12 March 2013

The Samsung and Apple Litigation - Round 2 to Apple

According to WikipediaSamsung Electronics Co., Ltd, is the world's largest information technology company in terms of revenue. Apple Inc. is number two. Samsung supplies the famous Galaxy smart phone and Apple the well known iPhone

Over the last few years Samsung and Apple have fought each other in the world's court rooms.(see "Apple Inc. v. Samsung Electronics Co., Ltd" in Wikipedia).  In the last round over Apple's registered Community design, Apple came off second best (see Jane Lambert "Apple v Samsung - the Appeal" 26 Oct 2012) and was made to eat humble pie (see Jane Lambert "Samsung v Apple: 'Be you never so high ....'." 2 Nov 2012 and "Samsung v Apple: the Reasons" 30 Dec 2012).  In Samsung Electronics Co. Ltd v Apple Retail UK Ltd and Another (No. 1) [2013] EWHC 467 (Pat) and Samsung Electronics Co Ltd v Apple Retail UK Ltd and Another (No. 2) [2013] EWHC 468 (Pat) Apple did rather better. Mr. Justice Floyd held three of Samsung's patents to be invalid though he found that two of those patents would have been infringed had they been valid.

Although both cases were part of the same claim they were tried on different days and argued by different counsel.    In the first case Samsung sued Apple for infringement of European patents (UK) numbers 1,005,726 and  1,357,675 and Apple counter-claimed for revocation.   Those patents were for inventions relating to "channel coding", a method of detecting errors in digital transmissions.  In the second, Samsung sued Apple for infringement of European patent (UK) number 1,714,404 which related to the structuring of data streams and again Apple counter-claimed for revocation.   Mr. Justice Floyd delivered judgment in both cases on 7 March 2013.

All three patents claimed priority from South Korean grants:
  • European patent (UK) 1,005,726 from Korean patent no 11380/98;
  • European patent (UK) 1,357,675 from Korean patent no  9926221; and
  • European patent (UK)  1,714,404 from Korean patent no 2004045127.
In the first case Mr. Justice Floyd considered the law on entitlement to priority.   Reminding himself that Lord Justice Kitchin had held in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd and Others [2012] EWCA Civ 1234 (10 Oct 2012) at paragraph [151] that
"151. Section 5(2)(a) of the Patents Act 1977 provides that an invention is entitled to priority if it is supported by matter disclosed in the priority document. By section 130(7) of the Act, section 5 is to be interpreted as having the same effect as the corresponding provisions of Article 87(1) of the European Patent Convention. Article 87(1) says that priority may be derived from an earlier application in respect of the 'same invention'.
152. The requirement that the earlier application must be in respect of the same invention was explained by the Enlarged Board of Appeal of the EPO in G02/98 Same Invention, [2001] OJ EPO 413; [2002] EPOR 167:
"The requirement for claiming priority of 'the same invention', referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
153. The approach to be adopted was elaborated by this court in Unilin Beheer v Berry Floor [2004] EWCA (Civ) 1021; [2005] FSR 6 at [48]:
"48. …….The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim."
154. In Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat), I added this:
"228. So the important thing is not the consistory clause or the claims of the priority document but whether the disclosure as a whole is enabling and effectively gives the skilled person what is in the claim whose priority is in question. I would add that it must "give" it directly and unambiguously. It is not sufficient that it may be an obvious development of what is disclosed.""
The judge also considered paragraph [61] of Lord Justice Jacob's judgment in Unlin where he discussed the extent to which priority could be lost if the invention described in the priority document included features A, B and C, but was claimed in the patent with only two of those features.   That had also been discussed as part of the reasoning in G02/98 Same Invention [2001] OJ EPO 413; [2002] EPOR 167 which was also cited in Medimmune.  Lord Justice Jacob said:
"Mr Carr also relied on those passages of G02/98 quoted above. He submitted that here, just as in the Board's discussion, there were three features, A+B+C (free of play, lip length limitation, and minimum thickness). They are disclosed in combination – hence, he says, a claim to one without the other two cannot have priority. I would reject that submission too. The discussion at this point in the Board's reasoning is in danger of being considered in too abstract a way. Helpful though it was in the Board's reaching its ultimate conclusion, what really matters is the conclusion itself. The fact of the matter is that when features A+B+C are disclosed, a lot must turn on what they actually are. Some inventions consist of a combination of features – the invention consists in the very idea of putting them together. In other cases that is simply not so – the features are independent one from the other. Whether, given a disclosure of A+B+C, there is also a disclosure of A or B or C independently depends on substance, not a formula. The ultimate question is simply whether the skilled man can derive the subject-matter of the claim from the priority document as a whole."
The judge concluded that "the task for the court is therefore:
"(a) to read and understand, through the eyes of the skilled person, the disclosure of the priority document as a whole;
(b) to determine the subject matter of the relevant claim;
(c) to decide whether, as a matter of substance not of form, the subject matter of the claim can be derived directly and unambiguously from the disclosure of the priority document."
His lordship added at paragraph [107]:
"It follows from the authorities cited above that the subject matter of a claim is not the same thing as the scope of the monopoly it claims. Thus, the test for determining priority is not the same as that for novelty. In determining novelty one simply asks whether that which is described in an earlier document would, directly and unambiguously, fall within the monopoly granted by the patent claims. To put it another way, the issue is whether the earlier disclosure would infringe: see Smithkline Beecham PLC's Patent [2005] UKHL 59; [2006] RPC 10. That the law is different for priority can be illustrated by the example in Unilin I have quoted above. The Court of Appeal there recognised that the disclosure of A+B+C may in some circumstances not provide priority for a claim to or A or B alone or to A+B. By contrast, the disclosure of A+B+C will normally deprive a claim to A, B or A+B of novelty. The additional presence of other features in the disclosure would not matter. Applying the infringement test, A+B+C will still infringe, whether the claim is to A, B or A+B. When testing for priority one must therefore guard against simply asking whether the features called for by the claim are present in the priority document. The test for claiming priority in respect of the same invention has more substance, and is less formal, than that."
The judge compared the subject matter of the principal claim of each of the patents and considered whether they were derived directly and unambiguously from the disclosure of the South Korean grant.   In respect of European patent (UK) no 1,005,726 he concluded at paragraph [131] that the subject of matter of the claim was not directly and unambiguously derivable from the priority document.
"The priority document only discloses the use of data rate/frame length and information derived from the service type in the determination of the number of frames. The priority document does not disclose the use of parameters independent of the datastream being transmitted, such as information derived from channel conditions or aspects of the receiver, base station and user class. Yet these are clearly and as a matter of substance part of the subject matter of claim 1."
The judge made a similar comparison between European patent (UK) 1,357,675 and the Korean patent from which it claimed priority and arrived at a similar conclusion.  Samsung had admitted that, if the claims of that patent were not entitled to priority, then the patent would be invalid in the light of an intervening prior publication. As his lordship had held that those claims were not entitled to priority, then it followed that that was invalid.   There was also intervening prior art in respect of European patent (UK)  1,714,404.  In addition, Samsung had sought to amend the patent.   After comparing the patent with the Korean grant Mr Justice Floyd concluded at paragraph [103] of his judgment in the second case that the proposed amended claim was not entitled to priority.

Apple had also argued that each of Samsung's patents was obvious in the light of the prior art.   The judge reminded himself of Mr Justice Kitchin's words in  Generics (UK) Ltd and Others v H Lundbeck A/S [2007] RPC 729, [2007] RPC 32, [2007] EWHC 1040 (Pat) which Lord Hoffmann had approved in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and Others  [2008] RPC 28, [2008] UKHL 49:
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
He considered the approach of the Court of Appeal in Pozzoli SpA v BDMO SA and Another [2007] BusLR D117, [2007] EWCA Civ 588, [2007] FSR 37
"(l)    (a)   Identify the notional "person skilled in the art""
         (b)   Identify the relevant common general knowledge of that person;
(2)     Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3)     Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4)      Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
Applying that analysis to the prior art in relation to each patent he concluded that each patent was invalid for obviousness.

There was no dispute as to the test of infringement and hence no discussion of the law.   

This case will be referred to in future for its discussion on priority.   If there is a difference in drafting style between South Korea and the West the point may arise again now that South Korea has taken its place among the world's top five patent offices.  On the other hand it may be a one off.   Only time will tell.

Should anyone want to discuss this case, entitlement to priority, obviousness or patent law in general I and my four colleagues who form the intellectual property group of 4-5 Gray's Inn Square will be glad to talk to you.   You can make an appointment by calling 020 7404 5252 or you can contact me through my contact form. You can also follow me on on Facebook, Linkedin, twitter and Xing.

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