New year, new installment of the IP Education Series! (Previous posts: Intro, #1, #2, and #3) This Professor Dinusha Mendis, illustrates where the minds of IP and engineering students meet with fantastic results!
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Over to Dinusha:

Intellectual property is a valuable asset to buy, sell and license. Millions of businesses around the world use it as a mechanism for protecting, commercialising and exploiting their innovative brands, designs, creative work and innovations. Starting to understand IP at an early stage, for example at University, can therefore be a significant benefit for aspiring innovators and businesses. Opening doors for collaboration with IP law students, at that stage, can enrich that experience – as seen through the IP-Design Collaboration Project at Bournemouth University (BU).

The IP-Design and Engineering Collaboration Project at Bournemouth University

The IP-Design collaborative project at Bournemouth University (BU) brings together final year undergraduate IP law and engineering students – who learn from each other. The final year project for engineering students involves bringing an innovation to life and in collaboration with the final year IP students, inventions and intellectual property are brought to life.

At an operational level, the students are paired into groups at the beginning of the IP unit, which normally includes 2 law students to 2-3 design and engineering students. The project begins with both groups of students meeting each other at a seminar addressed by an IP practitioner and an Engineering practitioner. At a practical level, final year IP law students advise their ‘clients’ – the engineering students – through (a) an advice letter and (b) an oral presentation which forms the IP students’ final year assignment. The ‘clients’ are invited to the oral presentation and encouraged to ask questions from their ‘lawyers’ about the advice being given.

Over the years, it has been a rewarding experience to witness some remarkable innovations such as a cake icing pen, a computer game controlled by brain power, a glamping pod amongst others and watch intellectual property law coming to life, through its direct application in the form of written and oral advice.

The opportunity to apply IP law to real-life scenarios and to real-life innovations makes this project truly unique. It assists design and engineering students to grasp the importance of IP law, whilst encouraging the law students to present their advice without bringing in legal jargon. It presents challenges for both parties, but students certainly learn from each other and understand the importance of IP at a very practical level.

The project has culminated in prizes for the best IP student and best IP-design and engineering group awarded by a retired patent attorney. In fact, IPKat’s very own Dr Hayleigh Bosher, was the recipient of the Best IP Law student prize in 2012 – when studying the IP unit at Bournemouth University!

It Does Not Happen Overnight …

The collaboration project has been started many years ago – under the leadership of Professor Ruth Soetendorp. It has gone through many iterations, over the years, as a result of learning through the various challenges it has presented. Being a cross-faculty initiative, it presents its own challenges. Moreover, group work which involves law and engineering students in their final years is demanding inasmuch as it requires dedicated time, more so than any other unit and that is another factor.

A Rewarding Experience for All

However, meeting various challenges and overcoming them has led to the collaborative project being ‘fine-tuned’, it’s been a privilege to have led the IP Unit and the IP-design and engineering collaboration project since January 2011 at BU. It has also been adopted at other universities including Aston. It is undoubtedly an incredibly rewarding experience and throughout the years, students have benefited greatly from the collaborative project as well as speaking about it at their job interviews.

Philips v. ASUS/Wiko FRAND litigation in the Hague: new decisions

As readers may know, Philips is currently engaged in pan-European litigation against ASUS and Wiko for infringement of its FRAND-patents relating to Universal Mobile Telecommunications System (UMTS) technology. In the spring of 2019, the Court of Appeal of the Hague issued an injunction against both parties on the basis of one patent [see Katpost here for the decision against ASUS; an English translation of the decision against Wiko is forthcoming in GRUR-Int]. In October, the Oberlandesgericht Karlsruhe decided against Philips in a case concerning a parallel patent [Katpost here]. The Philips UMTS case highlights differences in the European approaches to FRAND and both in the Netherlands and in Germany, the cases are now pending before the supreme courts. It is therefore worth keeping an eye on.
Just before Christmas, the Court of Appeal in the Hague handed down decisions in cases that Philips had initiated on the basis of two others patents, also against Wiko and Asus.

European Patent (EP) 1 440 525

This patent was upheld and found infringed by the Court of Appeal [see here for decision against Asus and here for decision against Wiko]. It then further discussed both parties' FRAND defences.

In the case against ASUS, the Court of Appeal referred to its earlier decision and then addressed ASUS additional arguments. It reiterated that [under the CJEU's decision in C-170/13 Huawei/ZTE] after notification by the SEP-holder, a SEP-implementer must show willingness to take a licence before an obligation to make a FRAND-offer on the part of the SEP-holder arises. According to the Court of Appeal, this is consistent with the UK approach, as set out in the decisions in Unwired Planet [see [2017] EWHC 711 (Pat) and [2018] EWCA Civ 2344, Katpost here].

The Court of Appeal also reaffirmed that it will not always be necessary to submit claim charts as part of the notification to the implementer, but that it depends on all circumstances of the case whether sufficient notification is given. What is decisive is whether the SEP-implementer knows which rights are invoked against is, which products are alleged to infringe them and in what manner.

As for willingness, the Court of Appeal clarified that mere attendance of licensing negotiations is not sufficient: to be considered willing, a licensee must actively engage in them. It may also oblige licensees to inquire after the relevant licensing terms if it considers these unclear. In the absence of such willingness, it will not be inappropriate for SEP-holders to request an injunction, even if they did not make a FRAND-offer – since under the Huawei/ZTE framework, they are under no obligation to do so until a licensee has proved to be willing.

In the decision in proceedings against Wiko, the Court of Appeal did not explicitly differentiate between Wiko's FRAND-arguments in the present proceedings and those that led to the earlier decision. Its discussion of the FRAND-issues in the case was entirely along the lines of its July 2019 decision and the Court of Appeal did not add significant new points to its earlier reasoning.

European Patent (EP) 1 685 659

In the cases concerning this patent, the Court of Appeal rejected Philips' appeal and upheld the nullity of the patent as per the District Court's findings [see here for decision against Asus and here for decision against Wiko]. According to the Court of Appeal, this patent lacked inventive step.

The closest prior art was considered a proposal by Nortel Networks for a working group in October 2003, which comprised a solution to a problem in the High Speed Downlink Packet Access (HSDPA) protocol. Philips had argued that its patented invention differed from the Nortel proposal in three non-obvious ways. However, the Court of Appeal disregarded one of these differences because it did not contribute to the solution of the objective technical problem. As regards the other two, it held that the skilled person would not require any inventive effort to derive these technical measures when combining the Nortel proposal with one of Nortel's earlier proposals to improve the HSPDA protocol.