1 User Commentary
28 September 2015
Case Commentary: Samsung Electronics Co Ltd v Apple Retail UK Ltd and Apple Sales International  EWCA Civ 250
Whether the use by Samsung of the central amendment application, created under the European Patent Convention 2000, amounted to an abuse of process
Heard before Lord Justice Moore-Bick, Lord Justice Rimer and Lord Justice Kitchen.
Judgment was handed down in the case of Samsung Electronics Co Ltd v Apple Retail UK Ltd and Apple Sales International  EWCA Civ 250 on 11th March 2014. The appeal was brought by Samsung Electronics Co Ltd ("Samsung") against a decision of Floyd J (as he then was) which found the patents to be invalid, both as granted and proposed to be amended. He ordered they be revoked, suspended pending appeal to this court.
The present case arises owing to allegations by Samsung that Apple Retail UK Ltd and Apple Sales International ("Apple") infringed three patents in the design of devices including the iPhone 4, iPhone 4S and the iPad 2 3G, only two of which are in issue here. They are EP (UK) Patent No. 1,005,726 (the "726" Patent) and No. 1,714,404 (the "404" Patent). It is part of an on-going dispute between the two companies, with litigation taking place in countries worldwide. The patents at issue here have been challenged in the German Federal Patent Court, France and Italy.
At the hearing Samsung sought an adjournment of the appeal pending the determination of applications made to the European Patents Office ("EPO") for amendment of the claims of the patents. This procedure was created under the European Patent Convention 2000, allowing a patentee to have the claims of his granted patent limited or have the whole patent revoked for all designated states under Articles 105a and 105b respectively. This is subject to rule 93 of the Impementing Regulations which prohibit the filing of a request for limitation or revocation "if opposition proceedings in respect of the patent are pending at the time of filing the request". At the domestic level the patents Act 1977 (as amended) gives effect to these provisions.
Samsung was not in the position to file these earlier owing to the on-going parallel proceedings. In response Apple applied to the court for an order to set aside the permission to appeal, unless Samsung undertook to take no further steps with its applications to the EPO. Mr Guy Burkill QC, for Apple, submitted that the amendments now sought did not correspond to any of the amendments sought at trial before Floyd J. He continued that these were not addressed in evidence or the judgments. If the central amendments were allowed, there would accordingly be no basis upon which the court could find these amended claims valid.
At the close of the hearing on 12th February judgment was reserved. Two days later the court allowed Samsung's application and dismissed Apple's application, without prejudice to the latter's right at the hearing of the appeal to make further submissions. The reasoning of the court is summarised below.
Lord Justice Kitchin considered that the filing and pursuit by Samsung of its central amendment application was not an abuse of process or an activity with which the court could interfere; see Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd  UKLSC 46. Apple would have faced "an insuperable difficulty" had it invited this court to direct Samsung to withdraw its applications for the central amendments. There was sense in the decision of the Lord Justices to accede to Samsung's request for adjournment awaiting the determination of the applications by the EPO. In so doing, there was no risk of proceeding with proceedings on a false basis.
As to Apple's request to strike out the appeal, the Justices saw merit in Mr Burkill's submission that the fact proceedings are pending before the EPO does not bar a national court from considering the claims of a patent; see Beloit Technologies Inc v Valmet Paper Machinery Inc  RPC 489 per Aldous LJ at pages 503-504.
First, and on the basis of his other submissions, which briefly put argued that Samsung was trying to avoid the inevitable rejection of any post-trial application to amend and that ordinarily such applications should be refused for sound policy reasons, the Justices found that he was right as to the likely fate of any application Samsung made after trial to amend the patents. These would have been refused in the exercise of the court's discretion.
Second, it was not an abuse of process for Samsung to make and pursue its central amendments applications.
Third, any decision of the EPO carries direct effect in every designated state and the patents will have been deemed to be always in their amended form.
Fourth, it does not necessarily amount to an abuse of process for a patentee to rely on claims which would have been limited by the EPO by an application.
Fifth, this point must take into account all of the circumstances.
Appeal adjourned until the outcome of the central amendment applications are known. Apple's application was dismissed because at this stage Samsung's pursuit of its central limitations applications do not necessarily mean that the proceeedings are an abuse of process.
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