Samsung Electronics Co LTD v Apple Retail UK LTD & Anor

This is the judgment of the Court.

The appeal was originally listed to come on for hearing before this court on 4 or 5 March 2014 with a time estimate of three days. It concerns the validity and infringement of complex patents owned by the claimant (“Samsung”) which it alleges have been infringed by the defendants (collectively “Apple”). The proceedings are of considerable commercial importance to the parties for the alleged infringements include the iPhone 4, the iPhone 4S and the iPad 2 3G. At trial, Floyd J (as he then was) found each of the patents invalid, both as granted and as proposed to be amended, and he ordered their revocation, which he suspended pending an appeal to this court, for which he gave permission.

On 12 February 2014 we heard two applications. Samsung sought an adjournment of the appeal pending the determination of applications which it has made to the European Patent Office (the “EPO”) for amendment of the claims of the patents. We were told by Samsung that these applications, which we shall refer to as the central amendment applications, are likely to be determined by June 2014, if not earlier.

Apple responded with an application for an order that unless Samsung undertook to take no further steps with its central amendment applications, then the permission to appeal granted by the judge should be set aside, the notice of appeal struck out and the patents revoked. In substance, therefore, it sought an order requiring Samsung at this stage to elect between pursuing this appeal or the central amendment applications.

At the end of the hearing we indicated that we would reserve judgment. Two days later, on 14 February 2014, we communicated to the parties that we had decided to allow Samsung’s application and dismiss Apple’s application, but without prejudice to Apple’s right at the hearing of the appeal to make such further submissions (and any necessary application) about the conduct and further progress of the action as it may consider appropriate. We also indicated that we would provide our reasons in writing as soon as possible. That we now do.

These proceedings are part of a global dispute between Samsung and Apple. Litigation is underway in the USA, Japan, Korea, Germany, France, Italy, Netherlands and Australia, in addition to the UK.

The claim form in these proceedings was issued on 29 June 2011 and asserted infringement by Apple of three patents, only two of which are in issue on this appeal, namely EP (UK) Patent No. 1,005, 726 (the “726” patent) and No. 1,714,404 (the “404” patent). The action came on for trial in November and December 2012 and in his judgments given on 7 March 2013, Floyd J found that neither patent 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, they would have been invalid for obviousness.

Samsung had made two conditional applications to amend each of the patents before trial. The judge dealt with the second of these applications in respect of each patent and rejected it, finding it would not render the patent valid. We should also explain that Samsung maintained right up to trial that all of the claims of the 726 patent as granted were independently valid. The judge held this approach to be contrary to the established practice of the court and at a subsequent hearing awarded Apple its costs of dealing with the claims of this patent (other than claims 1 and 14) on an indemnity basis.

The judge made his final order on 8 May 2013 and declared that the 726 and 404 patents were invalid, both as granted and as proposed to be amended; dismissed the amendment applications; granted permission to appeal; and suspended the order for revocation of the patents until after the determination of this appeal, provided that Samsung prosecuted it with due diligence. Shortly afterwards, on 29 May 2013, Samsung filed its notice of appeal. As we have said, the hearing of the appeal was originally fixed for 4 or 5 March 2014, with a time estimate of three days.

Samsung is also suing Apple in respect of the 726 patent in Germany and in Italy. On 20 January 2012, the Mannheim Regional Court rejected Samsung’s infringement claim. On 10 April 2013, the German Federal Patent Court found the patent invalid. Samsung has appealed both decisions. The 404 patent is in issue in proceedings in Italy and in France. A provisional date for trial in the French proceedings has been set for July 2014.

On 5 November 2013, Samsung filed the central amendment applications. If they are granted, they will have effect in all designated states. Samsung explained that, given the multiple on-going parallel proceedings that would be affected by central amendment applications and the consequent need for co-ordination, it was not in a position to file these applications before it did. Nevertheless, it informed us that a request for acceleration of the applications had been made to the EPO and it understood this to have been granted.

Specifically in relation to the 404 patent, by a communication dated 20 December 2013, the Examining Division of the EPO indicated its approval in principle to the proposed limitation of claim 1 (subject to a suggested minor drafting change), and raised some issues with the remaining claims. Samsung said it had addressed these suggested drafting changes and the issues with the remaining claims in its response to the Examining Division dated 20 January 2014. In the result, it expected to receive the EPO’s decision upon this application in March 2014.

Turning to the 726 patent, the Examining Division indicated that it would aim to provide initial views by the end of January 2014. At the time of the hearing before us, the initial response had not been received although it was expected imminently. Since the hearing we have been provided with a letter from the Examining Division dated 18 February 2014 indicating that the proposed amendments are not clear and would involve added matter, and giving Samsung two months in which to file observations, and insofar as the deficiencies are rectifiable, to provide corrections.

At the time of the hearing Samsung believed that it was overwhelmingly likely that the central amendment applications would be determined in the next few months. In light of the recent communication from the EPO it seems Samsung was unduly optimistic. Nevertheless we think it likely the applications will still be determined relatively quickly.

Mr Henry Carr QC appeared with Mr Mark Vanhegan QC on behalf of Samsung. He submitted that a part of the purpose of the central amendment procedure is to allow a patentee to consider a judgment in one designated state and, in response, to narrow the claims for all other designated states, and that is precisely what Samsung seeks to do here. He further argued that it was very likely that the central amendment applications would be decided before these proceedings were finally disposed of, and that were we to proceed to hear the appeal in the meantime there would be a real risk that the costs of so doing would be wasted. Accordingly, he invited us to adjourn the hearing of the appeal in order to enable the final form of the claims to be ascertained, and the parties to prepare accordingly.

Mr Guy Burkill QC, who appeared with Mr Thomas Hinchliffe on behalf of Apple, responded that the amendments now sought do not correspond to any of the amendments sought at trial, or to any existing granted claim or sub-claim. Further, these amendments could have been put before the judge but, because they were not, the parties did not address them in their evidence and the judgments did not consider them. As a result, if the central amendment applications were to be allowed, there would be no basis upon which this court could find the amended claims valid and infringed, and so set aside the judge’s order for revocation and grant the relief which Samsung now seeks. The action would therefore have to be remitted for retrial on the amended claims. That, he argued, would constitute an abuse of the process of the court because Apple should not now be put to the trouble and jeopardy of a second trial. Accordingly, he continued, Samsung should be put to its election and either proceed with the appeal on the basis of the claims considered by the judge and meanwhile take no further steps with its applications for central amendment, or it should abandon this appeal and consent to the lifting of the stay of the order for revocation.

Consideration of these rival submissions must, we think, begin with a brief explanation of the legislative framework. This was not in dispute and the following summary is drawn in large part and with gratitude from the submissions of the parties.

The European Patent Convention 2000 introduced what is intended to be a short and straightforward procedure allowing a patentee either to have the claims of his granted patent limited or to have the whole patent revoked, in either case for all designated states. In broad outline, the request can be filed at any time after grant, that is to say after opposition proceedings, or even after expiry of the patent. The scope of the examination conducted by the Examining Division is limited to deciding whether the amended claims of the request constitute a limitation, are clear (and so comply with the requirements of Article 84 EPC), and do not involve additional matter or extend the scope of protection (and so comply with the requirements of Article 123(2) and (3) EPC). No other considerations are relevant. The system further provides for communications between the Examiner and the patentee allowing the patentee to address objections and even, if the Examiner considers the request to be unallowable, to request oral proceedings. Although the procedure is ex parte, third party observations can be filed and, if they are, the patentee is given an opportunity to produce further restrictions intended to address them, if it wishes to do so.

This scheme is implemented in the EPC, as revised. Article 105a EPC reads:

“(1)

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.

(2)

The request may not be filed while opposition proceedings in respect of the European patent are pending.”

It may be seen therefore that the only restriction upon the timing of an application is that it may not be filed while opposition proceedings are pending. But, of course, in such a case, an application to amend may be made by the patentee in the opposition proceedings themselves.

The jurisdiction of the EPO to consider the application for a limitation is addressed in Article 105b:

“(1)

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.

(2)

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.

(3)

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.”

The EPO must therefore examine the application, consider whether the requirements laid down in the Implementing Regulations have been met and, if they have, it must limit or revoke the patent accordingly, and do so in all designated states.

The restricted nature of the examination emerges from rule 95 of the Implementing Regulations which reads, so far as relevant:

“(2)

If a request for limitation is admissible, the Examining Division shall examine whether the amended claims constitute a limitation vis-à-vis the claims as granted or amended in opposition or limitation proceedings and comply with Article 84 [requiring the claims to be clear and concise] and Article 123, paragraphs 2 and 3 [prohibiting added matter and extension of the scope of protection]. If the request does not comply with these requirements, the Examining Division shall give the requester one opportunity to correct any deficiencies noted, and to amend the claims and, where appropriate, the description and drawings, within a period to be specified.”

If these requirements are satisfied then the Examining Division must limit the patent, as rule 95(3) makes clear:

“(3)

If a request for limitation is allowable under paragraph 2, the Examining Division shall communicate this to the requester and invite him to pay the prescribed fee and to file a translation of the amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months; Rule 82, paragraph 3, first sentence, shall apply mutatis mutandis. If the requester performs these acts in due time, the Examining Division shall limit the patent.”

Finally, the precedence of opposition proceedings is dealt with expressly in rule 93, which reads:

“(1)

The request for limitation or revocation shall be deemed not have been filed if opposition proceedings in respect of the patent are pending at the time of filing the request.

(2)

If, at the time of filing an opposition to a European patent, limitation proceedings in respect of that patent are pending, the Examining Division shall terminate the limitation proceedings and order the reimbursement of the limitation fee. The reimbursement shall also be ordered in respect of the fee referred to in Rule 95, paragraph 3, first sentence, if the requester has already paid this fee.”

The central amendment procedure is therefore intended to be simple and relatively quick, in marked contrast to opposition proceedings which, as is well known, may take very many years to reach a conclusion. The ex parte nature of the proceedings, the limited grounds upon which the application is examined and the absence of a discretion combine to produce a procedure which will run its course in a matter of months, as the Explanatory Memorandum accompanying the Basic Proposal for EPC 2000 explains in its commentary on Article 105:

“Under the extended limitation procedure proposed in the new Articles 105a-c, the European patent may be limited or revoked ab initio (see Article 68 EPC above) at the request of the patent proprietor. Limitation or revocation may be requested at any time, although precedence must always be given to opposition proceedings. Making the limitation procedure ex parte and doing away with an examination of the patentability of the residual patent guarantees a speedy decision from the EPO.”

A central amendment is deemed to have effect and always to have had effect from the grant of the patent. This is the consequence of Articles 64 and 68 EPC:

“Article 64

Rights conferred by a European Patent

(1)

A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.

(2)

If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.

(3)

Any infringement of a European patent shall be dealt with by national law.

….

Article 68

Effect of revocation or limitation of the European patent

The European patent application and the resulting European patent shall be deemed not to have had, from the outset, the effects specified in Articles 64 and 67, to the extent that the patent has been revoked or limited in opposition, limitation or revocation proceedings.”

The Patents Act 1977 (as amended) (“the 1977 Act”) gives effect to these provisions in s.77(4) which provides that an amendment of the UK designation of a European patent in accordance with the EPC is to have effect for the purposes of the Act as if the specification of the patent had been amended under it. Such amendments, whether made under s.27, which confers a general power to amend a specification after grant, or s.75, which confers a power to amend the specification of a patent in the course of infringement or revocation proceedings, take effect from grant.

The 1977 Act therefore specifically contemplates the possibility of concurrent proceedings in the UK and in the EPO. The EPO proceedings may themselves take the form of opposition proceedings or, since December 2007, central amendment proceedings. As we have indicated, and save where opposition proceedings are pending, there is no prohibition on the filing of a central amendment application while infringement or revocation proceedings are pending in any designated state, or in the period between a first instance judgment and appeal in such proceedings in any designated state.

In these circumstances we do not believe the filing and pursuit by Samsung of its central amendment application can be characterised as an abuse of process or, indeed, an activity with which this court can properly interfere for any other reason. Support for this conclusion can, we think, be derived from the recent decision of the Supreme Court in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46, [2013] RPC 29. In that case Virgin sought to recover damages for infringement of a European patent which had been found valid and infringed by this court but subsequently amended by the Technical Board of Appeal (“the TBA”) of the EPO in opposition proceedings so as to remove with effect from the date of grant all of the claims held to have been infringed. Virgin argued that it was nevertheless entitled to recover damages for infringement because it had the benefit of a final decision of the English courts in its favour before the TBA had issued its decision. Accordingly, it continued, the issues of infringement and validity were res judicata. This court agreed ([2011] EWCA Civ 163, [2011] FSR 27), and, in so doing, regarded itself as bound by its earlier decisions in Coflexip SA v Stolt Offshore MS Ltd (No 2) [2004] EWCA Civ 213, [2004] FSR 34 and Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, [2007] FSR 25.

The Supreme Court reversed that decision and allowed the appeal holding that, where judgment is given in an English court that a patent (whether English or European) is valid and infringed, and the patent is subsequently retrospectively revoked or amended (whether in England or at the EPO), the defendant is entitled to rely on the revocation or amendment on the enquiry as to damages. Lord Sumption (with whom Lady Hale, Lord Clarke and Lord Carnwath agreed) said this at [27]:

“If this case is to be determined according to these general principles of modern law, there can, I think, be little doubt about the answer. The Court of Appeal decided, before the result of the opposition proceedings in the EPO, that in its unamended form the patent was valid and infringed. It follows that Zodiac are estopped from asserting on the enquiry as to damages that in its unamended form the patent was invalid or was not infringed. This estoppel is a true cause of action estoppel. The Court of Appeal has determined in favour of Virgin issues essential to the existence of the cause of action for infringement of the unamended patent, which are the basis of the claim for damages. However, the point which Zodiac seek to make on the enquiry is that the unamended patent has been retrospectively amended. It no longer exists, and is deemed never to have existed, in the form on which these issues were adjudicated by the Court of Appeal. Zodiac’s reliance on the retrospective amendment is a new point which was not raised before. It could not have been raised before, because the decision of the TBA retrospectively amending the patent was made after the order giving effect to the judgment of the Court of Appeal. There are two related reasons why Zodiac cannot be precluded from relying on the decision of the TBA on the enquiry as to damages. One is that they are relying on the more limited terms of a different patent which, by virtue of the decision of the TBA, must at the time of the enquiry be treated as the only one that has ever existed. The other is that Zodiac are not seeking to reopen the question of validity determined by the Court of Appeal. The invalidity of the patent may be the reason why the TBA amended the patent, but the defendant is relying on the mere fact of amendment, not on the reasons why it happened.”

Then, a little later, in commenting upon the Unilin decision and the statutory scheme, Lord Sumption continued (at [33]):

“In Unilin Beheer BV v Berry Floor NV [2007] F.S.R. 25 the Court of Appeal reached the same conclusion. The facts were in some ways an even more exacting test of the principle, because the policy considerations invoked in Coflexip could not possibly have justified the outcome in Unilin. This was because, as in the present case, the patent was retrospectively amended by the EPO to limit its scope to valid claims, after the English court had given judgment in favour of the patentee. The “vexation” associated with the pursuit of two proceedings challenging the validity of the patent was an inescapable feature of the statutory scheme which conferred concurrent jurisdiction on questions of validity on both the English court and the EPO. It can hardly be said that the vexation inherent in there being two perfectly proper proceedings concurrently is made more tolerable by ignoring the outcome of one of them. It was common ground in Unilin that the court was bound by Coflexip, and there was therefore only limited consideration of the merits of the principle decided in that case. The argument was directed to a different issue, namely whether the law stated in Coflexip was inconsistent with the scheme of the legislation relating to European patents, and therefore, impliedly excluded where such a patent was revoked or amended by the EPO.”

The scheme contemplated the possibility of parallel proceedings challenging the validity of the patent; and the amendment made in the EPO proceedings had retrospective effect and removed from the patent the claims found to have been infringed. The obligation to pay damages therefore fell away. As Lord Neuberger observed (at [62]), it would have been positively unjust for the patentee to recover damages for infringement of the patent after it had been irrevocably and retrospectively amended.

Palmaz’s European Patents (UK) [2000] RPC 17 was another case concerning the effect of an amendment made in opposition proceedings in the EPO upon concurrent proceedings in this jurisdiction. The judge at trial found the patent invalid, both as granted and as proposed to be amended. However, between judgment and appeal the TBA allowed an amendment sought by the patentee and upheld the validity of the patent as so amended. At the subsequent hearing of the appeal before this court the defendant argued that the appeal should be conducted simply by way of a review of the decision of the judge and accordingly this court should consider the patent as granted rather than as amended. This court rejected that submission, holding that the patent must be considered in its amended form because the decision of the TBA was directly and retrospectively effective. As Aldous LJ explained at [8]-[9]:

“8.

Boston submitted that the patentees were under a duty to bring before the court all the issues that needed to be resolved. In the present case they had chosen to litigate in this country while the opposition was proceeding in the EPO and had not sought a stay to enable the opposition to be concluded first. The patentees therefore had to apply to amend in these proceedings and in so doing had to satisfy the court that the amendments were allowable. The judge held that they were not and ordered revocation of the patent. It was his decision which was being reviewed by this court. It followed that the court had to decide amendment, validity and infringements as at the date when the judge made his order. If the patent was to be revived in the United Kingdom that could only be done by first reversing the judge’s conclusion on amendment.

9.

I reject that submission. It is the amended form that has to be considered in this appeal. The order for revocation was stayed pending appeal. Thus Palmaz 1 had not been revoked at the time when the EPO decision to allow the amendments became final. As section 77(4) of the Act makes clear the amendments allowed by the EPO have to be treated as if made under the 1977 Act. Such amendments are deemed to always have had effect from the grant of the patent (see sections 27(3) and 75(3)). Thus the only form that can be considered is the amended form. The appeal is by way of rehearing and this court has power to give any judgment and to make any order which could have been made or sought to have been made. It follows, taking into account the retrospective effect of the EPO decision, this court can only consider the issues that arise on the appeal in relation to the amended patent which is in the only form that exists at the date of the hearing before this court. To do otherwise would be contrary to common sense.”

The recognition of the reality of a retrospective amendment is also reflected in the decision of this court in Eli Lilly & Co v Human Genome Sciences Inc [2010] EWCA Civ 33, [2010] RPC 14. At trial the patent in issue was held invalid and further, that it could not be saved by some proposed amendments. At that time the Opposition Division of the EPO had also held the patent invalid. The patentee appealed but, before that appeal came on for hearing, the TBA allowed the patentee’s appeal, based on amendments which restricted the claims still further. The substantive appeal then came on for hearing before this court and was conducted on the basis of the claims as so amended before the TBA.

All of these cases involved concurrent English proceedings and EPO opposition proceedings, and this court has not hitherto had to deal with the effect of a central amendment made after trial. Our attention has, however, been drawn to the decision of the Supreme Court of the Netherlands (First Chamber) in Case No. C07.085HR Boston Scientific Scimed Inc v Medinol Ltd given on 6 March 2009 in which precisely this issue did arise. In that case Scimed sued Medinol for patent infringement. Medinol contested the claim and, by way of counterclaim, sought revocation of the patent. The District Court of the Hague rejected the claim and revoked the patent, a decision which was upheld by the Court of Appeal. After the decision of the Court of Appeal, Scimed filed a central amendment application at the EPO seeking to limit the claims. The application was allowed in a matter of months and shortly thereafter, Scimed’s appeal to the Supreme Court came on for hearing. On that further appeal, Scimed argued that the amendment operated retrospectively and invited the Supreme Court to allow the appeal and remit the case for rehearing. The Supreme Court, having reviewed the provisions of the EPC and the central amendment procedure, agreed. It held that it was required to consider the patent in its amended form and duly remitted the case to the Court of Appeal.

The decision in Scimed is not, of course, binding upon this court. However, as Lord Neuberger explained in Schutz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16 in relation to decisions of the German Supreme Court:

“These are not only decisions of a highly expert, experienced and respected court on the very point which is raised in this case, but they are decisions of a court of another signatory state to the EPC (and the CPC) on a point of some significance arising under those Conventions. We should therefore accord them considerable respect, and sympathetically consider the extent to which we should adopt any points of principle or practice which they raise.”

Those comments are equally apposite to decisions of the Supreme Court of the Netherlands. It is another court whose decisions must be accorded considerable respect.

In our judgment Apple would therefore have faced an insuperable difficulty had it invited this court to direct Samsung to withdraw its applications for the central amendment of the patents. There is nothing in the EPC or the 1977 Act which prohibits Samsung from making and pursuing its applications at this time and they will, if allowed, have retrospective effect in all designated states.

We also believe there to be a real possibility, put at its lowest, that these applications will be determined before the final conclusion of these proceedings. It therefore seemed to us to make obvious sense to accede to Samsung’s request for an adjournment of the appeal until the outcome of the applications is known, subject of course to any prejudice that this might cause Apple, for had we proceeded to hear the appeal in the meantime it might well have turned out that we had done so on a false basis, that is to say on the basis of claims which, in due course, will be deemed never to have existed.

The relief which Apple sought on its application was, however, of a rather different kind. It sought an order that this appeal be struck out unless Samsung withdrew its central amendment applications, which it plainly has no intention of doing. Mr Burkill developed the following arguments in support of that application.

First, Mr Burkill submitted that the fact that opposition or central amendment proceedings in the EPO are pending does not prevent a national court from considering the claims of a patent in their existing form and revoking them, and that is so even if the EPO proceedings could have saved them.

In our judgment this proposition is correct. Thus in Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489, Aldous LJ rejected a submission that the English court could not revoke a patent because it was still under opposition in the EPO. As he said (at pages 503-504):

“Section 72(2) cannot have been meant to remove the right of the English courts under section 72 to revoke invalid patents pending expiry of the opposition period and resolution of opposition proceedings which could last up to eight years. If patents are invalid, then the national courts have the power to revoke them at any time after grant. That causes no injustice. A patentee has ample opportunity to amend his patent in this country and it is right that he should bring before the court all the issues which need to be determined. If he wishes to seek amendment, he should formulate his amendment at the earliest possible time so that the court can determine validity and infringement with the proposed amendment in mind. Section 72(2) preserves the operation of the Convention but does not curtail the jurisdiction of the Patents Court to revoke an invalid patent.”

In the present case, the order for revocation has been suspended, however; and whilst that suspension remains in place the patents continue to subsist and can be amended.

Mr Burkill next argued that Samsung’s request for central amendment is an attempt to avoid the inevitable rejection of any post-trial application to amend that it could have made in England under s.75 of the 1977 Act. In that regard he has referred us to a number of decisions of this court holding that post-trial applications to amend should ordinarily be refused if they would require a second trial on validity. In Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, [2006] FSR 4, Jacob LJ (with whom Laws LJ and Waller LJ agreed) explained that an exercise of discretion to allow an amendment in such circumstances would be improper for three distinct reasons:

“14.

First, there is the straightforward application of the principles of Henderson v Henderson (1843) 3 Hare 100, as the judge noted.

15.

Secondly, specifically in the field of patents, the courts have made it plain that this sort of post trial amendment should not be allowed if it would involve a second trial on validity. In Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] R.P.C. 59, Oliver L.J. was considering a post trial application for amendment. He rejected it, as did the court, noting at p.81 as follows:

“In the first place, as Mr Young has pointed out, it was for the plaintiffs, if they wished to support their claim to monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial. In fact, however, no-one from first to last, advanced or considered the specialised qualities of a surfboard as an inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as the basis for the claim to monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of the most important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence on an issue never previously suggested either in the specification or in the pleadings. We would require considerable persuasion that the imposition upon a successful defendant of such a manifestly inconvenient and oppressive course would be a proper exercise of discretion even in an otherwise strong case.”

16.

Applying that here, plainly there would be a second trial, the very thing that Oliver L.J. is saying ought not to happen. Mr Baldwin’s only answer is that the second trial would be a little one. That will not do.

17.

Aldous L.J. was to exactly the same effect more recently in Lubrizol Corp v Esso Petroleum Co Ltd [1998] R.P.C. 727, 790 which epitomises it all:

“For my part, I believe it is a fundamental principle of patent litigation that a party must bring before the court the issues that he seeks to have resolved, so as to enable the court to conclude the litigation between the parties.”

18.

It may be noted in passing that in no patent case since the modern system of amendment came in has Mr Baldwin been able to find an instance where somebody was able to make a validating amendment post trial of the kind we are now considering.

19.

Thirdly, the CPR are dead against the kind of procedure which Mr Baldwin seeks to invoke. The whole code is governed by the overriding objective contained in Pt. 1.1.1. Part 1.1.2 specifies some examples of cases of dealing with a case justly. 2(b) is “saving expense”. Plainly a second trial would cause increased expense. 2(d) is ensuring that it is “dealt with expeditiously and fairly”. Having two bites of the cherry is doing neither of those things.”

Then, in Nokia GmbH v IPCom & Co KG [2011] EWCA Civ 6, [2011] FSR 15, Jacob LJ explained further at [108] that the true test was one of abuse of process, and that the burden lay upon the party objecting to the second action to show this. However, where a party failed to advance a case he could have advanced much earlier and did so without justification, he was abusing the process and the other party was entitled to object. It was normally procedurally unfair to subject a party to successive cases when they could readily have been dealt with in one go. A little later, Jacob LJ drew a distinction between proceedings in England and proceedings in other countries whose appeal systems involved a rehearing rather than a review:

“137.

Secondly, no other courts in Europe, or indeed the EPO, allow a patentee who has had his patent found invalid, only then in the same court to propose a limitation to it. There are countries whose appeal systems are in effect fresh first instance hearings (that is also broadly the current system for EPO oppositions). For these it is not procedurally too late to offer amendments (fall back positions) between first instance and appeal. But even in such cases no one allows unfair hearings to take place and no one lets a patentee who has lost his patent before a court then formulate before that court fall-back positions. A patentee cannot, for instance, after the hearing before an EPO Board of Appeal, and after he has been informed by the Board that he has lost his patent, then start formulating amendments to his claims.”

And he summarised the position generally in this way at [139]:

“In short procedural tightening by way of making parties put up their cases in time for them to be dealt with fairly at a pre-arranged hearing without adjournment is the trend in Europe. The message is: “put up in time, or shut up”. That can only be good for European industry.”

Accordingly, Mr Burkill continued, any post-trial application for amendment under s.75 of the 1977 Act would inevitably have been refused for the sound policy reasons explained in the Nikken and Nokia cases and Samsung should not be placed in any better position by invoking the central amendment route. Further, Apple now has the benefit of an order of the High Court that the UK designations of the patents must be revoked, albeit this order has been suspended pending appeal. Moreover, the judge granted permission to appeal on the basis that it was at least arguable that he had fallen into error in coming to the conclusion that he did on the patents as they then stood. He also stayed his order for revocation upon Samsung’s undertaking to pursue that appeal with due diligence. Importantly, the judge neither gave permission to appeal nor suspended the order for revocation on the basis that it would give Samsung an opportunity to file an application for a central amendment. Had the judge been apprised of a suggestion that central amendment was to be sought before the hearing of the appeal then, in accordance with the settled principles explained in the Nikken and Nokia cases, he would have refused permission to appeal and would not have suspended his order for revocation.

Mr Burkill also submitted that Samsung must now apply to amend its notice of appeal and its grounds of appeal if it wishes to rely upon centrally limited claims and, once again, that is an application which this court should refuse. Moreover, Samsung has failed to comply with CPR PD 63 which provides, so far as relevant, that where the proprietor of the UK designation of a European patent intends to file a request for a central limitation then he must serve on all the parties to the proceedings a copy of the intended request at least 28 days prior to filing it with the EPO. Any party upon whom such an intended request is served may apply to the court for directions or such other order as may be appropriate. Thus, Mr Burkill argued, had Samsung complied with this direction, Apple could and would have sought directions from the court to prevent Samsung from commencing or pursuing such an application until after the disposal of the appeal.

Underpinning all of Apple’s objections is a concern that it will have to face on this appeal an entirely new case which it has not had an opportunity to address. By way of example, the judge found the 726 patent invalid both for lack of priority and because it was obvious in the light of two separate pieces of prior art. Mr Burkill submitted the evidence below did not, however, address the question whether the proposed amended claims of this patent were inventive over this art. Apple did not cross-examine Samsung’s expert on that issue and the judgment did not deal with it. Accordingly, this court cannot review the non-existent judgment on that question.

On this last point, Mr Carr responded that Apple’s anxieties about the consequences of the particular amendments sought in these central amendment applications are misconceived. He submitted that the nature of the limitations is such that it would be perfectly feasible for this court to consider the patents in their amended form on the basis of the findings that have already been made. So far as the 726 patent is concerned, Mr Carr contended that the amendments will limit the claims to that which the judge has already held is directly and unambiguously derivable from the priority document. He also submitted that the judge has already found that the proposed amended claims are not obvious.

In assessing these submissions, we believe the following points are material. First, we consider that Mr Burkill is right as to the likely fate of any application Samsung might have made after the trial to amend the patents in suit under s.75 of the 1977 Act. Such an application would very likely have been refused in the exercise of the court’s discretion for all of the reasons explained by this court in the Nikken and Nokia cases.

Second, notwithstanding the foregoing and for the reasons we have given earlier in this judgment, we do not consider it to be an abuse of the process of this court for Samsung to make and pursue its central amendment applications. These are applications which are contemplated by the central amendment scheme as implemented in our domestic law by the 1977 Act. Moreover, and in contrast to an application made in this jurisdiction under s.75 for amendment of a UK designation, they do not involve the exercise by the EPO of any discretion. If the requirements of the Implementing Regulations are met, the amendments will be allowed. Further, and again unlike an application made in this jurisdiction for amendment of a UK designation, the amendments will take effect in relation to the patents in every designated state.

Third, any decision by the EPO upon the central amendment applications will be directly effective in every designated state. If the applications are allowed, the patents will be deemed always to have been in their amended form. Further, Samsung will, prima facie, be entitled to rely upon them in that form, just as will Apple. As Lord Neuberger said in the Virgin case (at [52]), the new claims will be a “new, centrally important, uncontroversial fact”.

Fourth, we nevertheless have no doubt that the English courts do retain the power to control their own proceedings and to prevent activities which would amount to an abuse of process. However, for our part, we do not believe it would necessarily amount to an abuse of process for a patentee to seek to rely upon claims which have been limited by the EPO following a central amendment application, and that is so whether the application has been made before or after the trial. If, for example, the amendments in the Palmaz case had been made following a central amendment application after trial, we doubt the approach adopted by this court would have been any different. In expressing this view we have in mind that the central amendment scheme, as implemented in our domestic law, contains no restriction against applying for a central amendment whilst proceedings are underway in one or more designated states. It also seems to us that we must be cautious about adopting an approach which is different from that followed in the Netherlands as explained by the Supreme Court in the Boston Scientific case.

Fifth, we believe that whether or not a patentee’s attempted reliance before this court upon a patent which has been amended pursuant to a central amendment application made after trial constitutes an abuse of process must depend upon all the circumstances, including whether it would be necessary to remit the case for retrial and, if so, what the consequences of that would be. Indeed Mr Carr accepted that it was possible to envisage circumstances where such an attempt might indeed constitute an abuse, although he emphasised they do not arise here. In light of the limited opportunity afforded for argument upon this point at the short hearing of these applications on 12 February, we do not consider it appropriate to attempt to define in this judgment the circumstances in which such an attempt would amount to an abuse. Indeed it may be that this is best worked out on a case by case basis.

Sixth, nothing we say in this judgment should be taken as casting any doubt upon the recent decision of this court in IPCom GmbH & Co KG v HTC Europe Co Limited & Others [2013] EWCA Civ 1496. That was concerned with a rather different question, namely the circumstances in which it may be appropriate for a court to grant a stay of UK infringement and validity proceedings pending the outcome of concurrent opposition proceedings in the EPO. In the present case, by contrast, we were asked to grant an adjournment on the basis that the outcome of the central amendment applications would be known in a relatively short time, and very likely before these proceedings were finally disposed of.

Returning to the facts of this case and the applications before us, we came to the conclusion that the course which this court should adopt was clear. The central amendment applications are proceeding and will likely be concluded in the relatively near future. The pursuit of the applications is not itself an abuse of the process of this court, permitted as it is by the EPC, the Implementing Regulations and the 1977 Act. The applications may or may not be successful. Moreover, it cannot be predicted with any certainty what form the amendments will take if allowed, for their final form may depend upon interaction between Samsung and the EPO during the course of the application process.

In these circumstances, it seemed to us we had to adjourn this appeal until the outcome of the central amendment applications is known. It was not suggested that an adjournment would in and of itself cause Apple any significant prejudice. Conversely, however, a refusal of the adjournment might have resulted in the appeal proceeding on what may turn out to have been a false basis, with all the consequential waste of costs and time that would entail.

As for Apple’s application, this fell to be dismissed because we do not believe it can be said at this stage that pursuit by Samsung of its central limitation applications necessarily means that these appeal proceedings constitute an abuse of the process of the court. But, as we made clear in our communication to the parties, this is entirely without prejudice to Apple’s right to advance such submissions (and make such applications) as it may consider appropriate once the outcome of the central amendment applications is known. There should of course be liberty to apply.