[New search] [Printable RTF version] [Help]

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION PATENTS COURT

HHJ BIRSS QC

[2012] EWHC 1882 (Pat)

Michael Beloff QC and Richard Hacon (instructed by Freshfields Bruckhaus Deringer) for Apple Inc Henry Carr QC and Miss Anna Edwards-Stuart (instructed by Simmons & Simmons) for Samsung Electronics (UK) Limited Hearing date: 1 November 2012 ____________________

Sir Robin Jacob (giving the first judgment at the invitation of Longmore LJ):

The Order which was made on 18th October

Within seven days of the date of this Order the Appellant shall at its own expense, provide on the homepage of its UK website a link entitled "Samsung/Apple UK judgment" to the notice specified in Annex 1 to this Order together with hyperlinks to [the judgments of HHJ Birss and this Court], said link, notice and hyperlinks to remain for a period of one month.

The required Notice (Annex 1) read:

On 9th July 2012 the High Court of Justice of England and Wales ruled that [Samsung's] Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's Community registered design No. 0000181607-0001. A copy of the full judgment of the High Court is available from [link]

That Judgment has effect throughout the European Union and was upheld by the Court of Appeal of England and Wales on 18th October 2012. A copy of the Court of Appeal's judgment is available from [link]. There is no injunction in respect of the Community Registered Design in force anywhere in Europe.

Within seven days of the date of this Order the Appellant shall, at it own expense, submit for publication the notice specified in Annex 1 on a page earlier than page 6 to be published in the earliest available issue of the Financial Times, the Daily Mail, The Guardian, Mobile Magazine and T3 Magazine.

Nothing in this Order shall prevent the Appellant from publishing any comment or information regarding the dispute between the parties in respect of the Samsung Galaxy Tablet computers in issue in this appeal.

What Apple did

(a) Publicity in newspapers and magazines

(b) The Website

Samsung / Apple UK judgment

On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronic (UK) Limited's Galaxy Tablet Computer, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design No. 0000181607-0001. A copy of the full judgment of the High court is available on the following link [2012] EWCA Civ 1339.

In the ruling, the judge made several important points comparing the designs of the Apple and Samsung products:

"The extreme simplicity of the Apple design is striking. Overall it has undecorated flat surfaces with a plate of glass on the front all the way out to a very thin rim and a blank back. There is a crisp edge around the rim and a combination of curves, both at the corners and the sides. The design looks like an object the informed user would want to pick up and hold. It is an understated, smooth and simple product. It is a cool design."

"The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products are very thin, almost insubstantial members of that family with unusual details on the back. They do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool."

That Judgment has effect throughout the European Union and was upheld by the Court of Appeal on 18 October 2012. A copy of the Court of Appeal's judgment is available on the following link [2012] EWCA Civ 1339. There is no injunction in respect of the registered design in force anywhere in Europe.

However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design. A U.S. jury also found Samsung guilty of infringing on Apple's design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc. So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung wilfully copied Apple's far more popular iPad.

Samsung's complaints

APPLE: SCREW YOU, BRITS, everyone else says Samsung copied us

Apple has complied with a UK court order by admitting on its website that Samsung's Galaxy Tab did not rip off the patented iPad design. High Court Judge Birss had instructed Apple to publish a statement online and in print that the South Korean electronics giant had not infringed Cupertino's patent.

The statement can be found via a small link labelled "Samsung/Apple UK judgement" on Apple's UK homepage and is a mealy mouthed six-paragraph account of the litigation over Apple's registered design.

My conclusions as regards the Contested Notice

In the ruling, the judge made several important points comparing the designs of the Apple and Samsung products.

But the Judge was not comparing "the Apple and Samsung products." There is not and has never been any Apple product in accordance with the registered design. Apple's statement would clearly be taken by ordinary readers and journalists to be a reference to a real Apple product, the iPad. By this statement Apple was fostering the false notion that the case was about the iPad. And that the Samsung product was "not as cool" as the iPad.

However, in a case tried in Germany regarding the same patent, the court found that Samsung engaged in unfair competition by copying the iPad design.

That is false in the following ways:

(a) "Regarding the same patent." No patent of any kind has been involved in Germany or here, still less "the same patent."

(b) As regards the Community Registered Design, the German Courts held that neither the Galaxy 10.1 nor the 8.9 infringed it. As to the 7.7 there was for a short while a German provisional order holding that it infringed. Whether there was a jurisdiction to make that order is very doubtful for the reasons given in my earlier judgment but in any event the order had been (or should have been) discharged by the time the Contested Notice was published.

(c) There is a finding and injunction, limited to Germany alone, that the 10.1 and 8.9 infringe German unfair competition law. But the statement is likely to be read as of more general application.

A U.S. jury also found Samsung guilty of infringing on Apple's design and utility patents, awarding over one billion U.S. dollars in damages to Apple Inc.

That is misleading by omission. For the US jury specifically rejected Apple's claim that the US design patent corresponding to the Community Design in issue here was infringed. The average reader would think that the UK decision was at odds with that in the US. Far from that being so, it was in accordance with it.

So while the U.K. court did not find Samsung guilty of infringement, other courts have recognized that in the course of creating its Galaxy tablet, Samsung wilfully copied Apple's far more popular iPad.

This is calculated to produce huge confusion. The false innuendo is that the UK court came to a different conclusion about copying, which is not true for the UK court did not form any view about copying. There is a further false innuendo that the UK court's decision is at odds with decisions in other countries whereas that is simply not true.

Jurisdiction to make a Further Order

Under its inherent jurisdiction, the court has undoubted power to compel observance of its process and obedience of and compliance with its orders. These powers are inherent in the sense that they are necessary attributes to render the judicial function effective in the administration of justice, The Inherent Jurisdiction Current Legal Problems, 1970 p.44

The Form of the Further Order

Lord Justice Kitchin:

Lord Justice Longmore: