Samsung Electronics Co Ltd v (Apple Retail UK Ltd

Where a product description includes confidential material unavailable to the opposing party, compliance with a disclosure order may be assessed by reference to the information effectively available for use in the litigation. A reduced product description may satisfy the obligation to describe matters within the disclosing party’s knowledge and belief. However, where that description is incomplete, the obligation to disclose documents relating to the missing matters remains. An unless order is discretionary and should not be made where the required steps are limited and the circumstances do not justify that sanction.

Samsung applied for an unless order requiring Apple to comply with an earlier order concerning product and process descriptions and related disclosure in patent infringement proceedings. Apple had served a description referring to confidential information supplied by third-party chipset manufacturers, but that information was not yet available to Samsung because confidentiality terms had not been agreed.

The court considered compliance with paragraphs 6, 7 and 8 of the earlier order on the basis that the confidential material was excluded from the effective description. The issues were whether Apple had complied with the description and verification requirements, whether further disclosure was required, and whether non-compliance should attract an unless sanction.

1. Compliance with the product-description requirement. On the basis invited by Samsung, the confidential material was treated as excluded from the product and process description. Although the resulting description was of very limited utility, it complied with paragraph 6 because it was not shown that Apple knew more than the reduced description stated.
2. Verification. The witness statement complied with paragraph 8 insofar as it verified the reduced description and matters within the witness’s knowledge. It was to be revised and signed.
3. Further disclosure. Because the reduced description was incomplete, paragraph 7 required Apple to search for and disclose documents in its control relating to the matters omitted from the description. An N265 disclosure list was therefore required, regardless of whether the resulting disclosure proved useful.
4. Order made. Apple was ordered within seven days to serve a reduced description omitting references to the unavailable confidential material, an N265 disclosure list, and a compliant signed witness statement.
5. Unless sanction. The court refused to make the proposed unless order striking out Apple’s infringement defence. The limited nature of the required steps, the uncertainty as to fault, and the doubtful practical benefit of the sanction made an unless order inappropriate.