Posted: April 16th, 2018
Edwards v Boston, UK Patents Court, Floyd LJ, 30-31 January 2018, HHJ Hacon 21 March 2018
The Court of Appeal has upheld the High Court’s decision that one of two patents owned by Boston Scientific Scimed Inc. relating to replacement heart valves was invalid, and the other valid and infringed by Edwards Lifesciences companies. In the first instance decision HHJ Hacon found that the first patent (EP’254) was obvious over a prior art document called Thornton, but found that the other patent (EP’766) was valid and partially infringed by Edwards.
Interestingly, Boston’s appeal against the findings of obviousness of EP’254 were based upon the contention that “the judge made an error of principle in declining to accept unchallenged evidence given by one of their expert witnesses, Prof Georg Lutter” and that if he had accepted his evidence “as he was bound to do, he ought not to have found the invention of EP’254 to be obvious.” 
This complaint against how the judge handled the evidence was despite the fact the particular aspects of Prof Lutter’s evidence was not cross-examined at all during the trial. At the heart of it, the Court of Appeal had to determine whether Edwards’ “decision not to cross-examine the witness on these points had led to unfairness to the extent that the judge’s decision…[was] thereby undermined.” 
Floyd LJ comments on this allegation with reference to paragraph 12 of Phipson on Evidence (19th Edn. 2016) which states that: “In general a party is required to challenge in cross-examination the evidence of any witness of the opposing party if he wishes to submit to the court that the evidence should not be accepted on that point.” 
Floyd LJ agreed, using Markem v Zipher  EWCA Civ 267 as an example, that this rule is important for a number of reasons and referred to a statement by Jacob LJ in his judgement that “…procedural fairness not only to the parties but to the witnesses requires that if their evidence were to be disbelieved they must be given a fair opportunity to deal with the allegation.” 
However, when Floyd LJ came to concluding he was “wholly unpersuaded” that the judge’s decision was rendered unsafe just because Prof Lutter was not specifically challenged in cross-examination on certain points. Among a number of reasons he gave, he made reference to the fact that Prof Lutter had seen and had the opportunity to comment on conflicting evidence from the other side’s expert. This meant he could have used this opportunity to expand on his own evidence if he had thought it was necessary. He also stated that “ultimately it was each expert witness’ overall reasoning which the judge was examining” and that, because the judge had found adverse to Prof Lutter’s evidence on two other points, the judge should not necessarily have been “bound to accept Prof Lutter’s further reasoning.”
Finally, he also indicated that it was not enough that during cross-examination Prof Lutter was told he would be examined on a particular issue, but in the end never was. If Boston felt Prof Lutter needed to give further evidence on an issue they “could have led such evidence from Prof Lutter in chief, or, alternatively, applied to have him recalled before final speeches.” 
The case highlights the flexibility of the rule on the use of cross-examination in giving a witness the opportunity to explain any contradiction or alleged problem with his evidence. As Floyd LJ determines in this judgement, “procedural rules such as this are the servants of justice and not the other way round.” 
In related proceedings before the first instance court, Boston has been refused permission to hold both an enquiry as to damages and an account of profits in respect of Edwards’ infringing acts. Boston wished to have both because it was unclear whether profits accrued by two Edwards group companies could be included in the account. The Court held that as a matter of case management Boston had to make an election: it could have either an enquiry, or an account, but not both.
Headnote: Storm Lindenberg, Marks & Clerk Solicitors LLP