31 August 2012

Apple v Samsung - Yet more Revelations

The BBC website carries an interview with Mr. Velvin Hogan, foreman of the jury in the Apple trial in California (see "Apple versus Samsung: Full interview with the jury foreman" BBC website 31 Aug 2012). . Mr. Hogan is chief technology officer at Multicast Labs, which develops video technology for the web, and he claims to have been familiar with the US patent system before the trial.

This interview is fascinating for several reasons. For Mr. Hogan
"one of the most decisive pieces of evidence was reading the minutes for myself of a meeting that was held at a very high level between Google executives and Samsung executives, where it was for a tablet and Google was concerned that for the sake of their operating system that the look and feel and the methodology that they [Samsung] were using to create their tablet was getting too close to what Apple was doing.
And in the memo themselves - remember this was minutes - they stated that Google demanded that they back away from that design. And later there was a follow-up memo among themselves, these executives, and in black and white it says: we elect to not pass this information down to the divisions that were actually involved in the design.
So, from the sake of the engineers they went merrily along continuing their design not given any orders to back away. They knew nothing of that meeting."
Juries have never sat in the Chancery Division in England and even in the Queen's Bench Division they have been abolished for everything except defamation and a handful of other torts. Moreover, such an interview could never have taken place in this country. On the one occasion I had to sit on a jury the judge warned us in terms to say nothing about the case once we were discharged.

This interview was reported the same day as Judge Tamotsu Shoji found for Samsung in the Tokyo District Court ("Tokyo court gives win to Samsung after US loss" 31 Aug BBC) and Mrs. Justice Gloster delivered judgment in Abramovich against Berezovsky ("Roman Abramovich wins court battle against Berezovsky" BBC 31 Aug. Our civil justice system may be very expensive but then so is a Rolls Royce and like a Rolls Royce it can be very, very good. Would two Russian plutocrats have preferred to settle their differences before a California jury? Somehow  think not.

28 August 2012

Samsung v Apple - the Aftermath

Following its victory in California, Apple's shares rose by 1.88% while Samsung's fell by 7% even in Korea where Samsung won a partial victory (see "Apple seeks to ban sale of eight Samsung phones in US" BBC 27 Aug 2012). It was perhaps in anticipation of this reaction that Samsung applied for an injunction to restrain Apple
"from representing to any person that the making and/or offering and/or putting on the market and/or importing and/or exporting and/or using the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers and/or stocking the Claimant's Galaxy Tab 10.1 and Galaxy Tab 8.9 and Galaxy Tab 7.7 tablet computers for those purposes by the Claimant in the European Union infringes Registered Community Design 000181,607-0001"
after its victory in  Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012).

Judge Birss refused to make that order in Samsung Electronics (UK) Ltd v Apple Inc (No, 2) [2012] EWHC 2049 (Pat) (18 July 2012) largely because it would restrict Apple's right to free speech:
"Mr. Hacon (Apple's counsel) described an injunction of this kind as sinister. I agree that there is a very serious question whether the court should go around granting injunctions purporting to restrain people from saying that they disagree with a judgment. As I think was attributed to Jeremy Bentham, "publicity is the soul of justice" and it is very important that the courts can be held up to public scrutiny and what happens in them can be discussed in public."
Nevertheless, the judge affirmed that he had jurisdiction to make such an order in an appropriate case.

Judge Birss did, however, order Apple to display the following notice on the home page of its UK website in a font size no smaller than Arial 14 with a hyperlink to Judge Birss's judgment of 9 July for a period of 6 months from the date of the Order:
"On 9th July 2012 the High Court of Justice of England and Wales ruled that Samsung Electronics (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 000181607-0001. A copy of the full judgment of the High Court is available via the following link [insert hyperlink]."
Apple was also ordered to insert an advertisement containing the same notice in The Financial Times, The Daily Mail; The Guardian; Mobile Magazine and T3 magazine.   At paragraph [51] of his judgment, Judge Birss explained:
"In my judgment, Apple are carefully trying to say something which contains an innuendo that Samsung infringe without actually saying it. The reference to copying is exactly that. It is clear that copying plays no part in this case for Registered Community Design infringement, but to many people outside the circles of intellectual property law to say something infringes a Registered Community Design and to say someone copied your design or your product is to say the same thing."
The notice was supposed to have been inserted within 7 days of the date of the Order but I could find no trace of it when I checked Apple's website just now. That could be because the judge or Court of Appeal have agreed to vary, suspend or vacate the order pending appeal or because the parties have agreed something.  If that is the case we shall no doubt learn in time.

As ever, should anyone wish to discuss this article or the Apple litigation anywhere in the world he or she should call me on 0800 862 0055 or contact me through FacebookLinkedintwitter or Xing, or through my contact page.

See "Apple v Samsung - compare and contrast" 28 Ag 2012

Apple v Samsung - compare and contrast

As almost everyone on the planet will have heard by now, Apple Inc. won a convincing victory over Samsung Electronics Ltd. and its American subsidiaries in the US District Court for the Northern District of California on the 24 Aug 2012.  The claim was for the infringement of various US "utility" and "design patents" belonging to Apple and "dilution" and infringement of Apple's "trade dress" - causes of action that appear to be roughly equivalent to patent and registered design infringement and passing off in the UK and most other common law countries.   Samsung counterclaimed for the revocation of Apple's patents and damages and other relief for the infringement of its own patents.  As the 7th amendment to the US constitution guarantees trial by jury for claims over US$20, the claim and counterclaim came before a jury.  In its 20 page verdict that jury found for Apple on just about every issue and awarded Apple US$1,049,343,540 in damages.

The Northern District of California is, of course, Apple's home turf.  The day before the jury delivered its verdict a court in South Korea (which is where Samsung is incorporated) found that both sides had infringed the other's patents and granted injunctions and damages to both of them though Samsung was the overall winner. As His Honour Judge Birss QC observed at paragraph [6] of his judgment in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012):
"This dispute is being litigated between the parties in other countries. The validity case is before OHIM. In Germany the first instance court in Düsseldorf held that the Galaxy tablets infringed the design but on appeal the Düsseldorf Court of Appeal decided there was no infringement. However 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. Both the German and Dutch proceedings are preliminary proceedings. It was not disputed that Apple has the right to start full infringement proceedings in those countries and that the preliminary decisions are not binding. This action is the first substantive hearing in the Community of the issue of infringement."
The proceedings before Judge Birss QC was a claim by Samsung for a declaration that none of its Galaxy tablet computers infringed Apple's registered Community design number 000181607-0001 and a counterclaim by Apple that the Galaxy infringed its RCD. After a 2-day trial His Honour found in Samsung's favour at [190]:
"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."
Why the difference in outcomes?  Well, for a start the US and EU protect industrial designs in different ways.   Although both give effect to section 4 of TRIPS, the US Patent and Trademark Office grants patents for new, original and ornamental designs for articles of manufacture under 35 USC s.171 whereas the Office for Harmonization in the Internal Market ("OHIM") register designs that are new and have individual character as registered Community designs pursuant to art 4 (1) of Council Regulation (EC) No 6/2002 of 12 Dec 2001 on Community designs (OJ EC No L 3 of 5.1.2002, p. 1) ("the Community design regulation"). Another difference is that Judge Birss QC was concerned only with the question whether the Galaxy tablets infringed Apple's RCD.  He was not asked to consider whether the design registration was valid.  That is a matter for OHIM which is already considering an application by Samsung for the invalidation of the design. And of course there was no claim for passing off or anything that equated to the unfair competition claim in Germany or the trade dress dilution or infringement claims in California.

At paragraph [65] of his judgment Judge Birss said that "Community design infringement cases are supposed to be simple." This was anything but simple because "aside from the evidence of the experts, there were lengthy skeleton arguments and schedules addressing whether various features were present in the design corpus" which resulted in a judgment that was much longer than usual. The judge considered this material because of the commercial importance of the dispute.  That is a pity because it will encourage future litigants to do the same, especially in commercially important cases.

Art 19 of the Community design regulation confers on its holder "the exclusive right to use it and to prevent any third party not having his consent from using it."  Art 10 (1) provides that "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." In assessing the scope of protection, art 10 (2) requires "the degree of freedom of the designer in developing his design" to be taken into consideration.  Judge Birss QC directed himself slightly differently at paragraph [30]:
"Council Regulation (EC) No 6/2002 applies to this case. There is no point in quoting the Articles in this judgment. Article 3 defines "design". Articles 4, 5 and 6 relate to validity, a design must be new and have individual character. Article 8 excludes features dictated solely by function. Art 10 defines the scope of protection in a manner analogous to the definition of individual character in Art 6. A design will infringe if it does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. Recital 14 explains that overall impression depends on the existing design corpus, the nature of the product, the industrial sector and the degree of freedom of the designer."
His reference to paragraph 14 of the recitals is interesting and a little surprising because it addresses the question of individual character which is one of the conditions for the registration of a design as a RCD. That goes to validity which was, of course, reserved to OHIM by virtue of art 91. By taking that recital into account the judge had to consider the "design corpus" (that is to say, the prior art) which greatly increased the length and complexity of his judgment.

His Honour rightly directed himself that the overall impression of the allegedly infringing design had to be assessed from the point of view of the "informed user" and he accepted at paragraph [34] Samsung's list of characteristics of such a user:
"i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46).
ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCoparagraph 55)."
The judge added at paragraph [35] "that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59)."

The learned judge then considered whether any of the design features were dictated solely by function though it is not clear why he did. Samsung did not pursue the allegation that any of those features were dictated solely by function and in any case the point went to validity which was a matter that Judge Birss did not need to consider.  His explanation at paragraph [39] is that Samsung had submitted that there was very limited design freedom and that the interpretation of art 8 (1) was relevant to design freedom.  In defining "design freedom" Judge Birss adopted Mr. Justice Arnold's summary in Dyson Ltd. v Vax Ltd.  [2010] FSR 39, [2011] ECC 9, [2010] EWHC 1923 (Pat), [2011] Bus LR 232, [2010] ECDR 18:
"design freedom may be constrained by (i) the technical function of the product or an element thereof, (ii) the need to incorporate features common to such products and/or (iii) economic considerations (e. g. the need for the item to be inexpensive)."
Although he probably made the task that he set him set himself more difficult than it need have been by considering the design corpus the judge's self direction as to the correct overall approach in registered design cases was impeccable:
"53. The exercise must start with identifying the informed user and the existing design corpus. The overall impression is something produced on the informed user.
54. 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.
55. Since this case is concerned with infringement only and not validity, the list of features is a list of similarities said to exist between the design and the alleged infringement. Aside from considering similarities, the differences between the design and the alleged infringement also need to be addressed and weighted. For all the similarities and differences, the weighting exercise is concerned with assessing the significance of the similarity to the informed user. Things which look the same because all the products in the class look that way do not excite the informed user's interest to the same extent as unusual features.
56. 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.
57. The point of design protection must be to reward and encourage good product design by protecting the skill, creativity and labour of product designers. This effort is different from the work of artists. The difference between a work of art and a work of design is that design is concerned with both form and function. However design law is not seeking to reward advances in function. That is the sphere of patents. Function imposes constraints on a designer's freedom which do not apply to an artist. Things which look the same because they do the same thing are not examples of infringement of design right.
58. How similar does the alleged infringement have to be to infringe? Community design rights are not simply concerned with anti-counterfeiting. One could imagine a design registration system which was intended only to allow for protection against counterfeits. In that system only identical or nearly identical products would infringe. The test of "different overall impression" is clearly wider than that. The scope of protection of a Community registered design clearly can include products which can be distinguished to some degree from the registration. On the other hand the fact that the informed user is particularly observant and the fact that designs will often be considered side by side are both clearly intended to narrow the scope of design protection. Although no doubt minute scrutiny by the informed user is not the right approach, attention to detail matters.
59. Finally it bears recording that it was common ground before me that copying is irrelevant to the issue of infringement of a Community registered design. Samsung submitted and Apple did not disagree that considering whether a product was produced by copying an article made to the registered design was irrelevant."
The only oral evidence in the case was expert testimony addressing the issue of degree of freedom and features dictated solely by technical function.  Their evidence had been directed at the case management conference. The rest of the judgment consisted of a comparison of the Samsung products against the following design features that had been suggested by Apple at paragraph [16]:
"i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;
ii) A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim;
iii) A very thin rim of constant width, surrounding and flush with the front transparent surface;
iv) A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface;
v) A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge;
vi) A thin profile, the impression of which is emphasised by (v) above;
vii) Overall, a design of extreme simplicity without features which specify orientation."
The judge's expressed his overall impression of the Apple design at paragraph [182]:
"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."
As I have stated above, his overall impression of the design of the Samsung products was that it was "not as cool." Whether that is a point upon which Samsung would have liked to have won is questionable but a win is a win.   I have to say that I am more confident in the judgment of Judge Birss QC than I am in the verdict of the California jury but time will tell.

Should anyone wish to discuss this article or the Apple litigation anywhere in the world he or she should call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.

Further Reading
Jane Lambert "Samsung v Apple - the Aftermath" 28 Aug 2012 on the post trial relief in this case.
Shawn Sullivan "Verdict Form and Juror Interviews Offer Glimpses of Jury Deliberations in Apple v. Samsung" 27 Aug 2012 (Sullivanlaw.net)
Jane Lambert "Samsung v Apple - the Appeal" 26 Oct 2012 The judgment of the Court of Appeal