Wednesday, January 16, 2013

Dutch court declines to rule inconsistently with UK courts on Galaxy Tab design patent case

The Netherlands is one of almost a dozen countries in which Apple and Samsung are suing each other. Today the Rechtbank 's-Gravenhage (The Hague District Court) ruled on an Apple-Samsung case (which was technically brought by Samsung, but Apple was a counterclaimant in addition to a defendant) concerning Community design no. 181607-0001, a tablet computer design right (comparable to a U.S. design patent), and cleared Samsung's Galaxy Tab 7.7, Galaxy Tab 8.9 and Galaxy Tab 10.1 products of infringement.

The full text of the ruling (in Dutch) is here. The decision comes down to saying that a UK appeals court's opinion affirming a UK High Court ruling in Samsung's favor has resolved the underlying issues on an EU-wide basis. The court notes that Apple disagrees with the UK outcome and that Apple points to differences in the commercial functions performed by the allegedly-infringing parties, but the conclusion is that none of that is enough of a reason for the Dutch court to rule on the dispute in the Netherlands in a manner that would be inconsistent with the UK decision. It furthermore declined to rule on a fourth product, the Galaxy Tab 10.1v (a slightly modified version), for lack of actionable claims (the court thought the infringement contentions were not brought in a sufficiently substantiated form on a timely basis).

What's absolutely key to understand the logic of the decision is that we're not talking about a case in which a foreign court's decision would have had merely persuasive impact. This is a decision based on the concept of res judicata (this Latin term for "adjudged matter", which is commonly used in U.S. and German law, is not mentioned in the Dutch ruling): the UK decision was deemed dispositive of the issue on an EU-wide basis, including the Netherlands, which is another EU member state. It would have taken some exceptional circumstances for the Dutch court to disagree with the UK court.

At this stage, a ruling by a single court having EU-wide effect could not have issued in a utility (technical) patent case. A Community design is an intellectual property right that is administered by a European Union institution, the Office for Harmonization for the Internal Market (OHIM). While there are "European patents", those are granted by the European Patent Office, which is not an EU institution contrary to widespread misbelief, and they are not subject to EU law with the exception of patents on biotechnological inventions. Community designs are subject to an EU-level law. For the time being (though reform is underway), European patents (i.e., technical patents) must be adjudicated on a country-by-country basis.

The substance of this case -- whether the accused tablet computers infringe Apple's relevant Community design -- has already been adjudged in Germany in a preliminary injunction proceeding (including an appeal, but still on the fast preliminary-injunction track) and in the UK (also including an appeal, but the UK case was not on the fast track; instead, it was a full-blown case with a trial the parties had plenty of time to prepare for, as opposed to only an injunction hearing ordered on short notice). Apple is still pursuing a full-blown German case, but it was stayed because the Düsseldorf Regional Court, which originally ordered a preliminary injunction in Apple's favor, believes that Samsung has in the meantime dug up prior art that calls into question the validity of the asserted Community design. Apple's European assertions of this Community design could flare up again if the OHIM ultimately upholds it, but this could take a long time, especially since the decision can be appealed.

If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.

Share with other professionals via LinkedIn: