Halliburton Energy Services Inc v Smith International (North Sea) Ltd & Ors

A scientific adviser in a patent appeal may assist the court to understand expert evidence, identify possible misunderstandings by the trial judge and evaluate factual conclusions. The adviser may express opinions on disputed factual matters where this is unavoidable, but the court remains the decision-maker and must decide the appeal on the evidence before the trial judge.

Fairness requires disclosure of any potentially influential opinion and a sufficient opportunity for the parties to respond. An adviser’s preliminary expression of views does not itself require removal. The question is whether, with appropriate safeguards, the adviser can continue to assist impartially and whether a fair-minded and informed observer would perceive a real possibility of bias.

Halliburton appealed against an order of Pumfrey J declaring patents invalid. Although the underlying patent dispute had been settled, an earlier Court of Appeal decision, [2006] EWCA Civ 185, directed that the appeal should be heard on its merits and that a scientific adviser should be appointed.

Professor David Limebeer was appointed and received the appeal materials. He then sent the members of the court a preliminary note identifying engineering issues and expressing provisional views about aspects of the expert evidence. The note was disclosed to Halliburton and the Comptroller General of Patents.

Halliburton applied in substance to revoke the appointment, contending that the adviser had exceeded his role and that his continued involvement would create a perception of unfairness. Revocation would have required adjournment. The central issues were the permissible role of a scientific adviser, the safeguards required by fairness and whether the note disqualified Professor Limebeer from continuing.

1. The application was refused. The court held that it was unnecessary to revoke Professor Limebeer’s appointment and therefore unnecessary to adjourn the substantive appeal.

2. Sections 54(9) and 70(3) of the Supreme Court Act 1981, together with rule 35.15 of the Civil Procedure Rules 1998, permit the court to direct a scientific adviser to take such part in the proceedings, and advise on such matters in issue within the adviser’s skill and experience, as the court considers useful. The adviser may help the appellate court understand the expert evidence, assess whether the trial judge fully understood it and evaluate the judge’s factual conclusions. The adviser does not decide the appeal and is not a witness. The appeal must be decided on the evidence before the trial judge.

3. The overriding requirement is fairness. Following the approaches in The owners of the ship “Bow Spring” v The owners of the ship “Manzanillo II” [2004] EWCA Civ 1007 and Porto Segura Companhia De Seguros v Belcan SA [1997] 3 S.C.R 1278, advice affecting a disputed factual matter may be received if it is disclosed and the parties have a sufficient opportunity to respond. It can be inevitable in a technically complex field that a skilled adviser will express an opinion. Disclosure and a right to comment provide the necessary safeguard.

4. Professor Limebeer’s note was preliminary and intended to identify the scientific issues requiring attention. It acknowledged the boundary between legal and scientific matters. Neither its provisional opinions nor his professional acquaintance with a trial expert demonstrated a closed mind or partiality. His acquaintance was no more than could be expected between distinguished academics in the same discipline.

5. Applying the fair-minded and informed observer test stated in Locabail (UK) Ltd v Bayfield Properties Ltd [2000] QB 451, the court rejected the submission that continued assistance would create a perception of an unfair hearing. An informed observer would understand the distinct roles of the adviser and the court, the court’s ability to disregard extraneous material, and the opportunity afforded to the parties to comment.

1. Court of Appeal (Civil Division): By [2006] EWCA Civ 1599, refused to revoke the scientific adviser’s appointment and held that adjournment of the pending patent appeal was unnecessary.

2. Court of Appeal (Civil Division): By [2006] EWCA Civ 185, directed that the appeal against the invalidity order should proceed on its merits despite settlement of the underlying dispute, and provided for the appointment of a scientific adviser.

3. Patents Court: Pumfrey J made an order on 27 July 2005 declaring the patents in suit invalid. No citation for that order is stated.