Optis Cellular Technology LLC & Ors v Apple Retail UK & Ors

The decision whether to refer questions to the Court of Justice is discretionary. Even where the opportunity for a reference is about to expire, the court may refuse a reference if the issues are fact-sensitive, closely connected with matters to be tried nationally, or likely to cause substantial delay. The court may also consider whether national courts can resolve the issues by applying existing authority. A reference should not be made where its likely consequences would disrupt the efficient management and sequencing of the proceedings.

The claim concerned standard-essential patents, licensing on FRAND terms and alleged competition-law infringements. The defendants applied for questions concerning Article 102 TFEU, the judgment in Huawei v ZTE, the Enforcement Directive and the effect of an implementer’s refusal to commit to a court-determined FRAND licence to be referred to the Court of Justice.

The application was made during the transitional period before the United Kingdom’s ability to make references would end. The proposed questions principally concerned issues to be determined at a forthcoming trial about whether Apple was an unwilling licensee.

1. The application for a reference to the Court of Justice was dismissed. The court treated the decision whether to refer as discretionary, notwithstanding that the end of the transitional period meant that this was likely to be the final opportunity for a reference.

2. The central question was whether the proposed Article 102 issue should be separated from the factual and legal circumstances to be examined at the unwilling-licensee trial. The court was sceptical that it should. The issue was intertwined with the circumstances of the negotiations, the alleged competition-law conduct, and the construction of the relevant ETSI obligations under French law.

3. Timing was decisive. Even assuming an average Court of Justice reference period of 15½ months, the trial would proceed before the answers were available. A further hearing and judgment would then be required, with a real likelihood that the trial’s conclusion would be pushed well into 2022 and its intended sequencing before the FRAND trial lost.

4. The court also relied on Unwired Planet v Huawei [2020] UKSC 37, where the Supreme Court had been able to decide related Article 102 and Huawei v ZTE questions without a reference. Even assuming that the proposed question was not already answered by that decision, the national court could deal with the issues fully and properly without a reference.

5. Questions concerning the Enforcement Directive and the implementer’s commitment did not require separate consideration once the principal reference was refused.