Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729 (30 May 2012)

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 729 (30 May 2012)

Article 91(1) does not require a stay of a claim for a declaration of non-infringement when a counterclaim for infringement is brought and validity is in issue before OHIM; only the counterclaim is subject to a mandatory stay absent special grounds. The claim for non-infringement may proceed to trial.

Citation
[2012] EWCA Civ 729
Parties
Claimant/respondent: Samsung Electronics (UK) Ltd; Defendant/appellant: Apple Inc
Jurisdiction
England and Wales
Judgment Date
30 May 2012
Procedural Posture
Appeal From High Court (chancery Division, Patents Court) / Court of Appeal Judgment on Interlocutory Application (stay of Proceedings)
Outcome
Appeal dismissed as regards the claim; issue of stay of counterclaim remitted to Patents Court for determination of 'special grounds'.
Legal Topics
Community Registered Design, Declaration of Non Infringement, Stay of Proceedings, Article 91(1) Council Regulation (ec) No 6/2002, Jurisdiction of Community Design Courts
Intellectual Property Civil Procedure European Union Law Community Registered Design Declaration of Non Infringement Stay of Proceedings Article 91(1) Council Regulation (ec) No 6/2002 Jurisdiction of Community Design Courts

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Parties

Samsung Electronics (UK) Ltd

Claimant/respondent

Apple Inc

Defendant/appellant

Procedural Posture

Appeal From High Court (chancery Division, Patents Court) / Court of Appeal Judgment on Interlocutory Application (stay of Proceedings)

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 must be stayed when a counterclaim for infringement is brought and validity is challenged in OHIM

Ratio Decidendi

Article 91(1) does not require a stay of a claim for a declaration of non-infringement when a counterclaim for infringement is brought and validity is in issue before OHIM; only the counterclaim is subject to a mandatory stay absent special grounds. The claim for non-infringement may proceed to trial.

Court Disposition

Appeal dismissed as regards the claim; 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 may proceed to trial.
  • The issue of whether the counterclaim for infringement should be stayed under Article 91(1) is remitted to the Patents Court for determination.