Thursday, January 12, 2023

Sobol on Court-Appointed Experts in Italian IP Litigation

Agata Sobol has published an article titled Italian Supreme Court: importance of the court expert in litigation: GA and GE v Veneto Banca SpA, 45 EIPR 51-55 (2023).  The article discusses an unreported decision of the Italian Supreme Court, dated February 1, 2022, which the author states includes a 50-page (!) discussion of the role of court-appointed experts in Italian litigation.  Here is the abstract:

This is not a judgment issued in an IP case, but it has important consequences for IP litigation in Italy. This judgment concerns the powers of court experts appointed in civil cases. Such court experts are frequently appointed in IP cases in order to assess validity and/or infringement of an IP right (in case of patents), its existence and/or misappropriation (in case of trade secrets) as well as in order to calculate damages suffered due to the alleged infringement. The Italian judge will usually base the decision of the IP case on the evaluation of the facts object of the case made by the court expert. The Supreme Court’s decision at issue confirms that the investigative powers the appointed court experts enjoy, especially with reference to the accounting analysis, are very broad, which is interesting for IPRs holders.

Applying the principles set forth in the decision to IP cases, the author concludes that "assessing damages due to infringement in a litigation in Italy where a court expert can search for data not filed by the parties and can investigate the accuracy of the data received, provides IP right owners with good tools."  She also notes that the forthcoming UPC system will permit court-appointed experts, but on a more limited basis than is now possible in Italy.

Court-appointed experts are used in other jurisdictions to varying degrees, but we don't use them much in the United States, however, despite the fact that Federal Rule of Evidence 706 permits the practice.  Long ago, Learned Hand asked, in his famous decision in Parke-Davis & Co. v. H.K. Mulford Co.,189 F. 95 (C.C.S.D.N.Y. 1911),  "How long shall we continue to blunder along without the aid of unpartisan and authoritative scientific assistance in the administration of justice?”  Former Supreme Court Justice Stephen Breyer also endorsed the use of court-appointed experts, as did Judge Richard Posner--who made use of them himself in some patent cases in which he sat as a district court judge.  Most U.S. judges nevertheless remain pretty reluctant to appoint experts, probably in part because it creates more work for the judges themselves, and probably in part because U.S. lawyers and judges tend to view court-appointed experts as an affront to our (hyper-) adversarial system. 

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