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Patents Court rejects first contested application for transfer to the Competition Appeal Tribunal


On 29 April 2016, Birss J rejected an application by Samsung to transfer parts of a patent case to the CAT under the Section 16 Enterprise Act 2002 Regulations 2015 (the “Regulations”). This was the first contested application for a transfer to the CAT under the new rules and provided an opportunity for the Court to clarify the extent of the CAT’s new jurisdiction and the principles that should govern applications to transfer issues for determination by the CAT.

The application arose in the context of a patent infringement claim by Unwired Planet against Samsung and Huawei. Samsung and Huawei plead, by way of defence and counterclaim, that the agreement pursuant to which Unwired Planet acquired the patents in suit from Ericsson is void for breach of competition law, and also that Unwired Planet has breached its obligations to licence some of the patents in suit on fair, reasonable and non-discriminatory (“FRAND”) terms. The FRAND defences arise in three distinct but related contexts: (i) a contractual obligation owed by Unwired Planet because it made a declaration to the European Telecommunications Standards Institute that it would grant licences to some of the patents in suit on FRAND terms; (ii) obligations under Article 102 TFEU that arise because Unwired Planet is alleged to have a dominant position in licensing those patents; and (iii) the Court’s equitable jurisdiction to decide whether or not, as a matter of discretion, an injunction should be awarded for infringement of those patents.

Samsung sought to transfer all of those issues to the CAT. According to Samsung, the new transfer powers under the Regulations that enable the transfer of so much of proceedings as relates to an infringement issue (defined as a question relating to whether or not competition law has been infringed) should extend to parts of the proceedings that are factually related to infringement issues, albeit that they are distinct causes of action under different legal frameworks. Ericsson and Unwired Planet argued that Samsung’s interpretation was too wide, and the Judge agreed, ruling that the contractual and equitable FRAND issues could not be transferred. Birss J also considered that transferring the competition law FRAND issues without also transferring the ETSI and equitable FRAND issues would be a “recipe for confusion”. For that reason, Birss J rejected Samsung’s application.

The ruling is here.

Daniel Piccinin appeared for Ericsson, instructed by Freshfields.

Sarah Ford appeared for Unwired Planet, instructed by Enyo.