Samsung V Apple Patent Appeal On Hold Pending Outcome Of EPO Applications

Author:Mr David Knight
Profession:Field Fisher Waterhouse

This month has seen the latest UK instalment in the global patent war between Samsung and Apple. The Court of Appeal granted Samsung's application to stay an appeal from the High Court's decision that two of Samsung's patents were invalid (see here for judgment). The Court of Appeal agreed with Samsung that the trial should be adjourned pending determination from the European Patent Office (EPO) on its applications for central amendment, which was likely to be in the near future. The Court of Appeal rejected Apple's counter-application for an order that, in effect, required Samsung to choose between pursuing the appeal or the central amendment applications. It said that the relevant patent legislation specifically contemplated the possibility of concurrent proceedings in the UK and in the EPO and that Samsung's applications were not an abuse of process.

Legislative framework

The European Patent Convention (EPC) 2000 introduced a procedure allowing a patentee to amend a patent, either by having the claims of its granted patent limited or by having the whole patent revoked, in either case, for all designated states. When a patent is amended centrally at the EPO, the procedure is known as a 'central amendment'. The central amendment scheme has been implemented into UK law by the Patents Act 1977 (the 1977 Act) and allows for a granted patent to be amended during the course of legal proceedings.


The UK proceedings are part of a global battle between Samsung and Apple which run alongside litigation in the USA, Japan, Korea, Germany, France, Italy, Netherlands and Australia. Samsung sued Apple in the UK in June 2011, asserting that Apple had infringed three of its patents, only two of which are the subject of this appeal.

The trial at first instance took place in late 2012 (see judgments here and here) and Floyd J held that neither patent was entitled to its claimed priority date and that each was invalid by reason of intervening prior art. He further held that even if the patents had been entitled to their claimed priority dates, they would have been invalid for obviousness. Samsung had also made two conditional applications to amend the British limb of each of the patents before the 2012 trial. Floyd J dealt with the second application which he rejected on the basis that it would not render the patents valid. Samsung was granted permission to appeal in respect of the two patents found to be invalid. Separately in November 2013, Samsung filed the...

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