.

In reaching a decision on the validity of the innovation patents, the Court was critical of the evidence of Speciality Packaging on the question of innovative step. Her Honour considered that the evidence of its witness, Mr Mebberson, was flawed and too fraught with problems to provide a reliable foundation for any conclusions.

Significantly, the focus of Mr Mebberson’s initial instructions was on the question of obviousness which is not the relevant test for an innovation patent. Although Mr Mebberson was subsequently asked to identify an innovative step, the Court found that this appeared to contribute to the confusion. Her Honour noted that the evidence did not focus on the working of the invention, and also omitted reference to that part of the test dealing with substantial contribution to the invention. As a result of these issues, the Court gave the evidence little weight and accepted the evidence of the applicant in reaching a conclusion on validity.

The decision is also interesting because Mr Ainslie, a Director or General Manager of Specialty Packaging at the relevant time, was also found to have infringed Multisteps’ patents and designs by authorising the infringements of Specialty Packaging. Importantly, Multisteps filed evidence which indicated that Mr Ainslie had sufficient control over and involvement in Specialty Packaging’s infringing conduct. Despite contesting the admissibility of this evidence, Mr Ainslie chose not to give evidence refuting Multisteps’ claims leading her Honour to infer that that any evidence he may have given would not have assisted him.

The decision serves as a useful reminder to lawyers and company directors alike in the conduct of their respective matters.

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David is an experienced IP litigator and registered patent and trade marks attorney who brings a technological understanding together with legal expertise to resolve IP disputes for Australian and international businesses.