Samsung Electronics (UK) Ltd v Apple Inc

Samsung Electronics (UK) Ltd v Apple Inc

Article 91(1) does not require a stay of a claim for a declaration of non-infringement, even where there is a counterclaim for infringement and validity is in issue before OHIM. Only the counterclaim for infringement is subject to a stay, absent special grounds. The claim for non-infringement should proceed to trial.

Parties
Claimant/respondent: Samsung Electronics (UK) Ltd; Defendant/appellant: Apple Inc
Jurisdiction
England and Wales
Judgment Date
30 May 2012
Procedural Posture
Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed as regards the claim for a declaration of non-infringement; issue of stay of counterclaim remitted to Patents Court for determination of special grounds.
Legal Topics
Community Design Rights, Jurisdiction, Stays of Proceedings, Infringement, Non Infringement Declarations
Intellectual Property Civil Procedure Community Design Rights Jurisdiction Stays of Proceedings Infringement Non Infringement Declarations

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Parties

Samsung Electronics (UK) Ltd

Claimant/respondent

Apple Inc

Defendant/appellant

Procedural Posture

Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether Article 91(1) of Council Regulation (EC) No 6/2002 requires a stay of both claim and counterclaim when validity is in issue before OHIM
  2. 2 Whether a claim for a declaration of non-infringement should be stayed pending OHIM invalidity proceedings when there is a counterclaim for infringement

Ratio Decidendi

Article 91(1) does not require a stay of a claim for a declaration of non-infringement, even where there is a counterclaim for infringement and validity is in issue before OHIM. Only the counterclaim for infringement is subject to a stay, absent special grounds. The claim for non-infringement should proceed to trial.

Court Disposition

Appeal dismissed as regards the claim for a declaration of non-infringement; issue of stay of counterclaim remitted to Patents Court for determination of special grounds.

Orders

  • The claim for a declaration of non-infringement is not stayed and should proceed to trial.
  • The issue of whether the counterclaim for infringement should be stayed is remitted to the Patents Court to determine if special grounds exist.