Samsung Electronics (UK) Ltd v Apple Inc

A stay pending appeal is exceptional. The applicant must show solid grounds, and the court must balance the risk of injustice on both sides. Whether refusal would render the appeal wholly or largely nugatory is highly relevant. Where new evidence shows that immediate compliance would cause unquantifiable and difficult-to-repair reputational harm, while delay causes comparatively limited additional harm because the result is already widely publicised, the balance may favour a stay. An appellate court may reconsider the matter on the evidence before it, particularly where material evidence was unavailable below.

Samsung obtained declarations that its Galaxy tablets did not infringe Apple’s registered design following the trial before HHJ Birss QC, reported at [2012] EWHC 1882 (Pat). On 18 July 2012, the judge made a further order requiring Apple to publish a notice of the result on its website and in specified publications. He refused a stay pending appeal, in an order reported at [2012] EWHC 2048 (Pat). Apple appealed against that refusal. The Court of Appeal considered new evidence concerning extensive publicity, reputational harm and the effect of immediate compliance. The central issue was whether the order should be stayed pending the expedited substantive appeal.

1. Stay principles. Kitchin LJ held that a successful litigant should not generally be deprived of the fruits of victory. A stay is therefore exceptional. The applicant must put forward solid grounds, after which the court must balance the risk of injustice if the stay is granted against the risk if it is refused. A highly relevant consideration is whether refusal would render the appeal wholly or largely nugatory.
2. Application to the publication order. Unless stayed, the requirement to publish notices in five publications would be rendered valueless by the time of the appeal. The six-month website requirement would likewise make the appeal worthless for the period already elapsed before judgment. New evidence showed that the order had been widely reported as a humiliation or public shaming of Apple. The court accepted the risk of unquantifiable and difficult-to-repair damage to Apple’s reputation, goodwill, brand and website image.
3. The risk to Samsung from continued assertions of infringement during the short period before the appeal was substantially reduced by the extensive publicity already given to Samsung’s success and by Samsung’s ability to publicise the trial judgment itself. Weighing the competing risks, the risk of injustice from refusing a stay was substantially greater. Public humiliation had not formed part of the first-instance judge’s reasoning, and Apple should not be subjected to that consequence before it had an opportunity to challenge the order.
4. Additional reasoning. Jacob LJ agreed. He stated that the Court was deciding the matter de novo because it had substantial material unavailable to the judge. He also noted that the jurisdictional basis of the order, including the relationship between Senior Courts Act 1981 section 37 and Article 15 of Council Directive 2004/48, remained an important issue for the substantive appeal. The Directive’s stated purposes of deterrence and public awareness did not obviously apply where extensive publicity had already occurred.
5. The appeal was allowed and the stay was granted pending the substantive appeal.

1. Court of Appeal (Civil Division) allowed Apple’s appeal against refusal of a stay and granted a stay of the publication order pending the substantive appeal.
2. High Court of Justice, Chancery Division, Patents Court held that the Galaxy tablets did not infringe the registered design in [2012] EWHC 1882 (Pat). On 18 July 2012, it ordered publication of a notice and refused a stay pending appeal in [2012] EWHC 2048 (Pat).