Powell Gilbert updates the American Bar Association on some of the most recent cases in Intellectual Property happening in the UK.
This article was first published in Volume 1, Issue 3 of the American Bar
UK PATENTS – Samsung Electronics Co Ltd v Apple Retail UK & Apple Sales International,  EWCA Civ 250.
The latest UK instalment in the global Apple and Samsung patent war saw the Court of Appeal (CA) addressing an interesting strategic manoeuvre by Samsung after the Patents Court made findings of invalidity against two of its patents. Samsung had brought proceedings in the UK against Apple in 2011 for alleged infringement by inter alia the iPhone 4 / 4S of the UK designations of three European patents. Of two patents on appeal, both had been found invalid but the revocation order was stayed pending appeal. Unusually, Samsung then filed to amend the claims of the patents at the European Patent Office (EPO) via the central limitation mechanism. This would have the effect of amending the claims across all EP designations, ab initio. Samsung sought a stay of the UK appeal pending the outcome of the EPO examination, arguing the CA could still hear the substantive UK appeal based on amended claims and on the record of the first instance Patents Court proceedings. Apple countered that this was an abuse of process, highlighting Samsung’s failure to bring the amendments earlier and asserting that Apple would be prejudiced if Samsung got its way. Apple could see that despite having won on validity once it might have to fight another first instance trial, or fight different claims at an appeal hearing with less than satisfactory evidence in the record. The CA found that the central limitation procedure (Article 105b of the EPC) and UK Patents Act anticipated there could be concurrent proceedings, so the filing was not in of itself an abuse and Samsung could proceed with a central limitation (in contrast, the same amendments to just the UK designation of the EP would almost certainly not have been permitted had Samsung tried to make them under local UK procedure). While the CA stayed the appeal proceedings pending the outcome at the EPO, it also indicated that it remains open to Apple to press its abuse of process allegation against Samsung, subject to the form of claims arising out of the EPO and Samsung’s next steps. So whether Samsung's move is any more than a Hail Mary pass remains to be seen - watch this space.