Video evidence in patent cases – weight matters

In brief

Video demonstration evidence is rare in patent cases in Australia. The recent decision in Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333 (Vald v KangaTech) illustrates the pitfalls of preparing evidence in the form of a demonstration.

Background

Vald Pty Ltd (Vald) sued KangaTech Pty Ltd (KangaTech) for infringement of its Australian patent relating to an apparatus for use in assessing hamstring strength while a person performs an eccentric knee flexor contraction. An example of such an exercise is the “Nordic curl”, which is typically performed with both legs secured (a “bilateral” Nordic curl).

Vald alleged that KangaTech had infringed its patent by selling and supplying the “KangaTech Product” and, subsequently, the “KT360” product to customers. In particular, Vald alleged that these products could be used to perform a bilateral Nordic curl and “Other Nordics”.

KangaTech admitted that the KangaTech Product and the original KT360 product would infringe certain claims of the patent (if those claims were found to be valid). KangaTech denied infringement for the versions of the KT360 product after software modifications were made in 2019 and 2022 (Post-SM KT360 Product). The software modifications ensured that as soon as forces consistent with a bilateral Nordic curl being performed are detected, sensors are disabled and the forces are not measured.

Evidence

Rather than adduce evidence to show that the Post-SM KT360 Product was being used by customers to perform the Other Nordics, Vald relied upon expert evidence of Dr Tania Pizzari, a physiotherapist and academic.

Dr Pizzari performed an inspection of the Post-SM KT360 Product, which was filmed by Vald’s solicitors. Dr Pizzari’s affidavit evidence was that she had been provided with brief instructions on how to use the Post-SM KT360 Product before the inspection. During the inspection, she instructed a test subject, Mr Ruddy, to perform each of the Other Nordics on the Post-SM KT360 Product.

During the trial, new evidence emerged from Dr Pizzari about the circumstances surrounding her inspection of the Post-SM KT360 Product. This revealed that:

• Mr Ruddy was not randomly selected by Dr Pizzari.
• Dr Pizzari spoke to Mr Ruddy before the exercises were performed and discovered that he was a Vald employee.
• Mr Ruddy was able to perform up to 20 Nordic curls in various positions to test the device, a point where most people would become very fatigued.
• Mr Ruddy had practiced the Other Nordics before being instructed by Dr Pizzari to do so, contrary to the impression given by the videos.
• There was no protocol provided on the Post-SM KT360 Product for performing a bilateral Nordic curl, and Dr Pizzari had to trial different protocols to find one which was closest to a bilateral Nordic curl protocol and which would utilise the relevant sensors.
• The exercises Dr Pizzari had asked Mr Ruddy to perform on the Post-SM KT360 Product were ones which she had never asked anyone to perform on any other apparatus.

Findings

Justice Downes was critical of Dr Pizzari’s evidence and the manner in which the video evidence was prepared. In particular, her Honour observed:

• The omission from Dr Pizzari’s evidence of Mr Ruddy’s lack of independence was a serious deficiency in that Vald’s infringement evidence was predominantly dependent upon Dr Pizzari’s observations and interpretation of what occurred during the demonstrations.
• Nothing in Dr Pizzari’s affidavit evidence disclosed anything about Mr Ruddy other than his appearance (from the videos). The omission that Mr Ruddy was not representative of “most people” was problematic, as it would have been relevant to the issue of whether a reliable force measurement could be obtained from the demonstrations on the Post-SM KT360 Product.
• The fact that Dr Pizzari had never asked anyone to perform, on any other apparatus, the exercises she had asked Mr Ruddy to perform, evidenced that the demonstrations were artificial, showing exercises which are unlikely to be performed on the Post-SM KT360.

Justice Downes determined that all of the relevant facts on which Dr Pizzari’s evidence was based were not exposed in her evidence or otherwise proven. Further, the facts that were not revealed until trial raised questions about the veracity of the video evidence and the conclusions which could be reached based on such evidence. They also raised questions about what other information surrounding the video evidence was not before the court. As a result, her Honour assigned little weight to the video evidence and the evidence given by Dr Pizzari by reference to those demonstrations.

Consideration

The decision highlights the need to ensure that all relevant facts underlying expert evidence are made clear to the Court. Vald characterised the video evidence as “demonstrations”, rather than “experiments”, presumably with rule 34.50 of the Federal Court Rules 2011 (Cth) in mind. Under rule 34.50, a party cannot tender experimental proof as evidence in the Federal Court of Australia (without leave of the Court) unless it has applied for orders for the experiment to be conducted, including in the presence of the opposing party’s representatives (see our previous article on experimental proof). The purpose of the rule is to ensure that an opposing party has an adequate opportunity to challenge the validity of an experiment, and avoid wasteful duplication by the opposing party of an experiment that can be seen to be valid.

While compliance with rule 34.50 of the Federal Court Rules would not have saved Vald’s infringement case, the strictness of those requirements is indicative of the level of disclosure required by parties when seeking to rely on video demonstration evidence.

Key lessons

• All relevant facts on which expert evidence is based should be disclosed to the Court. For demonstrations, this may include details regarding the test subject, information given to the test subject, and details regarding testing in advance of and the design of the demonstrations.
• Parties should consider using the regime under rule 34.50 of the Federal Court Rules if they are contemplating evidence in the form of a demonstration. By engaging with the other party beforehand, agreeing a protocol for the demonstration to be carried out which will allow the other party’s solicitors and experts to be present, early attention tends to be given to the inclusion of all of the facts the Court will find relevant in its assessment of the evidence.