Friday, 6 June 2014

Application for central amendment of a patent after revocation at first instance does not of itself render an appeal an abuse of process

Author: Matthew Jones (EIP)

Samsung Electronics Co LTD v Apple Retail UK LTD & Another [2014] EWCA Civ 250, Court of Appeal, England and Wales, 11 March 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu074, first published online: June 4, 2014

The Court of Appeal for England and Wales has ruled that an application for limitation (which is an application for central amendment) of a patent under the European Patent Convention 2000 (‘EPC 2000’), after a first-instance judgment revoking the patent but before the appeal in the matter has been heard, does not of itself render the appeal an abuse of process and can comprise reasonable grounds for a stay of the appeal process.

Legal context

Articles 105a, 105b and 105c of the European Patent Convention 2000 (‘EPC 2000’) provide for central amendment of European patents. Article 105a reads:
At the request of the proprietor, the European patent may be revoked or be limited by an amendment of the claims. The request shall be filed with the European Patent Office in accordance with the Implementing Regulations. It shall not be deemed to have been filed until the limitation or revocation fee has been paid.

The request may not be filed while opposition proceedings in respect of the European patent are pending.
Article 105b reads:
The European Patent Office shall examine whether the requirements laid down in the Implementing Regulations for limiting or revoking the European patent have been met.

If the European Patent Office considers that the request for limitation or revocation of the European patent meets these requirements, it shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. 
 The decision to limit or revoke the European patent shall apply to the European patent in all the Contracting States in respect of which it has been granted. It shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.
Section 77(4) of the Patents Act 1977 (as amended) reads, insofar as is relevant:
Where a European patent (UK) is amended in accordance with the European Patent Convention, the amendment shall have effect for the purposes of Parts I and III of this Act as if the specification of the patent had been amended under this Act.
Facts and analysis

As part of the global battle between Apple and Samsung, Samsung claimed that Apple had infringed several of its patents in the UK. In the first-instance judgment in March 2013, Floyd J found that the relevant patents were invalid. In November 2013 Samsung applied to amend the patents centrally at the European Patent Office (EPO). The amendments requested by Samsung did not correspond to any pre-existing claim, or to any of the amendments requested at first-instance trial in the UK.

Samsung argued that the central amendment application would be determined in a relatively short time, and that the UK appeal on the substantive issues should be stayed until the application for central amendment had run its course and the final form of the claims was known. Apple argued that, if the central amendment application were allowed, it would necessitate remission of the case for retrial, which would amount to an abuse of process. Apple cited UK case law, specifically Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, which held that post-trial applications to amend a patent in the UK should be refused. Accordingly, Apple sought an order that the UK appeal should be struck out unless Samsung withdrew its central amendment application.

The Court of Appeal found in favour of Samsung, ruling that the appeal on the substantive issues should not be struck out and, rather, that the appeal should be stayed pending the outcome of the central amendment application.

The appellate judges pointed out that the Patents Act 1977 specifically contemplates parallel proceedings in the UK and the EPO. In connection with this, they cited the UK Supreme Court decision in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46. In that case, a European patent was found valid and infringed in the UK but the relevant claims were subsequently held invalid in opposition proceedings at the EPO, and the Supreme Court held that an infringer in the UK should be entitled to rely on retrospective revocation or amendment in the EPO.

The appellate judges also referred to the decision of the Supreme Court of the Netherlands (First Chamber) in Case No C07.085HR, Boston Scientific Scimed Inc v Medinol Ltd (6 March 2009), in which the Dutch Supreme Court decided to remit a case to the lower court in circumstances analogous to those in the present case between Apple and Samsung. The Court of Appeal emphasized that they were not bound by the Dutch decision, but did say that the decisions of the Dutch court must be accorded considerable respect.

The Court of Appeal accepted that the amendment application was likely to be heard in a relatively short time and that, absent a stay of the appeal proceedings, there was a real possibility that the appeal would be heard on a false basis, ie on the basis of claims that might be deemed never to have existed. The court therefore decided to grant the stay of the appeal proceedings pending determination of the central amendment application.

The court also refused to strike out the appeal. While it accepted that an application to the UK courts to amend the patent post-trial would likely have been struck out under the principles established in Nikken, it reiterated that it did not consider a central application to amend to be an abuse of process for reasons already discussed: the amendments sought by Samsung would have effect in every designated state. Further, whether reliance on a centrally amended patent before the court in England and Wales constituted an abuse of process depended upon whether or not it necessitated a retrial, which in the present application was not clear (at least, not yet).

Finally, the court pointed out that, while it could not say at this stage whether the central amendment proceedings rendered the appeal proceedings in the UK an abuse of process, Apple will have the right to make such submissions once the outcome of the central amendment application is known.

Practical significance

This judgment makes clear that the Court of Appeal will not regard an application for central amendment after first-instance judgment as an abuse of process in itself, or as necessarily rendering the appeal an abuse of process. However, it remains uncertain whether Samsung's actions will turn out to have been abusive in view of the claims that come out of the central amendment process and, in particular, in view of whether those claims will necessitate remission of the case for retrial. In theory, it could be that Samsung finds itself in an impossible situation where either (a) the application for central amendment will not result in claims which necessitate a retrial, in which case those claims be of little assistance over and above those which were held invalid at first instance in the UK, or (b) the application will result in claims which do necessitate a retrial, in which case the appeal itself may well be held abusive. Also, this case emphasizes the respect that British judges have for decisions of their Dutch brethren, which in turn emphasizes (if it needed emphasis) the value of obtaining positive decisions in one jurisdiction with respect to parallel litigation in another.

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