|A stellar piece of blogging from Darren on the Galaxy|
I was previously a guest Kat on the revered IPKat weblog. My former feline companions have permitted me to make a further guest appearance. But as I was a “guest” before, what, I wonder, should I be called now? Perhaps I can adopt the appellation of Ghost Kat [no, no, say the IPKat and Merpel in unison! Kats -- even guest ones -- have to use up all nine lives before they attain ghost status. Darren has transmogrified from "guest" to "special guest" ...].Regular IPKat readers will know that I got quite excited about the Apple/Samsung litigation in the UK, which concerned Apple’s Registered Community Design 000181607-0001 (“the RCD”) and various of Samsung’s Galaxy Tab tablet computers, and I posted about it a great deal [see eg posts here, here and here]. Well, now finally it is out: a decision!There have been so many decisions in this dispute between the parties, in, for example the USA, Germany, and the Netherlands (and this is without considering any of the patent issues, or issues relating to mobile phones as opposed to tablet computers), that it is easy to forget that all of the decisions so far, at both first instance and appeal, have been about whether to grant interim/interlocutory injunctions, and about procedural issues. This is the first “main proceedings” decision. This is significant, because, as Apple’s skeleton argument pointed out:This trial before the English High Court is the first substantive hearing in the European Union of the issue of infringement of the RCD. Consequently it is the decision of this court which will have a potential impact on proceedings elsewhere in Europe pursuant to Art 28 of the Brussels Regulation.And it will probably be the only decision about the RCD to be made by a judge who got to see expert evidence subject to cross-examination, since OHIM and continental European courts do not, so far as this spectral moggy knows, cross-examine experts.To recap, the situation as of now is that:
1) There is an invalidity action pending before the OHIM.2) There is a preliminary injunction preventing sale of certain Galaxy tablet computers in Germany, but this was in the end based on unfair competition law and not the RCD. This injunction was originally pan-European based on the RCD, but was later narrowed to Germany only, and the basis was changed in the appeal proceedings.3) The Dutch Courts refused to grant a preliminary injunction (in kort geding proceedings) in respect of the Netherlands.Against this background, the UK proceedings are an application for a declaration of non-infringement of the RCD by certain Samsung tablet computers, namely the Tab 10.1, Tab 8.9 and Tab 7.7. There is a corresponding counter-claim by Apple for infringement.Apple applied for the whole proceedings to be stayed pending the outcome of the invalidity action at OHIM. The Court of Appeal ruled that the declaration of non-infringement must not be stayed, and left it to the trial court to decide whether the counterclaim for infringement should be stayed or not. This was because of Article 91(1) of the Regulation (the Community Design Regulation 6/2002):A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, … stay the proceedings … where an application for a declaration of invalidity has already been filed at the Office. [feline emphasis]So there was no legal basis to stay the declaration of non-infringement, while whether to stay the counterclaim for invalidity would depend on whether there were “special grounds for continuing the hearing” – this would be a matter for the trial judge. Judge Birss decided that there were special grounds not to stay the infringement counterclaim, so decided on the infringement claim as well.Article 84(4) of the Regulation states:The validity of a Community design may not be put in issue in an action for a declaration of non-infringement.Therefore, the parties had to treat the registration as valid. One might have thought therefore that the prior art was not relevant. However, this is not the case. The parties did not dispute that, as Samsung pointed out, the overall impression produced on the informed user by a design depends on the existing design corpus, taking into consideration the nature of the product to which the design is applied, the industrial sector to which it belongs and the degree of freedom of the designer in developing the design. Therefore, in order to judge infringement, the existing design corpus must be considered, even if validity is not in issue.Apple claimed that the following features of the RCD were reproduced by Samsung’s tablets:(1) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners.(2) A flat transparent surface without any ornamentation covering the entire front 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.Therefore, Apple argued, they infringed.The expert evidence was all about which features were:A) Solely dictated by technical function (and therefore excluded from design protection pursuant to Art 8(1) of the Regulation “A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function”); andB) Subject to limited design freedom - and therefore to be taken into account when considering whether the Samsung tablets create “the same overall impression” pursuant to Art 10 of the Regulation:Article 101. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.Naturally, Samsung maintained that many of the features set out by Apple were the result of limited design freedom, and therefore to be given little weight when assessing infringement. Samsung also maintained that many features were known in the prior art, and therefore also to be given little weight for that reason. Further, Samsung emphasized the differences in the design of the rear of the tablets, and their profiles, compared with the RCD.Samsung did not pursue its allegation that the rectangular shape, the rounded corners, the flat transparent surface, the lack of ornamentation on the surface, the touch-insensitive area surrounding the display screen, the thin profile, and the presence of a button and charging means, were solely dictated by technical function and therefore were to be excluded from the scope of protection of the design altogether. However, Samsung did consider that these features were the result of highly constrained design freedom.Apple on the other hand pointed out to design choices available to the designer in respect of each of the seven features.The judge granted the declaration of non-infringement.Important points are as follows (numbers in square brackets refer to the paragraph numbers of the decision):1) The judge accepted that the socket for connectors shown in dotted lines did not form part of the design . However, he agreed with Apple that the dotted border (showing what on the actual tablet corresponds to the non-touch sensitive border around the display) did form part of the design . So he considered that dotted lines do not always connote disclaimed portions of the design.
2) Samsung criticized Apple’s expert witness as not being impartial, but this allegation was rejected by the judge .
3) Although there was some discussion in the trial about how prior art designs for different products should be considered, particularly with regard to the different design constraints for different products, and whether it was permissible to read the product into the design if the product was discernible from the representations, Judge Birss did not decide this point .
4) Judge Birss accepted that a design receives a broader scope of protection where it is markedly different from the design corpus  unless the differences come from new technology which brings new constraints . But he rejected Apple’s submission that changes in design features that have been enabled by technological advance should be given little significance .
5) The judge approached the issue of infringement by breaking the design down into features and considering the appropriate significance or weight of each, considered against the design corpus and design freedom (with features dictated solely by function being disregarded). “Taking into account the similarities and differences, appropriately weighted, the court can decide whether the alleged infringement produces a different overall impression on the informed user from that produced by the registered design” 
6) The judge accepted that design protection was broader than protection just against counterfeits, but that the observance of the informed user conducting a side by side comparison is “clearly intended to narrow the scope of design protection” .
7) At 65: “Community design infringement cases are supposed to be simple. The material presented in this case is complex and detailed”. But he considered all of the material anyway!
8) Apple invited the judge to reject prior art (“Ozolins”) that was a utility patent, on the grounds that it is not concerned with design, but Judge Birss declined to do so, and considered it .9) The judge did not consider himself bound to follow the preliminary decisions from Germany or the Netherlands .
10) The judge considered the seven features relied on by Apple. He concluded as follows in relation to each (in each case I am quoting the paragraph cited):1) The rectangular display screen is totally banal and determined solely by function. Apart from that there are some other design constraints applicable to this feature but they do not account for the identity between the Samsung tablets and the Apple design. These devices do not need to have biaxial symmetry nor be strictly rectangular. Nevertheless the significance of this identity is reduced by the fact that there are other designs in the design corpus which are very similar too. 
2) There are modest design constraints applicable to this feature but they do not account for the close similarity between the Samsung tablets and the Apple design. Setting aside the design corpus, the close similarity between Apple and Samsung would be very striking. However the design corpus contains some identical and very close designs albeit that many other more ornamented design are available too, as well as designs incorporating a bezel. Overall the informed user's knowledge of the design corpus reduces the significance of this similarity somewhat. 
3) The overall significance of this similarity is the same as for feature (ii). The identity between the Samsung tablets and the Apple design is not due to a lack of design freedom and would be very striking but for the fact that there are also identical designs in the design corpus. That somewhat reduces the significance of this similarity. 
4) This is a feature in which design freedom is constrained considerably but that alone does not account for the close similarity between Samsung and Apple. However the significance of that similarity between the Galaxy tabs and the Apple design is reduced by the presence of a number of designs with very similar features in the design corpus. 
5) There is one serious design constraint applicable to this feature. The back needs to be generally flat. Apart from that there is considerable design freedom. The sides are very similar but these kinds of sides for products are not unusual. The informed user would recognise the Apple design in this respect as belonging to a familiar class of products with somewhat curved sides and a fairly crisp edge. The Samsung tablets are members of the same familiar class. 
6) The Samsung tablets look very much thinner than the Apple design. That is important to the informed user. The Samsung tablets use the same thinness enhancing edge effect as the Apple design but that is not very significant in itself as this technique was often used although I note that none of the members of the design corpus which have closely similar front views to the Apple design use this feature. 
7) From the front the Samsung tablets are very simple, albeit not quite as simple as the Apple design. The Samsung tablets have features which specify orientation, albeit they are not prominent. From the back the designs differ. The back of the Samsung tablets is striking. Ornamentation on the back face of a product strikes the informed user as unusual. That enhances the significance of this difference. On the other hand the fact the difference is on the back of the product and not the front reduces its significance. 11)Taking these together, Judge Birss concluded as follows (again, quoting the cited paragraphs):Concerning the overall impression of the Apple design
Having gone through the various features individually it is necessary to pull it all together and consider the overall impression of the Apple design on an informed user. The way the seven features are written; four of them relate to the front of the product, the rear and sides are addressed in two ((v) and (vi)) and the overall position summed up in feature (vii). The front is important but there is a risk of overemphasis. The design is for an object which is hand held and therefore does not simply rest on a desk with its back invisible. The informed user, who is particularly observant, will pick up these objects and will look at the back. 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 comers 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. Concerning the comparison of the overall impressionsTo my eye the most important similarities are as follows:
i) The view from the front is really very striking. The Galaxy tablets are not identical to the Apple design but they are very, very similar in this respect. The Samsung tablets use the very same screen, with a flat glass plate out to a very thin rim and a plain border under the glass.
ii) Also neither Apple nor Samsung have indicator lights or buttons on the front surface or obvious switches or fittings on the other surfaces. There are some subtle buttons on the edges of the Galaxy tablets but they do not contribute to the overall impression. There is an overall simplicity about the Samsung devices albeit not as extreme as the simplicity of the Apple design.
iii) The thinness enhancing effect of the sides creates the same impression. It causes both the Apple design and the Galaxy tablets to appear to float above the surface on which they rest. However the details of the side edges are not the same. The Apple design has a pronounced flat side face which the informed user would see clearly (and feel). It is absent from the Samsung tablets. There are some minor differences but to my eye there are two major differences. The most important difference between the Samsung Galaxy tablets and the Apple design is the thinness of the Galaxy tablets. The next most significant difference is the detailing on the back of each of the tablets. Final assessmentAre these two differences enough to overcome the similarity at the front and the similarity in overall shape? Apple submitted that the front face and overall shape are what matters because the informed user will principally spend his time looking at the front face and holding the object in his hand. I do not regard the overall shape as very significant but there is a very obvious visual similarity at the front. In my judgment the key to this case is the strength or significance of that similarity. As I have said the significance of the near identity of the front surfaces of these products is reduced to a degree by the existence of similar fronts in the design corpus. The question is - to what degree? This case illustrates the importance of properly taking into account the informed user's knowledge and experience of the design corpus. When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art. There is a clear family resemblance between the front of the Apple design and other members of that family (Flatron, Bloomberg 1 and 2, Ozolins, Showbox, Wacom). They are not identical to each other but they form a family. There are differences all over these products but the biggest differences between these various family members are at the back and sides. The user who is particularly observant and is informed about the design corpus reacts to the Apple design by recognising the front view as one of a familiar type. From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family. As a result, the significance of that similarity overall is much reduced and the informed user's attention to the differences at the back and sides will be enhanced considerably. 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. And so, finally:The Samsung tablets do not infringe Apple's registered design No. 000181607-0001. Doubtless further study of this lengthy and thoughtful decision will yield further points of interest. For the time being, this
ghostguest Kat wonders whether the result of this will be that registered designs are destined to remain the poor relation of IP rights, because of the narrowness of protection afforded.