Expert evidence in the UPC – what do we know so far?

One important aspect of proceedings at the UPC from the perspective of potential users of the system, is the role of expert evidence in proceedings. The UPC, on one hand, offers a litigation system that in many respects resembles civil law litigation in which written evidence dominates. For example, the UPC procedure is "front loaded" - a claimant is expected to elaborate its arguments and evidence in its first pleading. On the other hand, the court has the authority to deploy a number of common law procedural tools. For example, article 53 of the UPC Agreement ("UPCA") provides the UPC with the authority to consider all relevant evidence, including "opinions by experts". Prior to the advent of the UPC, it was therefore difficult to foresee the extent to which judges would be receptive to the use of experts in practice. This article reports on the early UPC decisions relating to expert evidence and what we have learned so far about the UPC's approach.

How can expert evidence be admitted into UPC proceedings and what is its role?

The UPC's framework provides for the use of both party-appointed (R. 181 Rules of Procedure "RoP") and court-appointed experts (R. 185 RoP). It also allows flexibility in how expert evidence may be admitted – either together with the pleadings during the written procedure, and/or by order during the interim procedure (in which the court prepares the proceedings for the oral hearing). This flexibility was demonstrated by the Munich Central Division in Sanofi v Amgen (See the Order dated 24 January 2024 by the Munich Central Division, APP_2196/2024, UPC_CFI_1/2023). The Claimants (Sanofi) made an application to the Court to admit a letter accompanied by three expert declarations into the proceedings. The Claimants argued that the expert declarations should be admitted because the Defendant's rejoinder included expert declarations that raised a number of new points, some of which the Claimants considered to be inaccurate and to require a response. The Defendant (Amgen) contended that the Claimants' request was "premature" and should be rejected because they should have waited for the interim conference to request permission to file further expert declarations. The Judge-Rapporteur granted the application noting that he was permitted to allow the exchange of further written pleadings (R. 58 in connection with R. 36 RoP) upon reasoned request by a party. In addition, under R. 9.1 RoP, the Court may, at any stage of the proceedings, order a party to take any step, answer any question or provide any clarification or evidence. It is noteworthy that the Judge-Rapporteur allowed the application "in view of the specific circumstances" of the present case. The expert declarations that the Claimants had submitted raised a small number of discrete points and were concise (six pages in total). Had the additional expert declarations been more substantial in nature, the Judge-Rapporteur may not have granted the application.

The Sanofi v Amgen proceedings also provided an insight into the role of expert evidence in the UPC. The Munich Central division followed a similar approach to that taken by the national courts of many UPC member states. Expert evidence may assist the court if certain findings of fact are contested, but the assessment of the facts and validity of the patent are questions of law to be decided upon by the Court (See paragraph 8.3, Order dated 16 July 2024 by the Munich Central Division, ORD_598362/2023, UPC_CFI_1/2023).

What approach does the UPC take to hearing experts?

The UPC Rules of Procedure make provision for both party-appointed (R.178, R.181 RoP) and court-appointed experts (R.178, R.185, R.188 RoP) to be heard and, if required, cross-examined. However, the national courts of the majority of UPC member states rely solely on expert evidence in written form. One notable exception to this is that party-appointed experts play an important role in Swedish patent proceedings and are often consulted and relied upon by the court. Another notable exception is Austria, where it is common that in main infringement proceedings court-appointed experts are heard and cross-examined in the oral hearing.

Given the legal traditions of the national courts, one might expect that the UPC will predominantly rely on documentary and limited written expert evidence. Some early UPC decisions appear to indicate that this approach will indeed become the norm. For example, in Edwards v Meril  (See Order dated 6 September 2024 by the Munich Local Division, ORD_598441/2023, UPC_CFI_15/2023), both the Claimant and the Defendants requested that either their own expert should be heard at the hearing, or a Court expert should be appointed. The Judge-Rapporteur refused these requests commenting that there was no need to hear the parties' experts or to appoint a court expert. By contrast, in Abbott v Dexcom, the Nordic-Baltic regional division scheduled a full day to hear the four party experts (See Order dated 7 October 2024 by the Nordic-Baltic regional division, ORD_55063/2024, UPC_CFI_430/2023) . Each party was allowed to present key aspects of their case during evidence in chief and opposing counsel were provided with an opportunity to cross-examine the experts. How widely utilised expert hearings will become at the UPC remains to be determined, however, it may be that divisions differ in their approach and that the Nordic-Baltic division may be more amenable to hearing experts due to the Judges' experience in their own national court systems. This may also be the case for the Local Division Vienna - so far, this local division has not dealt with this question (See Order dated 6 August 2024 by the Court of Appeal, APP_2399/2024, UPC_CoA_335/2024). It is worth noting, however, that UPC divisions are generally ordering oral hearings of one to two days, to be held within one to two months of the interim hearing and that the constraints on the length of hearings and preparation time available to the parties is, in most instances, unlikely to allow for the style of cross-examination of party-appointed experts permitted some legal systems, e.g. the UK and Sweden.

What is the relationship between the advice of technical qualified judges and experts?

In UPC proceedings, there can be up to three sources of technical advice to the court: the technically qualified judge, court-appointed expert and party-appointed experts. The technically qualified judge must have a university degree and proven expertise in the field of technology. They can be expected to assist the court to resolve any conflicts between the expert evidence of party-appointed experts. One recent case, 10x Genomics v Nanostring (See Order dated 6 August 2024 by the Court of Appeal, APP_2399/2024, UPC_CoA_335/2024) , has provided further insight on the role of technical judges in assessing expert evidence. At the request of 10x Genomics, the Court of First Instance (the Local Division, Munich) ordered that Nanostring must refrain from direct or indirect infringement of the patent in the contracting member states of the UPCA. Nanostring successfully appealed this order, which was set aside by the Court of Appeal. 10x Genomics then applied to re-open the proceedings, arguing (amongst other points) that the Court of Appeal had relied on the personal expertise of one (or more) of the judges and that in doing so, the Court of Appeal had based its decision on facts neither submitted by the parties nor introduced into the proceedings by order of the court, which was a violation of Art. 76(2) UPCA. In particular, 10x Genomics argued that the Court of Appeal had introduced the case with the words "According to the assessment of the technically competent court" [in German: “Nach Beurteilung des technisch fachkundig besetzten Gerichts”], demonstrating that it had relied on the personal expertise of one (or more) of the judges. The Court of Appeal rejected 10x Nanostring's argument, noting that it was based on an incorrect understanding of the quoted phrase and that the wording used by the Court of Appeal in fact meant that the court was particularly equipped and qualified to assess arguments and evidence presented in a technically complex matter. The court also held that it was clear from the order that the Court of Appeal had not based its decision solely on the parties' submissions, but also on the description of the patent in suit itself, a prior art publication and the expert evidence. It was therefore clear that its reasoning was not based on the personal decision of one (or more) of its judges.

Can the inventor be examined as an expert?

Recently, the Paris Central Division shed light on whether the inventor of the patent at suit can be examined as a witness or expert in Advanced Bionics v MED-EL (See Order dated 26 December 2024 by the Paris Local Division, ORD_598503/2023, UPC_CFI_338/2023) . Both parties submitted written expert evidence that they considered necessary to establish the common general knowledge and requested that their experts be heard in person by the Court at the oral hearing. Amongst the expert statements submitted by the Defendants were written statements of the inventors of the patent at suit. The Court held that the inventor could not be heard in person as an expert or as a witness. The Court considered that as inventor of the patent at issue, he may have a direct interest in the outcome of the case and therefore did not meet the requirements of R.181(1)(a) and (b) RoP of impartiality, objectivity and independence. The Court did, however, allow the other experts to be heard in person at the oral hearing. They were asked questions by the parties and the panel limited to the facts required to establish the common general knowledge at the priority date.

Guidance on the role of expert evidence at the UPC so far

The decisions of the UPC to date have demonstrated that the UPC will in general admit expert evidence and that this can be of assistance to the court where findings of fact are contested. However, whilst the procedural mechanism for hearing expert witnesses exists, it remains to be seen how often this is utilised. It is also rather unclear at this stage whether divisions will take differing approaches to oral expert evidence – indications show that this may indeed be the case -and how best practitioners and judges should select and manage experts, particularly given the constraints on the length of hearings at the UPC.