Samsung Electronics (UK) Ltd v Apple Inc. (No 2)

JurisdictionEngland & Wales
JudgeSir Robin Jacob,Lord Justice Kitchin,Lord Justice Longmore
Judgment Date18 October 2012
Neutral Citation[2012] EWCA Civ 1339
Docket NumberCase No: A3/2012/1845
CourtCourt of Appeal (Civil Division)
Date18 October 2012
Between:
Samsung Electronics (UK) Limited
Claimant/ Respondent
and
Apple Inc
Defendant/ Appellant

[2012] EWCA Civ 1339

Before:

Lord Justice Longmore

Lord Justice Kitchin

and

Sir Robin Jacob

Case No: A3/2012/1845

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION PATENTS COURT

HHJ BIRSS QC

HC 11 C03050

Royal Courts of Justice Strand, London, WC2A 2LL

Mr Henry Carr QC and Miss Anna Edwards-Stuart (instructed by Simmons & Simmons LLP) for the Claimant/Respondent

Lord Grabiner QC, Mr Michael Silverleaf QC and Richard Hacon (instructed by Freshfields Bruckhaus Deringer LLP) for the Defendant/Appellant

Hearing date: 28 September 2012

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

1

HHJ Birss QC sitting as a Deputy Judge of the Patents Court, gave two judgments in favour of Samsung (I shall use "Samsung" variously to mean Samsung Electronics (UK) Ltd., the UK subsidiary of the Korean company Samsung Electronics Co. Ltd, "SEC", or the entire Samsung Group. The context will make it clear which). The judgments are under appeal by Apple. By the first, of 9 th July 2012, [2012] EWHC 1882 (Pat), Judge Birss held that three Samsung Galaxy tablet computers, the 10.1, the 8.9 and the 7.7 did not infringe Apple's registered Community Design No. 000181607–0001. By the second, of 18 th July 2012, [2012] EWHC 2049 (Pat), he held that Apple should be compelled to publicise the fact that it had lost in manners specified in the consequential order.

2

Apple's appeal in respect of the non-infringement judgment was argued by Mr Michael Silverleaf QC and Mr Richard Hacon. Its appeal in respect of the publicity order was argued by Lord Grabiner QC and Mr Hacon. In respect of both appeals, Samsung's case was argued by Mr Henry Carr QC and Miss Anna Edwards-Stuart.

3

Because this case (and parallel cases in other countries) has generated much publicity, it will avoid confusion to say what this case is about and not about. It is not about whether Samsung copied Apple's iPad. Infringement of a registered design does not involve any question of whether there was copying: the issue is simply whether the accused design is too close to the registered design according to the tests laid down in the law. Whether or not Apple could have sued in England and Wales for copying is utterly irrelevant to this case. If they could, they did not. Likewise there is no issue about infringement of any patent for an invention.

4

So this case is all about, and only about, Apple's registered design and the Samsung products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides. There may be other differences – even though I own one, I have not made a detailed comparison. Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.

5

Other disputes between the parties in other countries have concerned other intellectual property rights. We are not concerned with any of them. So far as this registered design and the three Samsung tablets is concerned I simply (I will have to say more about the August German decision) record the position:

The Netherlands

On June 27 th 2011 Apple applied for a preliminary injunction in respect of all three Samsung tablets. It was refused at first instance and on appeal. Apple has an outstanding petition to the Supreme Court on a point of law. On 8 th September 2011 Samsung issued a claim for a declaration of non-infringement which is on-going.

Spain

Samsung issued a claim for a declaration of non-infringement on 8 th September 2011. The claim is ongoing. Apple are challenging jurisdiction. How far that can get is perhaps questionable given that before it did so it entered a defence on the merits. It may well be that the proceedings have now been overtaken by events in that there is a European-wide declaration of non-infringement granted by HHJ Birss and upheld by this judgment. No preliminary injunction has been sought in Spain and none is in force.

Germany

On 4 th August 2011 Apple applied ex parte for a preliminary injunction in relation to the 10.1. It was granted without Samsung having an opportunity of being heard. Moreover it was granted on a pan-European basis. The defendants were SEC and its local German subsidiary. Subsequently the injunction was restricted to Germany as regards SEC.

On 24 th October 2011 the Landgericht Düsseldorf granted a pan-European injunction (excluding Germany) which included the 7.7 but not the 10.1 against SEC's German subsidiary but refused such an injunction as against SEC in respect of the 7.7. Apple appealed the decision to refuse pan-European relief against SEC.

The registered design injunctions in respect of the 10.1 and 8.9 were set aside on appeal in January 2012.

Apple issued a main action in respect of all the Samsung tablets on 25 th November 2011. I interpolate that in Germany proceedings for an interim injunction are regarded as separate, whereas here an interim injunction is granted within a main action or, in very urgent cases, a main action which the plaintiff undertakes to commence immediately. The part of the main action concerning alleged infringement of the Apple registered design was withdrawn on 24 th February 2012.

Notwithstanding the withdrawal of the main action, and then HHJ Birss's final decision on the merits on 9 th July 2012, Apple persisted in its appeal from the refusal on 24 th October 2011 to grant a pan-European injunction against SEC in respect of the 7.7. On 24 th July 2012 the German Court of Appeal, the Oberlandesgericht, allowed the appeal and granted a pan-European interim injunction in respect of the 7.7 against SEC, and its German subsidiary.

In the course of argument before us, as I shall recount later, Apple undertook to apply forthwith to the German court for that injunction to be completely withdrawn so far as it related to infringement of the registered design.

The USA

In the Californian proceedings where a number of patents (both design and invention software patents) were in issue, we were told the jury held that Samsung's products did not infringe the design patent corresponding to the registered design we are considering ("design patent" is the US terminology for what in Europe is called a "registered design"). The laws as to infringement differ somewhat.

6

The upshot of all this is that there is now no injunction anywhere based on the registered design or its equivalent.

The non-infringement appeal

7

The Community Design involved was registered on 24 th May 2004 – an aeon ago in terms of computers. It consists of seven views. The product in which the design is intended for incorporation is a "handheld computer". Annex A to this judgment show the views.

8

The Samsung 10.1, 8.9 and 7.7 are shown in Annex B. There is also a helpful same scale drawing of the side view of the registered design and the Samsung products which I reproduce below.

9

The legal test for infringement – the scope of protection — is set out in Art. 10 of the Community Design Regulation EC 6/2002:

Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

10

The notional character whose attributes the court has to adopt is the "informed user." The Judge dealt with these attributes:

[33] The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo v Grupo Promer ( C-281/10P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010.

[34] Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:

He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller ( PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).

However, unlike the average consumer of trade mark law, he is particularly observant ( PepsiCo paragraph 53);

He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned ( PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);

He is interested in the products concerned and shows a relatively high degree of attention when he uses them ( PepsiCo paragraph 59);

He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so ( PepsiCo paragraph 55).

[35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist ( PepsiCo paragraph 59).

11

Subject to two minor criticisms to which I will come, Mr Silverleaf on behalf of Apple accepted this summary of the law. Note that it includes reference to the Grupo Promer/Pepsico case, both before the General Court of the CJEU and before the CJEU itself (the case name is different but it is the same case). And note further that the CJEU expressly approved what the General Court had said about the informed...

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