Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors

The court’s power to transfer proceedings to the Competition Appeal Tribunal is confined to proceedings relating to an infringement issue. It does not extend to a distinct contractual cause of action merely because that cause is closely connected with competition-law issues. Relevant discretionary factors include delay, cost, specialist expertise, the parties’ wishes and the practical consequences of dividing interrelated issues. Where FRAND issues arise under both competition law and contract, splitting them may create confusion and undermine coherent decision-making.

The claimant brought patent-infringement proceedings concerning telecommunications standard-essential patents against Huawei and Samsung. The patent defendants counterclaimed against the claimant and Ericsson under arts 101 and 102 TFEU, including allegations concerning FRAND licensing and the transfer of patents under a master sale agreement.

Samsung applied to transfer the competition-law aspects of the forthcoming non-technical trial to the Competition Appeal Tribunal, together with related FRAND issues. Ericsson opposed the application and Huawei adopted a neutral position. The central issues were the scope of the statutory transfer power and whether transfer would create practical difficulties because contractual and competition-law FRAND issues were closely interrelated.

1. Application refused. The competition-law issues and related FRAND questions were not transferred to the Competition Appeal Tribunal.
2. Section 16(1)(a) of the Enterprise Act 2002, together with paragraph 2(a) of the Section 16 Enterprise Act 2002 Regulations 2015, permits transfer of so much of proceedings as relates to an infringement issue. The provisions do not permit transfer of a distinct cause of action which is not itself an infringement issue.
3. The transfer power is discretionary. The court must consider all the circumstances, including the parties’ wishes, and apply the overriding objective. Relevant considerations include delay, expense, proportionality, case complexity, specialist expertise and support, judicial continuity and the effects of dividing issues between tribunals.
4. Contractual FRAND obligations were legally distinct from the competition-law claims. Their close factual, legal and policy relationship did not make them ancillary to, or part of, an infringement issue. The CAT’s specialist expertise could not enlarge its statutory jurisdiction.
5. Transferring competition-law FRAND issues while retaining contractual FRAND issues in the Patents Court would divide the handling and decision-making process. Because FRAND was central to the trial and the legal basis of the claims was not yet clear, such a division would create a risk of confusion.
6. The benefits of specialist economic expertise and CAT support did not outweigh those difficulties. The application was therefore declined.