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Expert Witness Evidence – Areyou Asking the Right Questions?

Medico Legal

by David Longmuir, Senior Associate - May 2018

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

In reaching a decision on the validity of the innovation patents, the Court was critical of the evidence ofSpeciality Packaging on the question of innovativestep. Her Honour considered that the evidence of itswitness, Mr Mebberson, was flawed and too fraughtwith problems to provide a reliable foundation forany conclusions.

Significantly, the focus of Mr Mebberson’s initial instructions was on the question of obviousness whichis not the relevant test for an innovation patent. Although Mr Mebberson was subsequently asked toidentify an innovative step, the Court found that thisappeared to contribute to the confusion. Her Honour noted that the evidence did not focus on theworking of the invention, and also omitted referenceto 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 acceptedthe evidence of the applicant in reaching a conclusion on validity.

The decision is also interesting because Mr Ainslie, aDirector or General Manager of Specialty Packagingat the relevant time, was also found to have infringedMultisteps’ patents and designs by authorising the infringements of Specialty Packaging. Importantly,Multisteps filed evidence which indicated that MrAinslie had sufficient control over and involvementin Specialty Packaging’s infringing conduct. Despitecontesting the admissibility of this evidence, MrAinslie chose not to give evidence refuting Multisteps’claims leading her Honour to infer that that any evidence he may have given would not have assistedhim.

The decision serves as a useful reminder to lawyersand company directors alike in the conduct of theirrespective matters.

David Longmuir,Senior Associate BSc(Hons) LLB(Hons) LLM FIPTA

David began his career with Phillips OrmondeFitzpatrick Lawyers in 2003 as an articled clerk, andwas admitted to practice as a barrister and solicitor ofthe Supreme Court of Victoria and the Federal andHigh Courts of Australia in 2004. He was subsequently registered as a trade marks attorney in 2006and a patent attorney in 2007.

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