Infringement – Validity of patent – Obviousness – Prior art

Samsung Electronics Co Ltd v Apple Retail UK Ltd and another company: Chancery Division, Patents Court: 7 March 2013

In the action and counterclaim, the claimant (Samsung) alleged infringement of three patents by the defendants (together Apple). The alleged infringements included certain Apple 3G (HSUPA)-enabled devices, including the iPhone 4, iPhone 4S and iPad2 3G. The instant proceedings concerned the third patent (404), which related to an apparatus and method for minimising an increase in peak to average power ratio (PAPR) of a transmission signal during data transmission through an enhanced uplink dedicated transport channel (the enhanced data channel).

The invention was broadly concerned with the structuring of individual data streams which were transmitted simultaneously on the same frequency range from a mobile device to a base station. Apple denied infringement and counterclaimed for revocation of the patent.

It fell to be determined whether patent 404 was invalid and if not, whether it had been infringed by Apple's HSUPA enabled devices. Consideration was given to the judgment of the court in Samsung Electronics Co. Ltd v Apple Retail UK Ltd and another company [2013] All ER (D) 60 (Mar) (Samsung Electronics). Samsung accepted that the patent would be invalid for lack of novelty if it was not entitled to priority because of intervening prior art.

The court ruled: applying the approach which the law took to entitlement to priority as set out in Samsung Electronics, the 404 patent as proposed to be amended was invalid both because it had lost priority and was accordingly rendered invalid by intervening prior art and because it was, in any event, obvious. If it had survived those attacks, it would have been infringed by Apple's accused, HSUPA enabled devices (see [76], [103], [105], [145], [147] of the judgment). The 404 patent was invalid (see [147] of the judgment)

Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] 4 All ER 621 considered; Samsung Electronics Co. Ltd v Apple Retail UK Ltd and another company [2013] All ER (D) 60 (Mar) applied.

Mark Vanhegan QC and Brian Nicholson (instructed by Bristows) for Samsung; Simon Thorley QC, Guy Burkill QC and Jeremy Heald (instructed by Freshfields Bruckhaus Deringer LLP) for Apple.