Knowledge & News

Further FRAND findings in the UK

2 August 2018

For those interested in all things fair, reasonable and non-discriminatory, especially FRAND disputes, a further battle has recently taken place in the UK Patents Court – relating to 3 European Standard Essential Patents (SEPs) which were asserted by Philips against both Asus and HTC on the basis that Philips’ standard essential technology was used in Asus and HTC’s products.  The patents concerned various aspects of “High Speed Packet Access” in the telecommunications UMTS standard, specifically packet transmission check and power control techniques.
 
The Court held that two of these patents (“525” and “511”) were valid and infringed (the Defendants had already accepted infringement/essentiality before trial for the 525 patent).  The remaining patent (“659”) was found to be invalid for lack of inventive step.  It is worth noting that the Dutch Court was less permissive than the UK Court in proceedings relating to the inventiveness of the Dutch counterparts – all of the Dutch designations of the same EP patents were found to be invalid for lack of inventive step in the Netherlands.  Where the UK Court found validity, it distinguished its decisions based on the different evidence and arguments which it had heard.  Where another European designation of an EP patent has already been litigated, UK judges give due deference to the decisions of their fellow EU judges but invariably justify coming to a different decision for the UK designation on the basis that they heard different (usually more-involved) evidence and cross-examination from expert witnesses.
 
The technical issues of infringement and validity of the three patents were handled over the course of two trials which took place through April to July 2018.  In addition, a further trial had been listed to deal with “issues relating to Philips’ undertaking to ETSI to grant licences on FRAND terms”.  It is not yet clear whether, subject to any appeal on the technical issues, the parties will require the Court’s views on FRAND issues or whether they can agree a suitable licence between themselves.  However, it may still go before the UK Court – and give insight into how the UK Court will apply the imminent Unwired Planet appeal decision – in the near future.
 
Separately, the case serves as a reminder of the critical nature of expert evidence in UK patent proceedings and the care which should be taken when preparing evidence and considering experts who have been used in previous proceedings with similar subject matter.  Here, the Court noted that one of the Defendants’ experts had copied one sentence from the patent into the “common general knowledge” section of his report without acknowledgement.  This was taken as an indication that he had the patent in front of him when writing this section dealing with the state of the “art” before the invention had been made.  As a result, it was likely that he had formed views based on hindsight knowledge of the invention.  This is an impermissible approach in the UK and his views would have been treated with greater caution by the judge.  The Court also acknowledged that, for conceptual patents of this type, there was a risk that hindsight would pervade the views on inventiveness of an expert in the UK case where they had previously worked on the related Dutch proceedings (carrying out prior art searches and producing a report).  Such evidence would likely be tainted and have less persuasive impact in the UK proceedings.

Authors

John de Rohan-Truba

John de Rohan-Truba Managing Associate London (UK) Solicitor (UK)

Will James

Will James Partner London (UK) Solicitor (UK)

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