IP Bulletin - June 2014

Welcome to the June edition of "IP Bulletin" - the intellectual property law update from Charles Russell's Intellectual Property team.

The Bulletin details some recent important cases and key developments.

PATENTS

UK appeal stayed pending outcome of EPO central amendment applications: Samsung Electronics Co Ltd v Apple Retail UK Ltd & Other [2014] EWCA Civ 250

Comment

The Court of Appeal recently stayed Samsung's appeal against a finding of invalidity of two of its mobile 'phone patents, pending the outcome of Samsung's applications for central amendment of those patents at the European Patent Office ("EPO"). The Court of Appeal said that Samsung's application for a stay was not an abuse of the court process because UK legislation allowed for parallel proceedings in both the national courts and the EPO. In addition, the central amendment application was expected to conclude soon and a refusal of the stay might have resulted in the UK appeal proceeding on what may turn out to have been a false basis, resulting in wasted costs and time for the parties.

The decision to stay the appeal leaves the parties in a state of flux, facing uncertainty until the outcome of EPO procedures is known. Additionally, many interested parties may find it highly unsatisfactory that, if the amendments are allowed, the Court of Appeal will be the first UK court to consider the amended patents following the EPO's decision. The Court of Appeal has already made clear that the appeal in respect of both patents will not be heard until the EPO's decision is known in relation to both central amendment applications (the EPO ruled recently on one of the patents and a decision is expected shortly on the other). The Court of Appeal has said it is appropriate in the circumstances that there should be a single appeal hearing in relation to both patents.

Samsung Electronics Co Ltd v Apple Retail UK Ltd and another [2014] EWCA Civ 250, 11 March 2014

Background

In this patent dispute, Samsung brought patent infringement proceedings against Apple in the UK alleging that Apple infringed three of Samsung's patents concerning mobile 'phones. (Only two of the patents were at issue in the appeal.) In the High Court in March 2013, Floyd J held that neither of the two Samsung patents was entitled to its claimed priority date and that each was invalid (by reason of intervening prior art). He also held that even if the patents had been entitled to their claimed priority dates, both patents would have been invalid for obviousness. Samsung appealed this decision.

Samsung also filed applications (in November 2013) at the EPO to amend the two patents at issue (the "central amendment applications") .

Samsung then applied to adjourn the UK appeal pending determination of the central amendment applications.

Decision

The Court of Appeal agreed to grant Samsung's application to stay the appeal from the High Court decision of March 2013...