For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Saturday, 15 March 2014

Samsung appeal against Apple establishes new jurisprudence following EPC 2000

This Kat is very grateful to Katfriend and colleague Gary Moss who not only alerted him to this interesting Court of Appeal decision (Kitchin LJ giving the judgment) from earlier this week but also allowed your humble servant to snaffle his report for editing and now posting. It is the bloggers' favourite ongoing dispute, Apple and Samsung, on the patent side in the UK and involving Samsung patents.

So what is happening this time?

Merpel is rather tired by all
this talk of mobile phones
Well, Samsung sues Apple under three patents.  First instance judge (Floyd J) finds patents invalid (see decisions here and here). Now Samsung could have theoretically could have applied to make post judgment amendments in the UK.  Problem is that there is existing UK jurisprudence stating that post judgment amendments will not be entertained if the effect is to require a new trial to determine the validity of the patent in the light of those amendments.  So what do Samsung do – they apply for central amendment (limitation) at the European Patent Office and then ask the Court of Appeal to adjourn the appeal because the claims may well be in a different form.

“Foul” cry Apple, “Abuse of process, not fair”. According to Apple, Samsung should have offered the amendments before judgment.  (In fact Samsung DID put forward amendments at the trial, but they were different from the amendments now being proposed at the EPO.  The Judge ruled that the amendments did not save the patent.)  So, say Samsung, Apple have two choices.  Either they abandon the central amendment and fight the case of the old claims and amendments.  Or they abandon the appeal.  And the Court of Appeal should impose that choice by striking out the appeal and finding for Apple unless Samsung abandon the central amendments.

Because, say Apple there is a potential abuse here.  For example the Judge found one of the patents invalid for lack of priority and because it was obvious over two pieces of prior art.  But there had been no consideration as to whether the claims as amended were inventive over this art and the evidence had not addressed that.  So potentially there would need to be a new trial.

The Court of Appeal rejects Apple’s whinges.  It says that EPC 2000 contemplates the possibility of central amendments at any time and this has been enshrined in UK law. Therefore what Samsung is doing not an abuse of process but the exercise of Samsung’s legitimate rights.  What is more this is not the same as the position on oppositions; whereas oppositions take years the central amendment process should be relatively quick since it is ex parte and the grounds of examination of limitation application are limited.  Therefore the correct solution is for the Court of Appeal to stay the appeal and see what the EPO do with the claims.  Support for this conclusion was found in the recent Supreme Court Zodiac decision (see IPKat here and here.)

For the IPKat it is not clear what will happen if Samsung obtains through the EPO claims including integers not considered by the UK Court at first instance and which might require further evidence regarding validity.  Is there perhaps to be another trial?

Who said patent litigation in the UK was dull?

Readers interested in this decision may wish also to consult the PatLit blog where there is another note of the case here.

6 comments:

Roufousse T. Fairfly said...

Interesting case!

I feel this to be more something of an unavoidable loophole than a deliberate intent by the legislator.

Art. 105a(2) EPC specifically prohibits the filing of a request for limitation while EPO opposition proceedings are running.

Why wouldn't the same principle be desirable for national proceedings?

It might be useful to have a mechanism permitting a court to ask the EPO to stay the examination of the request for limitation until the national proceedings on the validity of the patent are completed.

I was startled to see that the division handling the limitation in the '404 case has exactly the same composition as the previously allocated examining division. I would have thought that since limitation is lumped in the Convention together in the convention with opposition, an opposition division pursuant Art. 19(2) would have been allocated. This is not the case, (cf. Art. 105b and Rule 91).

Third party comments were filed during the examination of the limitation, arguing added subject-matter and lack of clarity. Why shouldn't the proprietor be allowed to voluntarily step into the Art. 123(2)/(3) bear trap, if there is one?

Roufousse T. Fairfly said...

On second thought, staying the national proceedings might represent the least bad approach, since the effect of limitation is retroactive to the filing date.

Suppose that the proceedings aren't stayed.

A certain EP-UK patent is revoked by the national court, with claim 1 lacking novelty, and the remainder of the claims being nothing but a quivering mass of obviousness. (The proprietor didn't avail himself of the possibility to amend the UK part of the patent provided by Art. 138(3).)

During or after the national proceedings, the proprietor files a request for limitation under Art. 105a, with a new claim 1 consisting of claim 1 as granted combined with previously unexamined subject-matter combed from the description. This limitation is found by the division to be admissible.

Would the decision to allow the limitation have the effect to "resuscitate" the EP-UK part of the patent? Art. 68 specifies the effect of revocation and limitation (both "ex tunc"), but what if revocation is followed by limitation? Is the limited title somehow "distinct" from the original one?

I can't find the answer in Visser (2008), Singer+Stauder (5th edition, 2010) EPC handbooks, or the current Guidelines. What am I missing?

Josef K said...

@Roufousse:
You already discovered R. 91, but see also Art. 21(3)(a).

Btw, does anyone know of an appeal against the refusal of a request for limitation? I suppose they would still lead to "T" decisions.

Regarding the interaction between central limitation and national invalidation, I suppose this is not different from the interaction between EPO decisions to "maintain in amended form" and national invalidation. National invalidation proceedings are not suspended only because an opposition is still running at the EPO.

I would be surprised if a nationally invalidated patent would come back to life. I'm reasonably sure it won't.

A bit more complicated seems the case where a patent gets limited both centrally and nationally but in different ways. Would the patentee in limitation proceedings be forced (and allowed) to submit a separate set of claims taking into account both limitations for the contracting state in which he has previously limited his patent in order to avoid invalidating his patent in that contracting state via Art. 138(1)(d)?

Roufousse T. Fairfly said...

You already discovered R. 91,

I knew that my reaction would sound slightly naive or amusing, but genuine was my surprise. I can't recite yet the entirety of the EPC Good Book by psalm and verse. ;-)

Limitation proceedings at the EPO are still rather infrequent, my ballpark figure would be of the order of 50 cases a year. At the current rate examiners will be lucky if they see a single case in their career.

but see also Art. 21(3)(a).

Thanks! I had to refresh my memory and read it a couple of times to realise what you were getting at. My existence at the EPO was bounded by the confines of Articles 17 to 19, in a way analog to Joseph K. being unable to leave town, or Gregor Samsa's confinement within his bug shell.

I am surprised again, but for a different reason.

With the enactment of EPC 2000, the substance of many articles of the Convention were transferred to the Implementing Regulations. The change isn't cosmetic: most of the former can only be modified through a diplomatic conference followed by national parliamentary ratification, whereas the latter can be implemented by decision of the Administrative Council.

Thus, specifying the competence of the ED in limitation through Rule 91 opens the door to a potential reassignment of competence.

But how could the AC then possibly amend Rule 91 without modifying Article 21 at the same time, which it legally can't? Why the inconsistency? One could have just as well defined the competence for limitations in Article 18, instead of tucking it in a rule.

Btw, does anyone know of an appeal against the refusal of a request for limitation?

I believe I can answer this one with some confidence:

Number of limitation appeals:

Zero. Zilch. Nothing. Rien. Nada. Tipota. Null.

To obtain this result, I scanned the European Patent Bulletins (EPB) from 2009 to today, counting all requests for limitation that had been rejected by an examining division: the number is eight. The wrappers for these cases can be seen by clicking here.

Of these eight, three had been initially allowed by the division, but the proprietor didn't acquit the reissue fee and/or file translations. In one case the limitation report wasn't replied to.

This leaves four reasoned ED rejection decisions based on the substance of the request. There is no trace of appeals in the wrappers of these cases.

I don't have data for 2008, the first full year of the EPC 2000 regime. I nevertheless consider it as a safe bet that nothing will be found there. The youngest rejection in the list above is from early 2011! Limitation is apparently a routine affair.

Just to be sure, I also checked the DG3 decision database, looking for decisions mentioning Articles 105a or 105b in their metadata, but the references to limitation procedure in the results is incidental. (Full text searches for "limitation" or "Beschränkung" return too many results).

I would be surprised if a nationally invalidated patent would come back to life. I'm reasonably sure it won't.

I wouldn't be so confident, considering that a clerical error can bring patent to life in the UK (Virgin Atlantic...),

Would the patentee in limitation proceedings be forced (and allowed) to submit a separate set of claims taking into account both limitations for the contracting state in which he has previously limited his patent in order to avoid invalidating his patent in that contracting state via Art. 138(1)(d)?

From my understanding of the limitation procedure, the ED cannot force separate sets of claims, but can prohibit them if there is no compelling reason for them (e.g.: interfering national rights, EPC 1973 54(3) document, and prior national limitation).

This was the spirit of Visser's commentary on Art. 105b(3), who was critical of the then current Guidelines.

Josef K said...

I knew that my reaction would sound slightly naive or amusing, but genuine was my surprise.

Don't get me wrong, I had to look it up too (but I knew the ED was competent, probably still from preparing paper D).

Thus, specifying the competence of the ED in limitation through Rule 91 opens the door to a potential reassignment of competence.

But how could the AC then possibly amend Rule 91 without modifying Article 21 at the same time, which it legally can't?


I agree this is weird. But an amendment of Art. 21 would strictly speaking not be necessary. If the AC amends R. 91 to make the OD competent, then Art. 21(4) would apply which unlike Art. 21(3)(a) does not distinguish between different types of decisions by an OD, and so does not need to mention limitation and revocation.

So maybe the legislator really did intend to leave the decision as to which body is competent for deciding on limitations and revocations to the AC. It just wisely decided to amend Art. 21(3)(a) for the case that the AC would make the ED competent.

Btw, G 1/11 is out :-)

Josef K said...

From my understanding of the limitation procedure, the ED cannot force separate sets of claims, but can prohibit them if there is no compelling reason for them (e.g.: interfering national rights, EPC 1973 54(3) document, and prior national limitation).

The patentee cannot be forced by the ED, but he would effectively be forced to do so if it would otherwise mean national revocation on the basis of (the national version of) Art. 138(1)(d). I assume that once the patent has been limited it cannot be extended anymore relative to the limited version.

The ED might be able to prohibit separate claim sets, but that doesn't seem very fair. Visser indeed covers it (in my old version):
"(...) If the patent is more limited in Germany than in the request, there will be different sets of claims; (...)"

The Guidelines (funny enough in part D together with opposition!) are indeed more restrictive because of R. 138. Maybe this will lead to an interesting appeal case one day.

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