Showing posts from October, 2017

Jurisdiction Disputes - a Portent of Problems to come? Parainen Pearl Shipping Ltd v Kristian Gerhard Jebsen Skipsrederi AS

Jane Lambert

Patents Court (Mr Justice Arnold) Parainen Pearl Shipping Ltd and Others v Kristian Gerhard Jebsen Skipsrederi AS and Others [2017] EWHC 2570 (Pat) (18 Oct 2017) 

This was a dispute between a company that had been incorporated in the Marshall Islands and its Cypriot subsidiaries on the one hand and three companies that had been incorporated in Norway on the other over whether the Patents Court had jurisdiction to hear an action for a declaration of non-infringement relating to the bulk discharge system of a Bahamas registered cement carrier that was alleged to infringe the British, Finnish and Swedish designations of European patent number 2 032 426 "System and method for discharge of bulk material from a ship".Particulars of the ship together with photographs of her can be found on the Marine Traffic website.

The Dispute
The patent had been granted to the first defendant.  It was designated in 32 countries but validated after grant in only 12 of them including th…


Jane Lambert

Chancery Division (Mr Justice Snowden) Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and others[2017] EWHC 2600 (Ch)

In Denmark there was once a game show called "Minute Winner" which was devised by a Mr Derek Banner. Mr Banner claimed to have assigned his rights in the format for the game show to a company that he had set up called Banner Universal Motion Pictures Ltd. ("BUMP"). The rights that BUMP claims to have acquired were essentially copyright in a document entitled

"MINUTE WINNER Mini-format Game show Daily or weekly show. Or short one minute between main programs. Morning, Evening or Afternoon program. One minute, or 30 minutes with several winnings"
and the benefit of an obligation of confidence under Swedish and English trade secrecy laws. The obligation of confidence is said to have arisen when Mr Banner met Jock Millgardh and Matthias Olsson of the Swedish company Friday TV AB ("Friday") to discuss Mr Ba…

Copyright in Photographs - Pablo Star Media Ltd v Bowen

Jane Lambert

Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017)

The above photograph is of a pub in Tenby where Dylan Thomas left the manuscript of Under Milk Woodon a stool.  Under Milk Wood is a radio play about the residents of a fictional village called Llareggub. I am told by those proficient in the language that Llareggub means nothing at all in Welsh but the letters do mean something in English if the spelling is reversed.

"Llareggub" less the first 3 letters spelt backwoods with the addition of the particle "-ation"

I thought of Llareggub when I read Judge Hacon's judgment in the appeal from Deputy District Judge Vary's decision in Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017) where the learned Enterprise Judge dismissed a copyright owner's appeal against Deputy District Judge Vary's award of £250 damages plus £3 interest for infringing the copyright in the photo of Dylan Thomas and his bride less £164.10 c…

Construction of Terms in Cross-Licensing Agreements: Koninklijke Philips N.V. v Asustek Computer Incorporation and Others

Court of Appeal (Lady Justice Arden and Lord Justices Kitchin and Floyd)Koninklijke Philips N.V. v Asustek Computer Incorporation and Others [2017] EWCA Civ 1526 (11 Oct 2017)

Jane Lambert

In FRAND8 Oct 2017 I discussed the terms upon which patents for inventions that are essential to a standard are licensed.  I noted that courts around the world had held that those terms should be fair, reasonable and non-discriminatory - in other words, FRAND. The Court of Appeal's decision in
Koninklijke Philips N.V. v Asustek Computer Incorporation and Others [2017] EWCA Civ 1526 (11 Oct 2017) concerned the construction of a clause licensing such patents. It is important to note, however, that none of the judges who heard the appeal mentioned the acronym, FRAND, and it appeared only twice in the judgment of the trial judge.

The case turned on the construction of this clause:

"QUALCOMM Option to Obtain Covenant Not to Assert. Philips hereby grants QUALCOMM an option to designate any or all o…


FRAND stands for "fair, reasonable and non-discriminatory". It refers to the terms upon which the owner of a patent for an invention that is essential to a standard ("standard essential patent" or "SEP") should license its use.

In Unwired Planet International Ltd v Huawei Technologies Co. Ltd and another [2017] EWHC 711 (Pat) (5 April 2017), the first and so far only case on FRAND in the United Kingdom, Mr Justice Birss explained what is meant by FRAND at para [83] of his judgment:

"The point of FRAND in standard setting is fairly easy to understand. Standards exist so that different manufacturers can produce equipment which is interoperable with the result that the manufacturers compete with one another. So the phone makers compete in the market for phones and the public can select a phone from any supplier and be sure (for example) that if it is a 4G phone, it will work with any 4G network. As a society we want the best, most up to date technology…