IP, Technology & Data

I wrote last month about the smartphone “patents war” currently underway between what I described as a “tangled web of enmity and informal alliances amongst software developers, mobile handset manufacturers and telecoms operators”.

Although I felt that summarising the battleground as “Apple vs manufacturers which use Google’s Android operating system (particularly Samsung)” was overly simplistic, there is no denying that Apple vs Samsung is one of the key contests, and the companies aren’t just arguing about smart phones and patents.

There is also a complicated ongoing dispute regarding the alleged infringement of Apple’s registered Community Design No 181,607-0001 (for its  iPad) by Samsung’s Galaxy tablet. (In case you haven’t seen the devices side by side, a good picture can be seen here.)

In a UK High Court judgement yesterday Samsung won the latest round of the iPad/Galaxy dispute, but at a potential cost, as Judge Birss QC described the iPad as being as being more “cool” than the Galaxy. (Samsung can either despair that even an upper-class, middle-aged man thinks that Galaxies are less cool than iPads, or alternatively hope that iPads suffer the “Clarkson Effect”!)

A large body of international litigation

There have been preliminary (non binding) iPad/Galaxy proceedings in both the German and Dutch courts.

In Germany the first instance court in Düsseldorf held that the Galaxy tablets infringed the iPad Registered Design, but on appeal decided there was no infringement (although the German court did grant an injunction on the Samsung tablets on a different basis under German unfair competition law). In the Netherlands Apple lost at first instance and on appeal.

Samsung then applied to the Office for Harmonisation in the Internal Market (“OHIM”) for a declaration of invalidity as regards Apple’s Registered Design, and brought proceedings in the UK for a declaration that the Galaxy does not infringe Apple’s Registered Design (“if (which it is not admitted) the Registered Design is valid”).

Apple served a defence and counterclaim that the Galaxy infringed their Registered Design, developing the UK proceedings into the first substantive hearing in the European Community of the issue of infringement.

In the UK High Court Judge Birss acknowledged the German and Dutch proceedings, stating that “Community wide rights and harmony between courts of different member states on issues like this is very desirable”, but declined to place reliance on them.

Judge Birss also had to satisfy himself that the UK proceedings did not stray into the subject matter of the OHIM proceedings (the ultimate validity of Apple’s Registered Design), and decide whether to allow both Samsung’s claim and Apple’s counterclaim, stating at paragraph 23:

Is a declaration enough to satisfy the commercial urgency of the claim or should the infringement claim proceed too? Apple submitted that if the court decides that the Galaxy tablets… infringe then it would be unfair for Apple to have to wait for relief pending the outcome at OHIM. I agree. Thus while there is no risk of injustice if I allow the infringement claim to proceed, there is a genuine risk of injustice if I stay the counterclaim and allow the declaration issue to be heard without it.

The judgement and the “correct approach overall” in determining Registered Design infringement

Judge Birss explained that due to the commercial significance of the debate, the 46 page judgment was much longer than should normally be necessary in a case about infringement of a Community Design Right.

Apple alleged that seven principal features of its Registered Design had been infringed:

  1. A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;
  2. A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim;
  3. A very thin rim of constant width, surrounding and flush with the front transparent surface;
  4. A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface;
  5. A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge
  6. A thin profile, the impression of which is emphasised by (5.) above;
  7. Overall, a design of extreme simplicity without features which specify orientation

Lord Birss recognised that these seven features could not each be analysed in isolation, stating at paragraph 32:

I must bear in mind that it is the overall impression which counts and not a verbalised list of features.

At paragraphs 53 and 54 His Lordship then set out what he believed to be “the correct approach overall” in determining Design Right infringement (note that the “design corpus” can broadly be understood as the design features normally included in the designs existing in the sector concerned):

The exercise must start with identifying the informed user and the existing design corpus. The overall impression is something produced on the informed user.

Although the outcome depends on overall impression, as a practical matter the design must be broken down into features. Each feature needs to be considered in order to give it appropriate significance or weight. Each feature needs to be considered in three respects. A feature dictated solely by function is to be disregarded. As long as it is not disregarded, each feature must be considered against the design corpus and it must be considered from the point of view of design freedom.

And at paragraph 64:

I have to decide whether the Samsung tablets produce a different overall impression on the informed user from that produced by the Apple design. In order to assess that, part of the task is to go through the list of features and similarities relied on “to consider to what extent they had technical significance and thus affected design freedom” (per Jacob LJ in Dyson v Vax [2012] FSR 4 at paragraph 22). In order to perform that task I need to know whether and to what extent there may be technical reasons for certain features. The issue is not simply a binary question of whether a given feature is dictated solely by function or not.

Design aspects which led to significant debates at trial

The front face of the Galaxy was considered to be extremely similar to the iPad. While the shape of a screen may be rectangular for functional reasons, designers have freedom about what the rest of the design may look like.

The rounded corners of the Galaxy also provoked controversy. The expert witness for Samsung provided evidence that rounded corners are preferred for manufacturing reasons (it is easier to make them, especially by plastics injection moulding) and for ergonomic reasons (they are comfortable, safe and easy to use). He also explained that a large degree of rounding will reduce the display size or increase the size of the device and risks wasting volume. (The latter is important because these devices are made as thin as possible and a smaller volume means less room for components.)

The expert witness for Apple, Mr Ball (an industrial designer and inventor particularly involved with the handheld computer called the Pepper Pad), did not accept that rounded corners were chosen for purely functional reasons. He referred to the IBM ThinkPad notebook computer from 2005 and an IBM ThinkPad X41 tablet from 2005 which has edges which appear sharp.

(It’s interesting to note that counsel for Samsung submitted that Mr Ball was not impartial (in other words an “Apple Man”), but Judge Birss rejected the submission.)

Front, back and sides

Reaching his conclusions, at paragraph 182 Judge Birss teetered on the brink of becoming an Apple Man himself, delivering his sure to be infamous “cool” verdict:

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.

Unfortunately for Apple, Judge Birss was not finished, and at paragraph 190 his appreciation of how the iPad was cooler than the Galaxy actually handed Samsung victory:

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. The overall impression produced is different.

Apple has 21 days to appeal against this ruling.

Personally I find judgements as to Registered Designs incredibly subjective, and I think another judge on another day may well have reached another conclusion. Certainly, it does seem odd that just because Samsung has been unable to make something as “cool” as the iPad, it has avoided being found guilty of infringement.

Add to this the fact that it was Judge Birss who was behind the very controversial Temple Island Collection Ltd copyright judgement in January, and it seems a fair bet that Apple will not stop the proceedings here.

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