Samsung Electronics Co. Ltd v Apple Retail UK Ltd & Anor (on 726 and 675 patents)

Patent claims are construed by asking what the skilled person would understand the claim language to mean in the context of the specification. The description cannot impose a requirement that the claim language does not contain. Priority requires the claimed subject matter to be derivable directly and unambiguously from the priority document as a whole. A disclosure which merely makes a feature obvious does not disclose it for priority purposes. The 726 and 675 patents were not entitled to priority and were consequently invalid. The 726 claims were also obvious on their proper construction.

Samsung alleged that Apple’s UMTS-compliant devices infringed European patents UK Nos 1,005,726 and 1,357,675. Apple denied infringement and counterclaimed for revocation. Samsung abandoned infringement of the 675 patent shortly before trial, but validity remained in issue.

The judgment concerned construction, priority, infringement, obviousness and proposed amendments. The central questions were whether the claims covered the alleged technology, whether their subject matter was directly and unambiguously disclosed in the Korean priority applications, and whether the claims would otherwise have been obvious.

The court held that both patents were invalid because the relevant claims were not entitled to their claimed priority, and Samsung had accepted that intervening prior art then invalidated them. The 726 patent would also have been invalid for obviousness, although its claims would have been infringed by Apple’s UMTS-compliant devices if valid.

1. Construction. Claims are construed purposively through the eyes of the skilled person. The specification assists in understanding the claim language but cannot replace or expand it. The 726 claims did not require an encoder capable of changing superframe size during an ongoing transmission. “QoS parameter” was used broadly to include anything capable of affecting user satisfaction, including actual data rate and channel conditions, but not service type itself.
2. Priority. The court applied the substance-based test: read the priority document as a whole through the skilled person’s eyes, identify the claim subject matter, and ask whether it is directly and unambiguously derivable. The 726 priority document did not disclose the wider class of independent parameters claimed. The 675 priority document did not disclose filler bits; their use was only one of several obvious solutions to the non-integer case.
3. Obviousness. Applying the structured approach in Pozzoli v BDMO [2007] EWCA Civ 588, claims 1 and 14 of 726 were obvious over Bömer and Valenti on the correct construction. The proposed sequential-allocation amendment to 675 would not have been obvious if priority had been established.

The conclusions were recorded at paragraph [201].