Further pressure on expert privilege

Editor's note: while this case does not turn on any issue of intellectual property, it is of substantial importance in all IP litigation in which a party requires the services of an expert -- particularly where, having received those services, that party opts to change to another expert.

Author: Paul England (Simmons & Simmons LLP)

Ricky Edwards-Tubb v JD Wetherspoon [2011] EWCA Civ 136, 25 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr071, first published online 7 June 2011

There is little doubt that the rules of litigation privilege in England and Wales, to the extent that they apply to expert evidence, are under pressure.

Legal context

Can the notes and draft materials produced by an expert who is being consulted by a party to a dispute be disclosed to that party's opponent?

Normally, such material is protected by litigation privilege, which means that nobody except the party seeking the advice can see it. However, there are limitations to this rule. In particular, in circumstances where a party instructing an expert decides it wants to change its mind and rely on a different expert. In such cases, a number of English authorities have, in recent years, suggested that the court may impose a condition that the work of an earlier expert be disclosed as the price of giving its permission. But, these cases are ambiguous about the exact circumstances in which the courts will be prepared to do this; for example, does the condition apply to experts instructed before proceedings are initiated, does it apply to experts who have not been named? In JD Wetherspoon, the Court of Appeal has stated clearly that imposing this condition should be the normal approach as the price of being permitted to change a named expert. This is the case, whether or not proceedings have actually started.

However, JD Wetherspoon remains unclear about how far back this power reaches; in particular, can the court insist that the work of advisory experts who have been instructed behind the scenes be disclosed? The court seems to try to distinguish between such experts and those instructed for proceedings. But, in the practical world of preparing for proceedings, the difference is often far from clear.

Facts

The case arises from a fall at work suffered by the claimant. Further to the pre-action protocol for personal injuries actions, the claimant gave notice to the other side of three surgeons that might be instructed to give expert evidence. One of these, Mr Jackson, examined the claimant and provided a report. This report was never relied upon or disclosed by the claimant. Proceedings were issued but the particulars of claim were supported by the report of a different orthopaedic surgeon, Mr Khan. Accordingly, the defendants issued an application for the disclosure of the earlier report of Mr Jackson.

Analysis

The background to this issue
Although JD Wetherspoon is a medical negligence case, there is no suggestion in its reasoning that its principles should be limited to such cases. In fact, the Court stressed its general application, which means that it will govern IP litigation too. It is the latest in a number of cases in which a rule of law has developed that allows the court to impose a disclosure obligation as a condition of a party being permitted to change the expert it has instructed to give evidence.

The basis on which the courts have developed this rule is Civil Procedure Rules (CPR) 35.4 under which, if a party wishes to call an expert, it must seek permission. However, where an expert has already been instructed, the courts have embellished the rule with their power to impose conditions under CPR 3.1(3)(a). They have indicated that they can impose, as a condition of permitting a substitute expert, a requirement that material prepared by the expert being replaced is disclosed. The general reason for this measure is that the court should not allow its procedures to be used to facilitate ‘expert shopping’—the unlimited casting about for an expert who is supportive of a particular case.

However, the exact circumstances in which such a condition might be imposed have been unclear. Before JD Wetherspoon, in Beck v Ministry of Defence [2005] 1 WLR 2206 and Michael Vasiliou v Nicos Varnavas Hajigeorgiou [2005] EWCA Civ 236, the courts seemed to suggest that, if the original expert is named pursuant to an order and during proceedings, the court should not countenance ‘expert-shopping’ by permitting a replacement expert without ordering disclosure of the original, unwanted expert's report.

However, the Court of Appeal in JD Wetherspoon goes further: the condition can be imposed whether proceedings have started or not. So, as in the facts of this case, if an expert has been named in the course of an applicable pre-action protocol and the party who has named that expert later seeks to rely on a report by a different expert, the court can order that the earlier expert's report be disclosed as a condition of its permission under CPR 35.4 to use the new expert.

Cases without a specific protocol, such as IP disputes
IP proceedings do not have a dedicated pre-action protocol. However, the CPR does provide a general ‘Pre-Action Conduct’ Practice Direction which says:

the party seeking the expert evidence (the first party) should give the other party (the second party) a list of one or more experts in the relevant field of expertise whom the first party would like to instruct.

In big disputes with parties who are sophisticated and well-resourced, there is often a tacit acceptance that neither party will expect the other to follow this direction. However, this cannot be taken for granted. Accordingly, any party who does follow the Pre-Action Conduct Practice Direction needs to be aware of the possible consequence of exchanging a list of experts—that seeking to rely on an expert later on who is not named in the original list is likely to result in the disclosure condition being imposed.

Cases not following any pre-action protocol at all
The Court of Appeal in JD Wetherspoon also refers to circumstances in which a party has elected to ‘take advice pre-protocol’, at ‘his own expense’. In these cases, it says that ‘the same justification does not exist for hedging his privilege’. Here, the Court is trying to make a distinction between experts instructed to report for the purpose of proceedings and experts instructed privately to advise a party. It is where the decision becomes ambiguous and hence where danger lies. In particular:

• What do the words ‘pre-protocol’ mean? For parties who are not following a protocol, do they suggest that any advice sought during a period that the court deems should have been used to follow pre-action protocol steps is potentially disclosable (for example, where the advice of an expert is named ad hoc to try to help settle a matter)?
  
• What does the court mean when it says at ‘his own expense’?—all expert evidence is prepared at the instructing party's expense. Is the court saying that the costs of early soundings of ‘behind the scenes’ experts who are never instructed to give evidence cannot be recovered?
  
• What does ‘instructed for the purpose of proceedings’ mean in practice?
  
• In particular, what about experts who were brought in with a view to give evidence at trial but later, without ever having been named, are used only as advisory experts? What about vice versa?

These questions are not glib. The Court of Appeal referred in its judgment to a small and, at first sight, odd decision from the County Court, Carruthers v MP Fireworks Ltd (Bristol County Court, 26 January 2007). In Carruthers, the Court ordered the disclosure of an earlier expert's report, apparently regardless of whether that earlier expert had been named, as a condition of changing to another expert. Many had thought this decision wrong, but in JD Wetherspoon, the Court seems to endorse it, emphasizing that the disclosure condition is attached to the granting of permission, not the circumstances in which the earlier report was prepared. There is thus a real question arising about whether the disclosure condition will, in some circumstances, apply to require the privilege in behind the scenes expert materials to be waived.

In an apparent acknowledgement that this may be the practical result of its decision, the Court says that attaching a disclosure condition to permission should be the ‘normal’ order even though it envisages that:
It is likely that one party may ask the other whether there has or has not been any prior report, and/or may seek orders with the condition attached whether or not there is some positive indication that there has been one.


Practical significance

JD Wetherspoon is important because it says that it is not just experts who have been instructed to give evidence during proceedings and named in an order to which the disclosure condition might apply; even the advice of experts who have been interviewed behind the scenes may be at risk. Also, ‘report’ is not defined in Part 35, so there is no guarantee or reason why notes and other materials should not be included.

The decision means that it cannot be taken for granted that advice received from any expert will always remain safely protected by litigation privilege. Tremendous care therefore needs to be exercised when dealing with experts.