“It’s foreseeable that major connected cars cases will occur” – an interview with Colin Birss

UK patent judge Colin Birss expects connected cars be a new and important field in the ongoing SEP/FRAND debate. And, a well-known figure in the patents circuit, Birss’ impact in the UK’s approach to FRAND cases is significant. There is speculation that his decision in the 2017 Unwired Planet vs. Huawei case renders the UK courts friendlier to patent owners. But, while the global obligations of FRAND secures the judgment against Brexit, how might a departure from the EU impact the UK courts?

5 April 2019 by Amy Sandys

Colin Birss, High Court, FRAND Colin Birss is the latest IP recruit to the UK Court of Appeal, alongside Christopher Nugee

JUVE Patent: How do you think Brexit will impact the UK patent courts?
Colin Birss: The European Patent Convention is the governing law for Europe about patents, and the EPO is a creature of the EPC, not the EU. The UK is just as much part of the EPC as it ever was, and it’s the EPC which harmonises patent law in Europe.

The UK Patent Court has always been busy. It attracts international work, it always has. International businesses litigate here. I think it’s at least partly to do with the way the court system works – the procedure, the fact you can deal with validity and infringement together, and the court is quick so you’re not sacrificing quality with speed. These are all things completely unaffected by Brexit.

Do you think Brexit will affect FRAND cases?
The FRAND obligation is a worldwide obligation. Or to be very accurate, what I’m really thinking of is the ETSI FRAND obligation. I know there are other FRAND obligations apart from ETSI, but that’s a worldwide obligation, and again it’s not obvious why Brexit should have anything to do with that.

Judge Colin Birss, IPEC, UK High Court

Colin Birss

How might it affect UK involvement in the CJEU?
As far as the CJEU is concerned, well that really is a legal question. How Brexit will affect UK involvement in the European Court of Justice depends on what kind of Brexit happens, and frankly you just have to watch the news.

Once the UK is outside the EU, will the patent courts be bound by the 2015 Huawei v. ZTE judgment?
The current EU law is part of current law in the UK and it continues anyway. So what that means is that because Huawei v. ZTE is part of the current law, it will continue to be relevant.

If the current so-called ‘deal’ – the one that has not been approved by the British parliament – is approved, it sets up a transitional period. In that transitional period, according to the terms, the UK is still subject to European law and therefore to the later rulings of the CJEU. But post-being part of the EU altogether, well part of not being in the EU is that you may no longer necessarily be required by law to follow later decisions of the CJEU.  Does that mean the courts will diverge afterwards? I do not know.

There was speculation that Unwired Planet v. Huawei would make the UK patent courts appear more SEP-holder friendly. Is there a rise in the number of overseas clients filing cases in the UK?
I don’t know whether it’s more SEP-friendly or not, but I’m not aware of a rise. It’s important to emphasise the UK Patent Court has a lot of overseas work already, so it’s very early to say if there has been a change.

Aside from FRAND cases, and mobile communications, are you hearing about lots of pharma or biosimilar cases?
Yes, pharmaceuticals is the other big area of technology. Certainly, in the past 15 years, the two big areas of technology in the patents court have been bio-medicine in the broadest sense – pharmaceuticals, biotech and you could include medical devices in that too – and then telecommunications.  There always will be other things too.  The oil industry is one example: oil-finding, pipe-laying and things like that.

Do you see any emerging industries coming more into the patent courts?
The history of patent litigation is the history of science and technology – just go back to 1890 and start reading the Reports of Patent Cases.  You will find the whole history of science and technology right from the get-go.

“The history of patent litigation is the history of science and technology”

As an example, recently there have been a couple of wind turbine patent cases.  One was about high wind ride-through.  It was a protection mechanism against very strong gusts of wind to protect turbines from being damaged.

And the other big areas of technology that everybody is talking about are AI and blockchain.  Whether there’ll be any patent disputes about them, who knows.  Both are very software-based but in Europe you can get software patents provided they have a technical effect or make a technical contribution.

What about connected cars?
The fact that mobile telecoms devices are now being put into cars is obviously a dimension to the SEP/FRAND debate. I’m not aware of an actual case that’s come here which is the equivalent of Unwired Planet v. Mercedes or something, but it’s foreseeable that cases of this kind might occur.

When mobile devices are being put into other things like cars, that then raises the question of the ‘smallest saleable unit’ to do with setting the royalty rate. It’s actually a very old question in intellectual property law, it’s not a new debate.  For the Victorians the question was this: if you have a tin whistle on a battleship, and you’re patenting the tin whistle, are you entitled to a royalty on tin whistles or are you getting a royalty on battleships? The answer is that real cases are never that simple.

This interview was conducted by Amy Sandys and Mathieu Klos.