A counterclaim by Samsung against Apple for patent infringement 2013 on appeal: priority; obviousness; construction; and disclosure.

On appeal from the High Court of Justice Chancery Division (Patents Court)

The Hon Mr Justice Floyd Lord [2013] EWHC 468 (Pat)

Before: Lord Justice Moore-Bick, Lord Justice Rimer and Lord Justice Kitchin



Samsung Electronics Co Ltd



(1) Apple Retail UK Ltd

(2) Apple Sales International

Judgment Date 11 March 2014


In this action and counterclaim the claimant Samsung Electronics Co. Limited (Samsung) alleged infringement of three patents by the defendants Apple retail UK Limited and apple sales International Limited (Apple). The alleged infringements include certain Apple 3G-enabled devices, including the iPhone 4, iPhone 4S and the iPad3 3G. The trial of the action fell into two distinct parts, the first part concerned two of the patents and the second part with the third patent. There was virtually no overlap between the patents concerned in the first part and that involved in the second. Different counsel argued the two parts of the case and different experts were called for each side. The judgment dealt with the first two patents only, these patents were European Patents UK Nos, 1,005,726 and 1,357,675 (“726” and “675” respectively). Apple denied infringement and counter-claims for revocation of both patents. Shortly before trial Samsung abandoned their allegation of infringement of 675, but its validity remained in issue.

Mobile Apps Rule

Mobile Patent Wars

The respective cases on the patents were advanced by Mr Henry Carr QC for Samsung and by Mr Guy Burkill QC and Mr Tom Hinchiffe for Apple.

Several matters of law of note were dealt with in the judgment. These included:

 Common general knowledge – the subject matter of the patent must not be in the common general knowledge of a person skilled in the relevant industry.

Disclosure of patent – it is the technical understanding of the skilled person, rather than the patent lawyer or grammarian that is important when one is interpreting the document from which priority is claimed.

 Issues of constructionKirin-Amgen v TKT [2005] RPC 9 the determination of the extent of protection only involves asking what a person skilled in the art would have understood the patentee to have used the language of the claim to mean. See Also Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1062; [2010] FSR 10 at paragraph 5;Jacob LJ in Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 137; Pumfrey J Halliburton v Smity International [2005] EWHC 163 (Pat).

Entitlement to priority – the judgment refers to several authorities including Medimmure Limited v Novartis Pharmaceuticals Limited [2012] EWCA Civ 1234 and s5(2)(a of the Patents Act 1977 which provides that an invention is entitled to priority if it is supported by matter disclosed in the priority document. By s130(7) of the Act , s5 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”.

Obviousness – the judgment refers to Connor v Angiotech [2008] UKHL 49: [2008] RPC 28 and Lord Hoffman’s approval of the following statement by Kitchin J in Generics (UK) Ltd v H Lundbeck A/S [2007] RPC 32.

“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 possible avenues of research, the effort involved in pursuing them and the expectation of success.”

The structured approach to addressing “obviousness” in Pozzoli v BDMO [2007] EWCA Civ 588; [2007] FSR 37 was set out:

“(1)(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?”

The judgement concluded that Samsung’s patents were not entitled to the priority claimed, even if they were entitled to priority then that priority would have been invalid for obviousness. However if the priority were valid then Apple would have infringed the patents.

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