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This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 4: Evidence

Federal Court of Appeal, Canada [2023]: dTechs EPM Ltd v British Columbia Hydro and Power Authority and Awesense Wireless Inc, 2023 FCA 115

Date of Judgment: May 26, 2023; correction made June 1, 2023

Issuing Authority: Federal Court of Appeal [FCA]

Level of Issuing Authority: Appellate Court (final determination, leave to appeal to the Supreme Court dismissed)

Type of procedure: Judicial (Civil)

Subject matter: Patents (Inventions)

Appellant: dTechs EPM Ltd. [dTechs]

Respondents: British Columbia Hydro and Power Authority [BC Hydro] and Awesense Wireless Inc [Awesense]

Keywords: Patent, Expert evidence

Basic facts: This was an appeal of a decision of the Federal Court that dismissed a claim for patent infringement made by the patent owner, dTechs, as against the defendants BC Hydro and Awesense. The Federal Court found that the claims of the patent were not infringed, and that they were invalid on the grounds of anticipation and obviousness. The issues for determination by the FCA at the appeal related to whether evidence presented by BC Hydro’s expert witness should have been excluded or given no weight because it was not independent expert evidence. dTechs alleged that new evidence (a working agreement and invoices for the expert’s services), which was obtained after trial when evaluating BC Hydro’s costs, indicated that the expert did not author their own report and therefore that the expert was not an independent or unbiased witness.

Two questions were raised for determination: 1) whether the new evidence had sufficient probative value to support the position that the expert evidence was inadmissible or should be given no weight; and 2) if so, whether in light of the other evidence adduced at trial, such a finding might have led to granting the infringement action and dismissal of the defense and counterclaim based on invalidity.

Held: There was no evidence to establish that the expert’s evidence did not represent his objective and non-partisan opinions. Although the new evidence suggested that the expert did not write the first drafts of his report, the evidence indicated that he read, reviewed, and commented on those drafts and that the opinions expressed were his own. The collaboration between BC Hydro’s counsel and the expert did not invalidate the expert’s evidence.

However, the FCA found the new evidence might have had some impact on the weight afforded to the evidence of BC Hydro’s expert. The FCA concluded that this would not have affected the result of the infringement action per se because of the undisturbed legal and factual findings of the Federal Court. However, the FCA found that the invalidity findings of one of the dependent claims in issue might have been affected and therefore should be removed from the finding of invalidity in the judgment. The judgment left open the option for the defendants to seek a redetermination of the invalidity of that dependent claim based on the new evidence.

Relevant holdings in relation to evidence (specifically, expert evidence in patent cases):

·       Expert reports in patent cases may be prepared in collaboration with counsel in an effort to present the substantive opinion of the expert in a manner and format that is helpful to the Court, in light of the complexity of the issues raised. Collaboration can include having counsel draft the first version of the report from notes made during consultation with the expert, provided that the substantive and objective opinion of the expert is reflected in the report.

·       It is the duty of counsel in patent cases to verify whether the boundaries of permissible involvement were infringed by obtaining, through cross-examination, the information necessary for the Court to assess if the opinion presented by the expert is truly their own objective opinion.

·       Concerns about an expert report should be raised as early as possible, such as before trial or during cross-examination, to ensure the proper administration of justice.

·       The FCA also reiterated principles from the Supreme Court of Canada’s decision in White Burgess Langille Inman v Abbott and Haliburton Co, 2015 SCC 23 that it is only in clear cases where the expert is unwilling or unable to comply with their duty to give fair, objective, and non-partisan opinion evidence that concerns raised by the opposing party will go to admissibility. Anything less than clear unwillingness or inability to do so will go to the weight of the evidence of that expert.