Thursday 29 November 2012

Standards, Essential Patents and Antitrust

"Standards, Essential Patents and Antitrust" is the Editorial in the current issue of the Journal of European Competition Law & Practice (JECLP), Authored by Jorge Padilla (Senior MD and Head, Compass Lexecom), it visits a subject that has frequently been addressed in this weblog: the unhappy relationship between patent incentives and competition rules when it comes to FRAND ("fair, reasonably and non-discriminatory") licence terms. IP Finance thanks Oxford University Press, publishers of JECLP, for permission to reproduce it here:
"Standard essential patents (SEPs)—patents that read on a standard and are declared essential to practising that standard by their owners—have attracted the attention of competition authorities all over the world. The alleged abuse of the market power conferred by SEPs was the core issue investigated by the US and EU competition authorities in relation to Rambus's conduct; it was the chief concern behind DG Comp's investigation of Qualcomm's licensing practices; it was considered by the US and EU competition authorities when reviewing the merger between Google and Motorola and the recent patent aggregation mergers involving, among others, Nortel's patent portfolio; and, of course, it is centrestage of the ongoing reviews of Samsung's and Motorola's licensing practices.

What explains the recent popularity of SEPs with the competition agencies? First, standardisation plays a key role in several industries; most prominently in the telecoms, software, and hardware industries. Second, the number of patents in some standardised industries has grown very significantly. Third, many of those patents have been declared essential to practising standards. Fourth, some competition authorities have concluded that (a) standardisation restricts competition and thus creates market power and (b) SEP ownership automatically confers dominance. And, lastly, standardised industries are populated by asymmetric companies: some of them have SEPs while others don't; some of them are pure innovators while others are pure implementers and yet others are vertically integrated. Asymmetry engenders dispute and dispute attracts regulatory attention when regulators are persuaded, as some appear to be, that commercial courts are likely to be unable to deal effectively with the complexities of SEP pricing and non-pricing disputes.

In short, there are many SEP cases because there are many SEPs, SEPs are regarded as sources of market power, licensing SEPs give rise to bitter commercial disputes with potential exploitative and exclusionary implications, and some companies and competition authorities regard antitrust intervention as the most effective and efficient route to solving those disputes. It is considered most effective because the deterrent effect of antitrust precedents is thought to be considerably higher than that of court decisions, and it is considered most efficient because competition authorities have considerable investigative resources that need not be available to courts. More importantly, competition authorities may be keen to intervene in SEP matters because they are sceptical about the ability of private enforcement to produce desirable outcomes from a public interest or consumer welfare viewpoint.

These cases are highly complex because they involve a difficult trade-off. On the one hand, patent protection may lead to excessive prices and may also be used to exclude competitors anticompetitively. On the other hand, the raison-d'ĂȘtre of patents is to promote innovation. So these cases are difficult because they can cause both type I and type II errors. They are also complex because they involve difficult questions that have been hitherto insufficiently researched by lawyers and economists. For example, what is a FRAND royalty rate? There is no consensus. Are preliminary injunctions in patent disputes involving SEPs anticompetitive and/or inconsistent with FRAND commitments? There is no consensus on this question either.

To be fair, there is not even a consensus on the degree of complexity of these matters. Some commentators are convinced that intervention against SEPs entails no welfare downside. They believe that FRAND royalties should always be kept low or very low. They believe that the bargaining power of SEP owners should always be limited and, therefore, no preliminary injunctions should ever be awarded in SEP disputes. Those who argue in this way justify their claims on the widely held view that patent systems, and in particular, the US patent system, produce too many weak patents (ie, patents which should never have been granted in the first place) and that, as a result, they chill rather than foster innovation. These commentators seem to believe that the sins committed by the Western patent system can only be atoned for with the help of the competition authorities.

I have some concerns with this view, which in my opinion is extreme. Most importantly, not all patents are identical. Some, possibly too many, patents may be weak but there are other patents that are deservedly awarded. Such strong patents do protect and promote innovation. FRAND royalties for those patents should not be constrained by competition rules designed for a world of weak patents. Likewise, there is in my opinion no justification for adopting a per se rule against preliminary injunctions for SEP owners, because that rule would inefficiently shift bargaining power away from holders of strong SEPs. It is not true that intervention in SEP cases entails no risk of false positives. Both those who question the right of competition authorities to intervene when intellectual property rights are involved, and those who maintain that patents necessarily do more evil than good, are outside what I consider the reasonable spectrum of opinion. Competition agencies reviewing licensing practices in standardised industries should steer their way so as to avoid those extremes. They have a daunting job ahead: ensuring that antitrust and IP law complement each other to the ultimate benefit of consumers".
This blogger is pleased to see this call for moderation and common sense in dealing with standard-setting patents coming from an economist on the "other side", as it were, rather than from the serried ranks of do-or-die pro-IP apologists.

Wednesday 28 November 2012

Iliffe - the tax stuff

To follow up on Jeremy's post, the tax stuff on the Iliffe case has some useful points buried in it (but don't forget it's all obiter as the decision was actually that the assignments were void as they were assignments of unregistered trademarks in gross so the whole thing fell apart from the start):

Capital or revenue?
The decision confirms that the treatment of receipts from IP assets is not significantly different to that of receipts from other assets; where there is a significant reduction in value of an asset as a result of a transaction, that transaction is likely to be viewed as a capital transaction and any receipt will be a capital receipt.  In this case, the grant of a 5 year licence over the IP asset was held to constitute a significant reduction in value of that IP asset.

The capital/revenue distinction is less important for companies without capital losses as the tax rate is the same – it matters more to individuals, who pay different rates of tax on capital and revenue receipts.

One useful point that arises from the judgement is the confirmation that, simply because a payment arrangement is not typical for that type of transaction, it does not necessarily affect the tax treatment – HMRC had argued that trademark licensing arrangements are usually based on periodic payments, not a lump sum, and that the lump sum here simply relieved the subsidiaries of having to pay periodic payments. As such, they argued that the lump sum should be regarded as revenue. The judgment noted that this was not how the transaction was structured – the lump sum was not based on royalties, or any use of the IP assets, and the fact that this was atypical was not "of much significance".

Creating IP - licences and other implications
The tax rules for company IP assets depend on whether the asset was created or acquired before or on/after 1 April 2002 – the rules for post-1 April 2002 assets are more generous and so there are rules to stop related parties getting benefits by transferring IP assets between themselves. Basically, you can't turn a pre-1 April 2002 asset into a post-1 April 2002 asset by transferring it from one related party to another.

Unfortunately, the related parties rules don't really take licences into accounts – in this case, the parties tried to create post-1 April 2002 assets by creating licences from the trademarks. Licences are qualifying IP assets within the tax rules.

The judgement accepts that the licences of the trademarks were created after 1 April 2002 but finds that, in this case, there was no expenditure on the creation of the licences after 1 April 2002. The only expenditure in respect of the licences was on their acquisition. If there's no expenditure on creation of an IP asset after 1-April 2002 then it's not a post-1 April 2002 asset, under the tax rules. Even if it's actually created after that date.

As a result, the judgement finds that the licences can't fall within the corporate intangible tax rules because they are acquired from a related party – for the acquirer to get beneficial tax treatment, the IP asset must have been a post-1 April 2002 asset for the related party.

There was no discussion as to creation expenditure in respect of the licences and particularly the legal fees and the management time that are usually involved in the creation of the licenses. It seems unlikely that the licences sprang fully formed from the licensees and the licensor's only involvement was signature – particularly as it's clear from the background facts in the judgement that the licensor's directors were involved in discussions on the matter.

If time and legal fees incurred in creating licences don't count as post-1 April 2002 creation expenditure then there could be an argument that time spent by an author in creating a copyright work equally doesn't count as expenditure on creating an IP asset as copyright can be created without more identifiable expenditure. It's unlikely that HMRC would take the point, but it's arguably a logical conclusion from the judgement.

The decision was fairly clearly signalled by the point (in para 250-251) that there must be some limitation on licences counting as IP assets, otherwise all that would be needed to get around the related party rules would be to licence a pre-1 April 2002 asset, rather than transfer it. It's a pity that the judgement has to be a bit contorted in trying to get to this point – it's a point that should be properly dealt with in legislation.

It should be noted that the decision doesn't affect licences acquired from third parties – all that's required in such cases is that expenditure on acquiring the licence is incurred on/after 1 April 2002: the pre/post-1 April 2002 status of the licence with respect to the licensor doesn't matter.

IP mini-GAAR
There's a section in the IP tax rules for companies that effectively denies beneficial treatment if one of the main purposes of a transaction is to get a tax benefit (a mini-general anti abuse rule). The judgement findings here aren't specifically related to IP tax – they have wider implications for other mini-GAARs and the main GAAR that's anticipated in 2013. In particular, the judgement found that:
  • it could take the tax adviser's intentions into account in deciding whether a tax advantage was a main purpose, as the taxpayer company directors didn't fully understand the structure
  • it could compare the transaction to a hypothetical transaction that achieved the commercial objectives more effectively
Both these points are a bit of a departure from previous interpretation of mini-GAARs and have implications well outside the realms of IP tax law.

It's unlikely that there will be an appeal given that the defeat was on a basic point of IP law, so the IP tax points will stand as obiter dicta for the time being – the main points to note are:
  • get the IP law right!
  • make sure the taxpayer understands the structure
  • trying to get around the rules will probably not be favourably looked upon by the Tribunal

Tuesday 27 November 2012

Tax schemes and assignment of unregistered trade marks in gross

Iliffe News and Media Ltd & Ors v Revenue & Customs [2012] UKFTT 696 (TC), a United Kingdom First-Tier Tax Tribunal decision, bears all the hallmarks of the sort of ruling that you make a mental note to read one day, then spot that it's 335 paragraphs long and determine to leave the reading of it to a happy day when you are paid to read it for the sake of a client. This blogger hasn't read it in full -- and he's not sure that he'd want to even if he were paid to do it -- but he felt that readers of the IP Finance weblog should at least be aware of it.

Essentially, this First-tier Tribunal ruling concluded that purported assignments of local newspaper titles or "mastheads" as unregistered trade marks by subsidiary companies to a newspaper publishing group holding company were in gross -- which means that they were assigned without the businesses to which they were attached -- and were also void for mistake as to the assignability of the subject matter of the purported assignment. The titles had been assigned to the holding company and then licensed in exchange for consideration that came to more than £50 million. The Tribunal ventured back into the history of the common law rule against assignments of unregistered trade mark in gross. While the basic rule was that you couldn't do it, the Trade Marks Act 1938 section 22 allowed such an assignment -- so long as the assigned unregistered mark was used in the same business as a registered trade mark which had been assigned (i) at the same time and (ii) to the same person, (iii) in respect of goods used in that business for which the registered trade mark was assigned. The Trade Marks 1994, which repealed the 1938 Act, liberalised the assignment of registered trade marks, but provided that nothing in that Act should be construed as affecting the assignment of an unregistered trade mark as part of the goodwill of a business. In this case, the unregistered trade marks were not intended

Much of the decision is taken up with a discussion of what would have been the effect of the assignment, in tax terms, had it been valid.  But there's more there than this blogger can handle ...

Thursday 22 November 2012

Jackie Maguire (in 2D) on 3D

IP Finance's friend Jackie Maguire (CEO, Coller IP) has been interviewed by the BBC on the increasingly interesting field of 3D printing.  If 3D printing lives up to only a tenth of its hype and quarter of its technical potential, it can easily be the biggest proposition to affect the IP-finance interface since the internet and web-enabled portable devices, as it (i) absorbs increasingly large proportions of available R&D and marketing funding, (ii) forces manufacturers, suppliers and retailers of 3D print-friendly products to evaluate, amend or abandon existing business models and (iii) raises familiar issues regarding the search for industry-wide standards and the technologies of compatibility, in which the demand for return on private investment, the need for competition and accessibility of markets to new entrants, come increasingly into conflict with one another.

You can enjoy the interview here.

Big Bang in merchandising Bonanza

Big bang theory logoAs a trained physicist one of this bloggers favourite TV programmes is the US sitcom "The Big Bang Theory". He's not very keen on dubbed German version and was pleased to find that the original language versions are now available on iTunes. Somehow Sheldon Cooper does not seem to come over well in German - even if the long words in that language would seem to be perfect for Sheldon to stupefy everyone else. Apparently the show has ratings of over 500,000 in the UK and is credited with the mini-boom in school students studying physics. Just shows that nerds can be role models. It seems strange, nonetheless, that the show is apparently expected to generate USD 50 million in merchandising revenue this year, according to this report in the US magazine Variety. Apparently you can now buy a model Sheldon Cooper as well as a Gazinga T-shirt (Gazinga being Sheldon's way of indicating a joke). It's probably not surprising given the nerdy nature of the show that it features a fact or fiction trivia game (obviously not licensed to the makers of Tr*v**l P*rs**t, given its name). And I'm really looking forward to a good game of Big Bang UNO with the kids. Big bang sheldon dollGiven this volume of merchandising for the show alone, it would be intriguing to find out just how much benefit the makers of the nerdy products plugged on the show enjoy. There's no reference on the German TV version to sponsored product placement and so it might really be that DC comics enjoy substantial extra publicity for their iconic superheroes. On an intriguing note - despite the merchandising campaign, the makers of the show don't seem to be thinking proactively about their trade mark rights. US Trademark 3754655 was only filed in 2009, despite the show having been on air much earlier, and it is only registered in class 41 for entertainment services. Outside of the US no rights seemed to have been filed.

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Monday 19 November 2012

Kodak, Patents and the Deal That You Can't Refuse?

Let's start from the end: No, I am not going to let this subject disappear quietly.

Several months ago I wrote about "Patent Valuation, T.S. Eliot and the Theatre of the Absurd" here, where I commented on the steadily decreasing valuation of the Kodak patent portfolio. The saga continues. Last week it was reported by Joe Mullin on here that Kodak has entered into a credit line of $793 million dollars with its bondholders, provided that the company can raise at least $500 million from the sale of its portfolio of patents. The arrangement still needs approval of the bankruptcy court, it is reported.

The names of potential purchasers remain a combination of smartphone companies--such as Apple, Google and Samsung-- on the one hand, and patent aggregators, such as Intellectual Ventures here and RPX Corp. here, on the other. The article goes on to make a number of points that are not entirely clear to me:
1. "Because such a wide range of entities is working together to buy these Kodak patents, it is unlikely that they would fall into the hands of patent trolls or be used for other types of patent attacks."--I don't quite follow this. What does it mean that these entities are "working together"? Are they allocating the patents between them? If not, what is the nature of this coordination? Moreover, depending upon on how you define a patent troll, both Intellectual Ventures and even RPX Corp can be seen as having troll-like characteristics.

2. "This deal would allow Kodak to get one big lump-sum payment rather than eke out its patent cash in court."--This seems to be a bit of false dichotomy. Did anyone really believe that Kodak's patent folio was going to earn the company aggregate recovery in the amount of many hundreds of millions of dollars? Is sale of the patent portfolio really a commercial alternative to continuing to slog it out in courts?

3. "But the endgame will remain the same: competing companies--and, indirectly, consumers--will still have to pay a hefty tax to buy out a dying, but patent-rich, business"--This is not clear to me at all. Who are the competing companies and why are they paying "a hefty tax" for the patents?

4. I do not understand the pricing dynamic that it taking place here. In particular,
what are the pressures that are being brought to bear on these potential purchasers so that they agree to pay an amount greater than if there was a free auction of the portfolio? What comes to mind is that the bondholders want to pressure the perspective purchasers to fork over at least a half-billion dollars or take the risk that the patents fall into the "wrong" hands. Maybe that is the "hefty tax" that is referred to in the article.
More generally, I would really love someone to dig into how it came to pass that the same patent portfolio was given a valuation of over two billion dollars last year. Who had in interest in championing this over-estimate? How was this supposed to translate into fees or other income for interested parties? Is there an IP equivalent here to the tawdry conduct of several major investment houses a half decade ago, who were flogging investments of the same bundles of assets that they were shorting (i.e., betting on their price decline)?

Stated otherwise, it seems to me that the time has come for at least certain elements of the patent valuation business to come clean on what happened. Greed, misjudgment, or something more sinister?

Friday 16 November 2012

Ceres Power - An expert's assessment

A recent announcement from Ceres Power plc, previously discussed here, noted that:

“… the Company has continued to explore various strategic options and these discussions are on-going. In the event, the Company is not able to progress any proposals to a successful conclusion, it will as previously announced commence an orderly wind down of the business.”

The company had previously announced the commissioning of an independent assessment of its fuel cell technology by a respected expert.  An executive summary of the assessment, published in September 2012, concluded that:

“Ceres Power SOFC technology is highly differentiated and has the potential for cost leadership in mass manufacturing of cells and stacks, with performance and durability meeting the requirements of volume applications such as residential CHP. The Company has intellectual property rights and trade secrets which provide considerable protection against emergence of competition.”

and that:

“Patents and know-how covering laser drilled foil substrate, cell configuration, stack design, manufacturing procedures and conditions provide significant protection against competition.”

Wednesday 14 November 2012

Entrepreneurship and Innovation: When IP Does Not Seem to Matter

I am a big believer in "narrative". What I mean by "narrative" is the overarching framework of discourse that characterizes discussion about a given topic. Against that backdrop, I have been arguing, both in writing and in talks, that the rise of social media has brought in its wake a material decline in IP as part of the narrative on entrepreneurship and innovation. I have recently had two acute reminders of just how far IP has dropped out of this narrative.

The first reminder was in connection with a university programme on entrepreneurship for which I serve as a consultant. The purpose of the programme is to create an environment for the rapid fostering of start-ups. The programme has attracted international attention due to the number of successful exits that it has spawned. The downside to this obsession with quick exits is that the overwhelming number of start-ups are in the gaming and social media space, with students perceiving lower barriers to entry and where there exists a greater possibility of attracting a willing buyer at an early stage.

In that connection, I have for a number of years given an overview lecture of IP from the commercial perspective. Typically, following the lecture and running throughout the one year of the formal programme, several of the start-up groups consult with me about various IP aspects of their proposed ventures. I had noticed, however, that the number of such student inquiries has been steadily decreasing. How far IP had fallen was made clear following my recent lecture to the current intake.

I came away from the lecture thinking that the session had successfully introduced IP into the students' entrepreneurship narrative. Oh my, how wrong I was! The feedback was quick in coming and it was a stunner. "We found the topic to be totally irrelevant" was the view of most of the budding entrepreneurs in the class. IP was simply of no interest, not specifically to the various start-up projects and not more generally as part of the preferred intellectual arsenal of the young entrepreneurs. What the students want to learn about are issues of privacy, database protection and methods of online collection and payment. Whether I am the person best equipped to lecture on these topics remains an open question.

The second reminder arose in connection with a lengthy survey article-- "A Sense of Place: Technology and Geography", which appeared in the Oct. 27th issue of The Economist here. The focus of the article was to counter that view (promoted by The Economist itself in the 1990s) that digital and telephonic developments would result in the "death of distance." Au contraire--"Geography matters as much as ever, despite the digital revolution", says Patrick Lane, the author of the survey.

The first example brought in the article is a ride-sharing service in operation in San Francisco (where else?) whereby individual drivers "rent out" seats in their car, giving the owner of the service a 20% cut. The service works through a smartphone app, which effectively brings together a willing passenger and willing driver. The service is still dealing with issues of regulation and licensing. Participating drivers are identified by a pink-colored moustache on the front of the car, which is the trade mark for the service.

Try as I might, I could find no other discussion of intellectual property in the article, not in connection with the seat-rental service and not more generally in connection with other goods and services described. In describing entrepreneurial endeavours in the area of how technology is exploiting geographic proximity, IP is once again absent from the narrative.

With all of the media attention being devoted to the patent disputes involving the likes of Apple, Samsung, Google and HTC, the two instances described above are a useful and instructive antidote. Heavyweight patent cases make great theatre, but they do not reflect what is going on beneath the surface. At the level, the narrative of innovation and entrepreneurship is more and more uncoupling itself from traditional categories of IP.

Tuesday 13 November 2012

Suppose no-one want to watch ...

The advertisement below arrived in my email inbox earlier today.  Reading it, I found myself pondering over the apparently unstoppable one-way flow of movies from the United States to Europe. We have heard much discussion in recent times about the incentives which copyright provides in order to safeguard the investment which is incurred in the production of relatively high-cost products.  If such an incentive exists, what are the factors that cause investment to be made so much more successfully in US-made movies than in European ones?  European copyright law is surely no weaker than its American counterpart in all relevant respects and there is now a supposedly single market for cultural products within the EU, which has a population of around twice the size of that of the US.

So what is the reason why Europe buys US films but gets so few of its own distributed across the Pond?

Theatrical export of European Films in 2010

A sample analysis of the distribution of European films in 10 non-European markets

46 Pages, print edition € 29, pdf edition € 35
Available now!
Dear Sir or Madam,

For the first time, the European Audiovisual Observatory has analysed the relative fortunes of European films released outside the EU. The report analyses the success of European films released in 10 major non-European markets as tracked by Rentrak Corporation, the international leading reference source on box office and admission.

Key points:
  • Only 103 European films had a theatrical commercial release outside of Europe in 2010.
  • The main non-European foreign markets represent about 18% of the world admissions for European films.
  • Outside of Europe, European films accounted in 2010 for around 3% of the total admissions, while their market share in Europe was 26%.
Theatrical Export of European Films in 2010’ is available as a hard copy and pdf-version.

Don’t hesitate to contact us if you need any further information! ...

Apple Clocks now run to time - and how to make USD 21 Million

Swiss Railway TrainIt's well known that swiss trains run to time - and it's good to see that Apple's iOS Operating System is using the image of the iconic Swiss railway clock on the screen. Unfortunately Apple seem to have forgotten to check the trade mark rights on the image in Switzerland which has now lead to around CHF 20 Million being paid in a one-off licence fee, according to Swiss Daily Tagesanzeiger. Given the popularity of Swiss railways (8,585 US billion kilometres travelled in the first half of 2012), this is not really going to reduce the fares in Switzerland. It's however a nice little present in the run-up to Christmas and a reminder to all Apple fans as to how well trains run in Switzerland. Presumably, however, the Mondaine watch company is not madly happy about the deal. They've been producing the "Offical Swiss Railway" watches under licence to Swiss railways for a number of years.Swiss Railway Watch Further information (in English) at the following link.

Monday 5 November 2012

Funding for patent litigation: a new solution?

How do you finance both the fixed costs and the contingent expenses incurred in the course of patent litigation?  This has long been recognised as a threshold question which, if not successfully answered at an early stage, will usually result in one of two outcomes: either the claimant will decide not to commence proceedings because the prospect of an unsuccessful outcome is unaffordable, or the defendant will not put in a defence since the cost of defeat (and not infrequently even the cost of victory) is not worth risking.  It is therefore with great interest that this blogger read the press release, reproduced below, relating to what is claimed to be the first "turnkey" funding solution for patent owners, at any rate.  The level of interest rose when he saw that his friend and colleague, Olswang LLP colleague Campbell Forsyth, has been playing an active part in its development.

The press release reads thus:
HLP Integration launches the ‘HLP3’ patent litigation funding solution  
The first integrated solution for monetizing patents offered in Europe 
 Leading US litigation support consulting and services company HLP Integration has come together with commercial litigation funder Caprica; ATE [that's "after the event"] risk assessors Thomas Miller; and Olswang LLP  to create the first ever turnkey solution for IP owners seeking to generate revenues from their patents.  
Suitable patents admitted to HLP3 will undergo a robust and thorough process of analysis, expert review and risk assessment involving exhaustive research carried out by HLP; evaluation by Olswang LLP; and a further risk evaluation by ATE risk assessors. Subscribing patent owners will have the benefit of an option, for qualifying patents, to obtain funding from Caprica to take a patent case to court.  
Funding commercial cases in the UK has grown significantly in recent years. Potential litigants seeking funding are normally required to undertake considerable preparatory work in order for their case to be reviewed by funders. This can be very time consuming and costly.  Patent cases are also technically complex and therefore require access to specialist expertise at every stage leading to evaluation by a funder.  
HLP3 is a process designed to allow a patent owner or licensee access to a detailed due diligence report provided by industry leaders at the least possible outlay and risk.  The fact that the HLP3 process is integrated ensures the time involved from commencement of the patent review to clarity as to whether a patent can be successfully litigated is as short as practicably possible ... 
The idea of an integrated multidisciplinary approach is attractive and recognises that far more is needed than pots of money, nerves of steel and a bit of actuarial nous.  The question which most interests this blogger is whether, in reverse mode, the same due diligence-driven approach can be applied to the funding of non-patent-owning litigants too, based on an assessment of the extent to which an allegedly infringing product or process is firmly based upon expired patents, information and technology in the public domain and that vague concept which is so often aired in court, "general knowledge".
Anyone wanting further information about HLP3 should email Peter Rouse at or give him a call on +44 7737 128174.