Trial judge praised, Germans lambasted as Apple loses its cool appeal

One of the shortest pieces of legal
advice in IP history ...

It is with great pleasure that the IPKat welcomes one of his most distinguished former guest Kats, patent attorney, scholar and blogger Darren Smyth (EIP). It is not every IP lawyer's good fortune to have a gap in his hectic diary which is just big enough to squeeze a visit to court on a day when a momentous ruling is being delivered, but Darren was indeed one such fortunate soul this morning.  The following is a most worthy account of where Darren went this morning -- and what he heard:

When this Emeritus Guest Kat was doing his stint on the IPKat team, he had the pleasure to cover the dispute between Samsung and Apple concerning Apple's Registered Community Design No. 00181607-0001 and Samsung's Galaxy Tab tablet computers. This culminated in the decision of His Honour Judge Colin Birss that Samsung tablet computers did not infringe Apple's Registered Design because they were not as "cool".  In addition to the procedural aspects of the case, there was also a ground-breaking supplementary judgment requiring Apple to publish the Court's decision of non-infringement.

The publication of court decisions has not been conventional in English jurisprudence, but has been introduced following the implementation of IP Enforcement Directive 2004/48. However, even under the Enforcement Directive, it was not clear that the publication of a decision of non-infringement could be ordered in the same way as a decision finding infringement.  IPKat team member Kate recently posted about the decision of the Court of Appeal to stay the order for publication, pending the final decision of the Court of Appeal on the merits of the case
[as if anything can be described as 'final' these days, mutters Merpel, who thinks that there may still be scope for an appeal to the Supreme Court and a couple of clarificatory references from the Court of Justice of the European Union, by which time it may be necessary to explain to younger readers what a tablet computer is].
Therefore, your humble servant scampered to Court 74 today for the handing down of the Court of Appeal's final [J] decision.  Sir Robin Jacob gave the leading judgment with Lords Justice Kitchin and Longmore concurring. agreeing. In short, the appeal by Apple was dismissed, and first instance judgments of Judge Birss upheld. The decision, [2012] EWCA Civ 1339, can be enjoyed at leisure on BAILII here.

Short of actual coronation, there's no greater
honour for a trial judge can receive
than earning praise from the Court of Appeal

Sir Robin began by rehearsing the history of the case. He noted that in the US proceeding (where, readers will recall, Apple was largely successful in the first instance jury trial), the jury held that Samsung's products did not infringe the US design patent corresponding to the registered design at issue in these proceedings. Thus there is now no injunction anywhere in the world based in the registered design or its equivalent. On the main finding of non-infringement, Sir Robin basically dismissed Apple's criticisms of Judge Birss's findings. In particular, he rejected Apple's argument that Judge Birss was wrong to take account of the fact that the Samsung products had the trade mark Samsung on their front and backs. He felt that this fact was relevant, given that Apple had contended that a key feature was "a design of extreme simplicity without features which specify orientation" and another key feature of the front of the design was "A flat transparent surface without any ornamentation covering the front face of the design up to the rim".

Sir Robin also upheld Judge Birss's finding that the dotted line showing the frame of the front face of the tablet was to not to be disregarded (even though conventionally before OHIM dotted lines are usually employed to show features for which protection is not sought).

Sir Robin then endorsed, in overwhelming terms, Judge Birss's assessment of a different overall impression on the informed user. He even went so far as to say 

"I would add that even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons [as a keen student of Sir Robin's pronouncements over the years, Merpel can verify that, in the annals of all his appellate judgments, no higher accolade has yet been discovered]. If the registered design has a scope as wide as Apple contends it would foreclose much of the market for tablet computers. Alterations in thickness, curvature of the sides, embellishment and so on would not escape its grasp. Legitimate competition by different designs would be stifled".

Sir Robin proceeded to confer vigorous criticism upon the Oberlandesgericht in Germany for granting a provisional pan-EU injunction on 24 July 2012 against Samsung in respect of the Galaxy Tab 7.7, after Judge Birss's final decision, sitting as a Community Design Court, of non-infringement. However, Apple had undertaken to apply forthwith to the German Court for that injunction to be completely withdrawn.

Finally, the question of whether the judgment of non-infringement should be published was considered de novo, because the Court of Appeal had before it lots of new material. Sir Robin had no doubt that the Court has jurisdiction to grant a publicity order. Ironically, he held that, had it not been for the German decision on 24 July, which Apple publicised and took steps to enforce, publication would not have been necessary (given the wide publicity that Judge Birss's original decision had received). But, given the German decision, he decided that a publicity order should be made, and that the wording should be expanded over that originally ordered by Judge Birss, to read as follows:

On 9th July 2012 the High Court of Justice of England & Wales ruled that Samsung Electronic (UK) Limited's Galaxy Tablet Computers, namely the Galaxy Tab 10.1, Tab 8.9 and Tab 7.7 do not infringe Apple's registered design No. 00181607-0001. A copy of the full judgment of the High Court is available via the following link [link given] That Judgement has effect throughout the European Union and was upheld by the Court of Appeal on..... A copy of the Court of Appeal's judgement is available on the following link [...]. There is no injunction in respect of the registered design in force anywhere in Europe. 

Only Kitchin LJ was present for the handing down. He added orally that the notice of the judgment should be published in the newspaper and trade magazines specified in the written judgement in a font size no smaller than Arial 14pt and appear on a page earlier than page 6 (this is the same as Judge Birss ordered at first instance).