Samsung Electronics Co Ltd v (1) Apple Retail UK Ltd (2) Apple Sales International, Court of Appeal (Civil Division), 11 March 2014, [2014] EWCA Civ 250, Moore-Bick LJ, Rimer LJ and Kitchin LJ
The Court of Appeal granted Samsung’s application to adjourn the hearing of its appeal of the decision that two of its UK (EP) patents were invalid, pending the outcome of its applications to the EPO for central amendment of the patents’ claims. The UK infringement and validity proceedings form part of a global dispute between Samsung and Apple, and Samsung explained that the timing of its applications for amendment was due to the need to coordinate the various European actions. In response to Samsung’s application to adjourn, Apple had applied, in effect, for Samsung to be ordered to elect to either abandon the appeal, or proceed with the appeal and not pursue the amendments.
The Court of Appeal held that it could not properly interfere with Samsung’s filing and pursuit of those applications, and if the UK appeal proceeded before their outcome it may be doing so on a false basis with consequential wasted costs and time, whereas there was no suggestion that an adjournment would cause Apple any significant prejudice. The Court distinguished this case from its decision in IPCom v HTC [2013] EWCA Civ 1496. IPCom v HTC concerned the grant of a stay of UK infringement and validity proceedings pending the outcome of concurrent EPO opposition proceedings, not the outcome of amendment proceedings. Unlike opposition proceedings, central amendment proceedings (introduced by the EPC 2000) were intended to be simple and relatively quick, and their outcome in this case was likely before the UK proceedings (if not adjourned) would have been finally decided.
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Lord Justice Kitchin, giving the leading judgment, held that Samsung’s filing of the central amendment applications was not an abuse of process. He noted that the EPC does not prohibit the filing of a central amendment application while infringement or revocation actions are pending in any designated state, or between a first instance judgment and appeal, and the EPO’s decision on central amendment will be directly effective in every designated state. Also, the Patents Act 1977 specifically contemplates the possibility of concurrent UK and EPO proceedings, and provides that amendment of the UK designation of a European patent via the EPO has retrospective effect.
If the applications are allowed, the patents will be deemed always to have been in their amended form (Virgin v Zodiac, [2013] UKSC 46, in which Lord Neuberger stated the new claims would be a “new, centrally important, uncontroversial fact”). However, despite English courts having considered the effect of such a retrospective amendment, they had not had to deal with its effect if made after trial. Therefore, Kitchin LJ turned to the Dutch Supreme Court decision in Boston Scientific v Medinol [2009] that the patent must be considered in its amended form (and so it would remit the case back to the lower court). Kitchin LJ, referring to Lord Neuberger’s comments in Schutz v Werit [2013] UKSC 16 in relation to German Supreme Court’s decisions, said that the Dutch Supreme Court was another court “whose decisions must be accorded considerable respect.”
Apple had argued, inter alia, that Samsung’s request for a central amendment was an attempt to avoid the inevitable rejection of any application made in England under section 75 of the Patents Act to amend the patents in suit post-trial. Kitchin LJ agreed that such an application would very likely have been refused in the exercise of the court’s discretion (Nikken v Pioneer [2005] EWCA Civ 906, Nokia v IPCom [2011] EWCA Civ 6) but held that, nevertheless, the Court’s conclusion was that it was not an abuse of the process of the court for Samsung to make and pursue its central amendment applications.
Regarding whether a patentee’s attempted reliance in the Court on a patent amended pursuant to a central amendment application made after trial would constitute an abuse of process, the Court of Appeal held that would depend on the circumstances, including whether it would be necessary to remit the case for retrial and, if so, what the consequences of that would be. The Court noted that Samsung had recognised that in some circumstances such an attempt could be an abuse but had emphasised they did not arise in this case. The Court considered it was not appropriate for it to attempt to define such circumstances in this judgment.
Read the judgment (in English) here.
Head note: Rowena Stent
