The UK Court of Appeal has recently added its contribution to the ongoing dispute between Samsung and Apple. The decision of the Court of Appeal is interesting because it deals with a request to limit a European patent centrally (at the EPO), after its UK designation was revoked at first instance by the High Court in the UK.
Samsung originally brought proceedings before the High Court against Apple for infringement of three of its patents, only two of which related to this appeal. Floyd J found that these two European (UK) patents were invalid, and Samsung appealed against his decision.
However, prior to the hearing before the Court of Appeal, Samsung filed a request for limitation of the granted European patents at the EPO. Under the EPC, the limiting amendment would apply to the nationally validated rights in all designated states, and would further be deemed to have been effective from the date of grant of the patent by the EPO.
Samsung sought an adjournment of the appeal until the limitation procedure had been completed, such that the final form of the limited claims could be determined for consideration by the parties. They argued that they had to wait until after the High Court decision to file the request for limitation, in order to co-ordinate with the various other ongoing parallel proceedings in Europe. Apple argued that the adjournment should not be granted because, if the claims were limited, the case would have to be returned to the High Court for a retrial based on the new claims, which would be an abuse of procedure.
The Court of Appeal allowed Samsung’s request and adjourned the appeal. They considered that no abuse of process would arise, given that Samsung’s actions were permitted by the EPC and by the UK Patents Act 1977. By contrast, it is highly likely that a similar request to amend the European (UK) patents under the UK proceedings would have been refused. The Court of Appeal was also keen to avoid the situation in which, if they handed down a decision before a limitation was subsequently allowed, their decision would be based on claims which would subsequently be treated as never having been granted.