Samsung appeal against Apple establishes new jurisprudence following EPC 2000

This Kat is very grateful to Katfriend and colleague Gary Moss who not only alerted him to this interesting Court of Appeal decision (Kitchin LJ giving the judgment) from earlier this week but also allowed your humble servant to snaffle his report for editing and now posting. It is the bloggers' favourite ongoing dispute, Apple and Samsung, on the patent side in the UK and involving Samsung patents.

So what is happening this time?

Merpel is rather tired by all
this talk of mobile phones

Well, Samsung sues Apple under three patents.  First instance judge (Floyd J) finds patents invalid (see decisions here and here). Now Samsung could have theoretically could have applied to make post judgment amendments in the UK.  Problem is that there is existing UK jurisprudence stating that post judgment amendments will not be entertained if the effect is to require a new trial to determine the validity of the patent in the light of those amendments.  So what do Samsung do – they apply for central amendment (limitation) at the European Patent Office and then ask the Court of Appeal to adjourn the appeal because the claims may well be in a different form.

“Foul” cry Apple, “Abuse of process, not fair”. According to Apple, Samsung should have offered the amendments before judgment.  (In fact Samsung DID put forward amendments at the trial, but they were different from the amendments now being proposed at the EPO.  The Judge ruled that the amendments did not save the patent.)  So, say Samsung, Apple have two choices.  Either they abandon the central amendment and fight the case of the old claims and amendments.  Or they abandon the appeal.  And the Court of Appeal should impose that choice by striking out the appeal and finding for Apple unless Samsung abandon the central amendments.

Because, say Apple there is a potential abuse here.  For example the Judge found one of the patents invalid for lack of priority and because it was obvious over two pieces of prior art.  But there had been no consideration as to whether the claims as amended were inventive over this art and the evidence had not addressed that.  So potentially there would need to be a new trial.

The Court of Appeal rejects Apple’s whinges.  It says that EPC 2000 contemplates the possibility of central amendments at any time and this has been enshrined in UK law. Therefore what Samsung is doing not an abuse of process but the exercise of Samsung’s legitimate rights.  What is more this is not the same as the position on oppositions; whereas oppositions take years the central amendment process should be relatively quick since it is ex parte and the grounds of examination of limitation application are limited.  Therefore the correct solution is for the Court of Appeal to stay the appeal and see what the EPO do with the claims.  Support for this conclusion was found in the recent Supreme Court Zodiac decision (see IPKat here and here.)

For the IPKat it is not clear what will happen if Samsung obtains through the EPO claims including integers not considered by the UK Court at first instance and which might require further evidence regarding validity.  Is there perhaps to be another trial?

Who said patent litigation in the UK was dull?

Readers interested in this decision may wish also to consult the PatLit blog where there is another note of the case here.