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IP Cases & Commentary – Details

30 May 2012

UK Court of Appeal decides in favour of Samsung over a preliminary procedural issue in the Apple v Samsung tablet computer 'wars'

Paul Price

UK Court of Appeal decides in favour of Samsung over a preliminary procedural issue in the Apple v Samsung tablet computer 'wars'

In the UK component of the attempt by Apple Inc. to enforce a Registered Community Design (RCD) against a competing tablet computer produced by Samsung, a preliminary procedural point has been appealed to the UK Court of Appeal and has been decided in favour of Samsung Electronics (UK) Ltd. in a judgement issued on 30th May 2012.


Apple’s RCD relates to their design of the iPad tablet, and is RCD No. 181607-0001 (see representative view below).
Apple registered community design (RCD) 181607-0001 iPad tablet Apple Inc Samsung UK Court of Appeal finds in favour of Samsung Electronics
This RCD is the subject of invalidity proceedings at the EU Designs Registry (OHIM in Spain).  Separately, Samsung filed a claim in the UK courts for a declaration of non-infringement on the ground that the RCD was not infringed by its Galaxy tablet.

The UK courts therefore needed to decide how the OHIM invalidity proceedings interacted with the UK proceedings.  Specifically, should Samsung’s claim for a declaration of non-infringement in the UK proceedings be stayed (suspended) until the OHIM invalidity proceedings have been concluded?  Broadly speaking, Samsung would not wish its claim in the UK proceedings to be stayed, but Apple would wish it to be.
In April of this year, in the UK court of first instance (the UK Patents Court), the judge decided that Samsung’s claim in the UK proceedings should not be stayed, and he set an expedited trial date for June 2012.

Apple appealed on the procedural point in an attempt to have the decision reversed and Samsung’s claim in the UK proceedings stayed.  Firstly Apple had a bit a battle to get the UK Court of Appeal actually to hear their appeal.  With the Court of Appeal eventually agreeing to hear the appeal, the new judgement shows that the three appeal court judges have unanimously decided that Apple’s appeal should be dismissed and the decision of the lower court not to stay Samsung’s claim for a declaration of non-infringement should stand.  The decision of the appeal court judges involved a detailed consideration of EU law in the form of Article 91 of Community Design Regulation 6/2002 governing the precedence to be taken between different proceedings relating to the same RCD.

As a counterclaim in the UK proceedings, Apple had alleged that Samsung was infringing the RCD with its Galaxy tablet.  The Court of Appeal pronounced that normally such a counterclaim should be stayed under Article 91 (because of the pre-existing OHIM invalidity proceedings) absent any “special grounds” to the contrary.  Whether to stay Apple’s counterclaim (as distinct from whether to stay Samsung’s claim) had not been decided in the court of first instance, and thus the Court of Appeal ordered that the question as to whether or not Apple’s counterclaim should be stayed because of “special grounds” should be referred back down to the Patents Court and decided, in June, as part of the expedited trial of Samsung’s claim for a declaration of non-infringement.


Thus, it looks as if, in June, the UK courts will finally be able to turn away from preliminary procedural issues and start to address the substantive matters of infringement (and possibly also validity).

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