Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 2126

Declaration of Susan Estrich in Support of 2013 MOTION for Judgment as a Matter of Law, New Trial and/or Remittitur Pursuant to Federal Rules of Civil Procedure 50 and 59, 2054 Brief, 2053 Opposition/Response to Motion, filed bySamsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # 1 Exhibit 1 to the Estrich Declaration, # 2 Exhibit 2 to the Estrich Declaration, # 3 Exhibit 3 to the Estrich Declaration, # 4 Exhibit 4 to the Estrich Declaration, # 5 Exhibit 5 to the Estrich Declaration, # 6 Exhibit 6 to the Estrich Declaration, # 7 Exhibit 7 to the Estrich Declaration, # 8 Exhibit 8 to the Estrich Declaration, # 9 Exhibit 9 to the Estrich Declaration, # 10 Exhibit 10 to the Estrich Declaration, # 11 Exhibit 11 to the Estrich Declaration, # 12 Exhibit 12 to the Estrich Declaration, # 13 Exhibit 13 to the Estrich Declaration, # 14 Exhibit 14 to the Estrich Declaration, # 15 Exhibit 15 to the Estrich Declaration, # 16 Exhibit 16 to the Estrich Declaration, # 17 Exhibit 17 to the Estrich Declaration, # 18 Exhibit 18 to the Estrich Declaration, # 19 Exhibit 19 to the Estrich Declaration, # 20 Exhibit 20 to the Estrich Declaration, # 21 Exhibit 21 to the Estrich Declaration, # 22 Exhibit 22 to the Estrich Declaration, # 23 Exhibit 23 to the Estrich Declaration, # 24 Exhibit 24 to the Estrich Declaration, # 25 Exhibit 25 to the Estrich Declaration, # 26 Exhibit 26 to the Estrich Declaration, # 27 Exhibit 27 to the Estrich Declaration, # 28 Exhibit 28 to the Estrich Declaration, # 29 Exhibit 29 to the Estrich Declaration, # 30 Exhibit 30 to the Estrich Declaration, # 31 Exhibit 31 to the Estrich Declaration)(Related document(s) 2013 , 2054 , 2053 ) (Maroulis, Victoria) (Filed on 11/9/2012)

Estrich Declaration
Exhibit 12

Neutral Citation Number: [2012] EWCA Civ 1430
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
[2012] EWHC 1882 (Pat)
Royal Courts of Justice
Strand, London, WC2A 2LL
Date: 09/11/2012
Before:
LORD JUSTICE LONGMORE
LORD JUSTICE KITCHIN
and
SIR ROBIN JACOB
--------------------Between:
Samsung Electronics (UK) Limited
- and Apple Inc

Claimant/
Respondent
Defendant/
Appellant

----------------------------------------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
---------------------

Judgment

Judgment Approved by the court for handing down.

Samsung v Apple

Sir Robin Jacob (giving the first judgment at the invitation of Longmore LJ):
1.

On 18th October 2012 this court dismissed Apple’s appeal from HHJ Birss’s decision
that none of the Samsung tablet computers infringed Apple’s Community registered
design No. 000181607-001, [2012] EWCA Civ 1339. For the reasons we gave
(essentially because Apple had created much uncertainty in the market place) we
thought it necessary to make a publicity order requiring Apple to disperse the fog of
confusion it had created.

2.

Samsung say that Apple has failed to comply with the publicity order we made and
that accordingly we ought to make a further, clearer and more specific order. We
heard the parties on 1st November and decided that such an order was indeed
necessary. The order was made at the end of the hearing. These are my reasons for it.

The Order which was made on 18th October
3.

The terms of the first order required Apple to give publicity to the decisions in two
ways. First was via its UK homepage and the second was via advertisements in
newspapers and magazines.

4.

The order about the homepage was (so far as matters) as follows:
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.

5.

The order about newspaper advertisements read:
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.

Judgment Approved by the court for handing down.

6.

Samsung v Apple

The order was not intended to and did not prevent Apple’s freedom of expression. It
specifically added:
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

7.

Although it is a lesser matter than the dispute about what Apple did on its website, I
have to record that Apple’s compliance with the newspaper advertisement order was
lackadaisical at best. The order required publication “in the earliest available issue”
of the specified newspapers and magazines. I would have thought that self-evidently
meant what it said – get the advertisements into each publication as soon as possible.

8.

What Apple chose to do as regards the newspapers and magazines was less than that.
Its Vice President Worldwide Marketing Communications said he understood the
approach to be adopted was “to co-ordinate adverts across those publications in order
to ensure the widest readership possible is exposed to the advert on the same day.”
That apparently meant to Apple so far as the newspapers were concerned the same
day, but not the magazines which had longer lead times. Apple accordingly arranged
for November 16th for all the newspapers. I note in passing that it is not said that
November 16th was the earliest possible date even for just all the newspapers. I would
be surprised if it were, given that our order was made on 18th October.

9.

So there was self-evident non-compliance with the newspaper/magazine aspect of the
publicity order. Apple did not contend otherwise. Its breach of that part of the order is
clearly an additional factor justifying the indemnity costs order we made against
Apple.
(b)

The Website

10.

This is much more serious. Samsung’s major complaint, the matter in respect of
which it seeks a further and better order, was in respect of Apple’s purported
compliance with the website aspect of the order. On its homepage it provided a link
(albeit in small type after “Terms of use”, “Privacy Policy” and “Use of Cookies”)
reading “Apple/Samsung Judgement”. So far that was in accordance with the order.

11.

But if you clicked the link you came to the following (the “Contested Notice”):
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
www.bailii.org/ew/cases/EWHC/Patents/2012/1882.html.

Judgment Approved by the court for handing down.

Samsung v Apple

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 www.bailii.org/ew/cases/EWCA/Civ/2012/1339.html.
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
12.

The Contested Notice is a mixture of the notice we ordered along with material added
by Apple. There are two kinds of addition.

13.

The first is how Apple published the notice we did order (Annex 1 quoted above).
Instead of simply publishing the text as ordered, Apple broke it up, interspersing it
with text of its own devising. The first and fifth paragraphs constitute the notice as
ordered. The middle three paragraphs were interspersed by Apple.

14.

The second kind of added matter was via the concluding paragraph.

15.

Samsung objects to each kind of addition. As regards the first it says it was not open
to Apple to break up the text ordered by the court by adding in the middle of it matter

Judgment Approved by the court for handing down.

Samsung v Apple

that was not ordered. Moreover, even if Apple was at liberty to intersperse matter,
that liberty did not extend to adding misleading matter and the interspersed matter is
indeed misleading. As regards the concluding paragraph, Samsung says that Apple
were not at liberty to add misleading material to what was ordered so as undermine
its intended effect, namely “removing the fog”.
16.

Samsung has supported its application by citation from a large number of press and
web reports showing that the effect of the Contested Notice has indeed been to
undermine what was intended. Our attention was specifically drawn, for instance, to
an online magazine called “The Register”:
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.

17.

There is much more material of the same sort. Nearly all of it reveals a fundamental
misconception, namely that the UK case was about whether Samsung had copied the
iPad. I cannot emphasise enough that it was not. As I said in my earlier judgment
“this case must be decided as if the iPad never existed”. “It is not about whether
Samsung copied the iPad” and “the registered design is not the same as the iPad.”

My conclusions as regards the Contested Notice
18.

Mr Michael Beloff QC for Apple submitted that Apple could not be held responsible
for inaccurate reporting by journalists. But it can, if it contributed to that inaccuracy
by inaccurate statements and false innuendo in the Contested Notice as I consider it
did.

19.

For I accept all of Samsung’s contentions. Firstly I do not consider it was open to
Apple to add matter in the middle of the notice we ordered to be published. A notice
with such matter is simply not the notice ordered.

20.

Even if that were not so, it cannot be legitimate to break up the ordered notice with
false material. And the matter added was indeed false. Before introducing the quotes
from HHJ Birss it begins:
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

Judgment Approved by the court for handing down.

Samsung v Apple

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.
21.

I turn to the last paragraph. I do not think the order as made precluded any addition to
the required notice if that addition had been true and did not undermine the effect of
the required notice. But I do consider that adding false and misleading material was
illegitimate. For by adding such material the context of the required notice is altered
so that it will be understood differently.

22.

Here what Apple added was false and misleading. I turn to analyse it.
sentence reads:

The first

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.
23.

The second sentence reads:
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.

24.

The third sentence reads:
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.

Judgment Approved by the court for handing down.

Samsung v Apple

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.
25.

The reality is that wherever Apple has sued on this registered design or its
counterpart, it has ultimately failed. It may or may not have other intellectual
property rights which are infringed. Indeed the same may be true the other way
round for in some countries Samsung are suing Apple. But none of that has got
anything to do with the registered design asserted by Apple in Europe. Apple’s
additions to the ordered notice clearly muddied the water and the message obviously
intended to be conveyed by it.

Jurisdiction to make a Further Order
26.

Mr Beloff suggested that we had no jurisdiction to make a further order. But he
accepted that the court has power to vary its orders to make their meaning and
intention clear. The meaning and intention of the first order was plain: to require
Apple to publicise properly that there was no infringement of the registered design.
The proposed order now sought does no more than that.

27.

So it is unnecessary to explore further the power of the court to grant an injunction
where an earlier court order has been breached or disobeyed. One would expect such
a power to exist irrespective of formal proceedings for contempt. As my late father
observed:
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
28.

The form of this was settled at the hearing. So I need do no more than explain the
reasons for the matters over which there was some dispute.

29.

Given our finding that the Contested Notice did not comply with our order and did not
achieve what was intended there was no dispute but that we should order it be
removed. There was dispute as to what should go up in its place. Apple contended
that no more was needed on its home page. We thought otherwise. The Contested
Notice had had over a million hits. It was necessary that the fact it was misleading be
brought home. Only a notice on Apple’s homepage could be sure to do that. We
were of course conscious that a notice on the homepage was highly undesirable from
Apple’s point of view, but its own actions had made it necessary. We also thought
that a rather longer period was needed than the one month period of the original order.
We ordered that the notice and link should stay up until 15th December. The notice on
the homepage had to make it clear that the Contested Notice was inaccurate and did
not comply with the first order.

Judgment Approved by the court for handing down.

Samsung v Apple

30.

We also thought it appropriate that the correct statement – the notice required by the
original notice – should appear without modification or addition. Apple’s previous
modifications and additions made it clear that it should not be allowed to do the same
or something similar again. Of course that did not preclude it from making statements
elsewhere – even untrue ones which might amount to a libel or malicious falsehood.
That would amount to a prior restraint which would obviously be inappropriate. All
we required is that the notice we ordered should appear unvarnished or unembellished
in any way.

31.

As to the costs (lawyers’ fees) to be awarded against Apple, we concluded that they
should be on an indemnity basis. Such a basis (which is higher than the normal,
“standard” basis) can be awarded as a mark of the court’s disapproval of a party’s
conduct, particularly in relation to its respect for an order of the court. Apple’s
conduct warranted such an order.

32.

Finally I should mention the time for compliance. Mr Beloff, on instructions
(presumably given with the authority of Apple) told us that “for technical reasons”
Apple needed fourteen days to comply. I found that very disturbing: that it was
beyond the technical abilities of Apple to make the minor changes required to own
website in less time beggared belief. In end we gave it 48 hours which in itself I
consider generous. We said the time could be extended by an application supported
by an affidavit from a senior executive explaining the reasons why more was needed.
In the event no such application was made. I hope that the lack of integrity involved
in this incident is entirely atypical of Apple.

Lord Justice Kitchin:
33.

I agree.

Lord Justice Longmore:
34.

I also agree.