Samsung Electronics Co LTD v Apple Retail UK LTD & Anor

Pending central amendment proceedings before the European Patent Office do not, by themselves, prevent an English appeal from being adjourned or justify compelling a patentee to abandon those proceedings. A central amendment may take effect retrospectively in all designated states, so an appeal may otherwise proceed on claims later deemed never to have existed. The English court retains control of its own process, but whether reliance on a patent amended centrally after trial amounts to an abuse of process depends on all the circumstances, including whether a retrial would be necessary and its consequences.

Samsung appealed from Floyd J’s decision in the Patents Court, reported as [2013] EWHC 468 (Pat), declaring two European patents invalid and ordering their revocation, subject to a stay pending appeal. While the appeal was pending, Samsung filed central amendment applications at the European Patent Office under the European Patent Convention 2000.

Samsung sought an adjournment until those applications were determined. Apple sought an order requiring Samsung to choose between pursuing the appeal and pursuing the applications, failing which the appeal would be struck out and the patents revoked. The central issues were whether Samsung’s applications were an abuse of process and whether the appeal should proceed before their outcome was known.

1. The applications were allowed and dismissed respectively. Samsung’s application to adjourn the appeal was allowed. Apple’s application to require an election, strike out the appeal and lift the stay was dismissed, with liberty to apply after the central amendment applications had been determined.
2. The central amendment procedure under the European Patent Convention 2000, implemented domestically by the Patents Act 1977, permits a patentee to seek limitation while English infringement or revocation proceedings, or an appeal, are pending. The procedure is limited in scope and, if its requirements are satisfied, the European Patent Office must limit the patent for all designated states.
3. A central amendment has retrospective effect. Under Articles 64 and 68 EPC, and section 77(4) of the 1977 Act, the amended patent is treated as having had effect in that form from grant. It therefore made practical sense to await the EPO’s decision, since the appeal might otherwise be heard on claims later deemed never to have existed.
4. The court accepted that a national court may revoke an invalid patent while opposition or central amendment proceedings are pending. It also accepted that post-trial amendment under section 75 of the 1977 Act would very likely have been refused under the principles stated in Nikken Kosakusho Works v Pioneer Trading Co and Nokia GmbH v IPCom & Co KG. That did not make the separate central amendment applications abusive.
5. The English courts nevertheless retain power to control their proceedings and prevent abuse. Reliance on claims amended centrally after trial may be abusive in some circumstances, particularly if it requires a retrial, but the court declined to define the circumstances in advance. The issue must depend on all the circumstances and may require a case-by-case assessment.
6. The appeal was adjourned because the applications were likely to be concluded relatively soon and refusal might have caused substantial wasted time and costs. The dismissal of Apple’s application was without prejudice to further submissions or applications after the EPO outcome.

• Court of Appeal (Civil Division) — The appeal was adjourned. Apple’s application to compel an election or strike out the appeal was dismissed.
• High Court of Justice, Chancery Division (Patents Court) — Floyd J declared the patents invalid, dismissed amendment applications and suspended revocation pending appeal, as reported at [2013] EWHC 468 (Pat).