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IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT



Henry Carr QC and Kathryn Pickard (instructed by Simmons & Simmons) for the Claimant Michael Silverleaf QC and Richard Hacon (instructed by Freshfields) for the Defendant Hearing dates: 18th, 19th June 2012 ____________________

HIS HONOUR JUDGE BIRSS QC (Sitting as a Judge of the High Court) ____________________

His Honour Judge Birss QC :

Section Para Introduction 1 Stay of the infringement case under Art 91? 18 The witnesses 25 The law 30 The approach of Mr Sherman vs the approach of Mr Ball 60 Assessment 65 The informed user 66 The existing design corpus 67 The German and Dutch decisions 91 Assessment of the features relied on 91 (i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners 92 (ii) A flat transparent surface without any ornamentation covering the entire front face of the device up to the rim 105 (iii) A very thin rim of constant width, surrounding and flush with the front transparent surface 117 (iv) A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface 123 (v) A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge 135 (vi) A thin profile, the impression of which is emphasised by (v) above 151 (vii) Overall, a design of extreme simplicity without features which specify orientation 164 Samsung's Schedule B 176 The overall impression of the Apple design 178 The overall impressions compared 183 Conclusion 191 Annex A  the Apple design A Annex B  the Samsung tablets B

Introduction

The Apple design

The Samsung Tablets

Features relied on by Apple

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.

Stay of the infringement case under Art 91?

The relationship between the proceedings in this country and the validity proceedings in OHIM was addressed by Mann J ( Samsung v Apple [2012] EWHC 889 (Ch)) and then on appeal to the Court of Appeal (the court consisting of the Master of the Rolls (Lord Neuberger), Lloyd LJ and Moore-Bick LJ) in Samsung v Apple [2012] EWCA Civ 729. The Court's conclusion as to the effect of Art 91(1) of Council Regulation (EC) No 6/2002 was that the existence of the OHIM proceedings does not require Samsung's claim for a declaration of non-infringement to be stayed but it does require Apple's counterclaim for infringement to be stayed, unless there are "special grounds" allowing the claim to proceed (judgment of the court, paragraph 47).

The witnesses

i) Mr Ball said the Apple design was strictly rectangular rather than just generally rectangular. The submission was that when Mr Carr put to Mr Ball a statement to the contrary made by Apple to OHIM, rather than disagree with Apple, Mr Ball adopted a strained construction of the language used. When Mr Ball was confronted with Apple's words he struck me as being surprised by them. I think his evidence was a reflection of the genuineness of his view that the design is strictly rectangular. He deduced that Apple must have meant the same thing since he could not see how they could mean anything else. That is not an indication of bias or a lack of independence.

ii) Mr Ball used a particular photograph of the TC1000 tablet computer which was said to exaggerate the differences between the TC1000 and the Apple design. When pressed Mr Ball could not remember why he had used the image he had. I am not surprised. I took his answer as genuine and not an attempt to cover up a sleight of hand. In my judgment there is nothing in this point.

iii) It was submitted that Mr Ball was not prepared to agree readily with propositions which were plainly right. I think this largely arose because Mr Ball's evidence and Samsung's case put in cross-examination came from very different directions, which I will deal with below. Mr Ball often did not agree because he, as a designer concerned with aesthetics, genuinely did not regard them as plainly right.

iv) In cross-examination Mr Ball referred to a feature of the Samsung tablets even though his evidence was not concerned with infringement. That did not betray a lack of independence. It would be fanciful to think that Mr Ball was unaware of the fundamental issue which this case is about and I am not surprised he mentioned that point in the context of the question he was asked.

The law

The cases

General matters

The informed 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 ( PepsiCo paragraph 55).

Designs dictated solely by function

The correct interpretation of Art 8(1) was considered by Arnold J in Dyson . The learned judge held that the approach decided upon in Lindner Recyclingtech GmbH v Franssons Verkstäder AB (Case R 690/2007-3 [2010] ECRD 1) by the OHIM Third Board of Appeal, should be followed and that the different approach endorsed by the Court of Appeal in Landor & Hawa v Azure [2007] FSR 9 was obiter and should not be followed. The Landor & Hawa approach, also called the "multiplicity of forms" theory, is that a design is not dictated solely by function if it can be shown that the same technical function can be achieved by another design. The alternative approach, which comes from Amp v Utilux [1972] RPC 103 (House of Lords) is that a product's configuration is solely dictated by its technical function if every feature of the design was determined by technical considerations. Lindner summarised the position as follows:

"36. It follows from the above that art. 8(1) CDR denies protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance. It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer's mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen."

Design freedom

"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)."

Design Corpus

Effect of differences between the registered design and the design corpus

"as regards the assessment of the overall impression produced by the designs at issue on the informed user, the latter will automatically disregard elements 'that are totally banal and common to all examples of the type of product in issue' and will concentrate on features 'that are arbitrary or different from the norm'."

The correct approach, overall

The approach of Mr Sherman vs the approach of Mr Ball

Assessment

The informed user

The existing design corpus

Particular designs in the design corpus

Stevenson

Ozolins and the Bloombergs

"An opening 320 at the rear of enclosure 300 may be provided so as to allow access to the rear of electronic display device 100, where, for example, input and output connectors may be located."

The German and Dutch decisions

Assessment of the features relied on

(i) A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners;

(i)(a) Design freedom

(i)(b) Occurrence in the design corpus

(i)(c) Samsung Tablets' similarity to this feature

(i)(d) Overall significance of "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;

(ii)(a) Design freedom

(ii)(b) Occurrence in the design corpus

(ii)(c) Samsung Tablets' similarity to this feature

(ii)(d) Overall significance of this feature

(iii) A very thin rim of constant width, surrounding and flush with the front transparent surface;

(iii)(a) Design freedom

(iii)(b) Occurrence in the design corpus

(iii)(c) Samsung Tablets' similarity to this feature

(iii)(d) Overall significance of "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;

(iv)(a) Design freedom

(iv)(b) Occurrence in the design corpus

(iv)(c) Samsung Tablets' similarity to this feature

(iv)(d) Overall significance of "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

(v)(a) Design freedom

(v)(b) Occurrence in the design corpus

i) The LG Flatron has a complex rounded back face a bit like a stepped pyramid:

ii) The Bloomberg 1 and 2 designs have a rounded rectangular block protruding from an otherwise flat back.

iii) The only concrete example depicted by Ozolins (figure 9) shows a complex structure in the middle of the rear face to attach to a bracket and wires. The other figures are generic. There is no disclosure of a completely flat rear surface.

(v)(c) Samsung Tablets' similarity to this feature

(v)(d) Overall significance of "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;

(vi)(a) Design freedom

(vi)(b) Occurrence in the design corpus

(vi)(c) Samsung Tablets' similarity to this feature

(vi)(d) Overall significance of "a thin profile, the impression of which is emphasised by (v) above"

(vii) Overall, a design of extreme simplicity without features which specify orientation

(vii)(a) Design freedom

(vii)(b) Occurrence in the design corpus

(vii)(c) Samsung Tablets' similarity to this feature

(vii)(d) Overall significance of "overall, a design of extreme simplicity without features which specify orientation"

Samsung's Schedule B

The overall impression of the Apple design

The overall impressions compared

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.

Conclusion