Samsung v Apple - Not As Cool, But Not Infringing

Stay of Proceedings?

In addition to these two issues, the Judge had to decide whether to stay the proceedings in respect of the declaration of non-infringement and the counterclaim. This was because there are pending invalidity proceedings in respect of the RCD before OHIM. The Judge took a rather pragmatic approach in deciding this part of the case. As Samsung had not sought a declaration of invalidity of the RCD before the UK Court, then there is no risk of inconsistent decisions between the UK High Court and the OHIM proceedings. Also, if the UK High Court did decide that Samsung’s tablet computers did infringe Apple’s RCD, then it would be unfair for Apple to wait for relief pending the outcome at OHIM. The Judge held that both the claim and counterclaim would be heard.

The Case

Apple claimed that the similarities between the RCD and the Samsung tablets could be divided into the following seven features:

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 upto the rim.
3. A very thin rim of consistent 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.

In order to decide whether the Samsung Galaxy Tabs infringed the RCD, the Judge needed to firstly identify the informed user. Secondly, the design was broken down into features. Thirdly, the overall significance of each feature should be considered. A feature dictated solely by function was to be disregarded. As long as not disregarded, each feature was then considered against the design corpus and considered from the point of view of design freedom.

The informed user in this case was not disputed by either side and was defined as a user of handheld (tablet) computers.

However, in order to determine the issue of degree of design freedom and the features dictated solely by function, the Court directed that the parties may each call an expert. These experts were cross-examined by the opposing party. This type of evidence is extremely valuable in this type of proceedings to put designs into context.

In his decision, the Judge then addressed each of the similarities identified by Apple in turn. The following paragraphs correspond to the numbering of the features identified by Apple.

The Judge held that the overall significance of a rectangular display was banal and determined solely by function. Although the Judge accepted that these devices do not need biaxial symmetry, nor be rectangular, there are a number of designs in the design corpus that have such features. In other words, it was known to designers at the time of filing the RCD to have biaxial symmetry and be rectangular. Therefore the significance of this feature was limited.

Although the similarity between the Samsung tablets and the RCD is striking, the design corpus does contain some identical and very close designs. Therefore, the informed user’s knowledge of the design corpus reduced the overall significance of the similarity somewhat.

The overall significance of this feature is limited due to the design corpus containing some identical and very close designs.

The design freedom of this feature is constrained considerably. However, this alone did not account of the close similarity between the Samsung tablets and the RCD. The similarity is however reduced by the presence of a number of designs with similar features in the design corpus.

Aside from the design constraint of the back being flat, this feature has considerable design freedom. The sides in the Samsung tablets were similar but are not unusual for products of this type. The informed user would recognise the RCD in this respect as belonging simply to a familiar class of product with somewhat curved sides and a crisp edge. The Samsung tablets are members of the same familiar class.

The Samsung tablets look much thinner than the RCD. This is important to the informed user. The Samsung tablets use the same thinness enhancing edge effect as the RCD. However, this in itself is not significant although none of the members of the design corpus use this feature.

The front of the RCD was very simple.

The Samsung tablets have non-prominent features which specify orientation. The back of the RCD however, is different to the Samsung tablets. The ornamentation on the back face of the tablet strikes the informed user as unusual. That enhances the significance of the difference.

Overall Impression

The Judge was keen to stress that objects in this field are handheld, so although the front of the device is important, the informed user would pick up the device and will look at the back. The Judge therefore categorized the features as being related to the front (features 1-4), back and sides (features 5 and 6) and overall (feature 7).

The front of the Samsung tablets were judged to be very similar to the RCD. The Tablets use the same screen, with flat plate glass out to a very thin rim and a plain border under the glass. Although the Samsung tablets had subtle buttons on the front, these did not contribute to the overall impression of the tablets.

The details of the side edges between the RCD and the Samsung tablets were not judged to be the same. The RCD had a pronounced flat side face which the informed user would see clearly and feel. It is absent from the Samsung tablets.

The Judge commented that the front of the Samsung tablets is strikingly similar to the front of the RCD. However, the Judge commented that the front view of the RCD was very similar to that in the design corpus. Indeed, the Judge likened the front view in the RCD and the Samsung tablets to being in the same family as the design corpus. In other words, neither the RCD, nor the Samsung tablet were much different to previous designs. Therefore, the informed user’s attention would be drawn to the differences at the back and sides and that such differences would be enhanced considerably.

The Judge concluded that the Samsung tablets were thinner than the RCD and had unusual details on the back. This meant that the tablets do not have the same understated and extreme simplicity as the RCD.

Highlighting that our Judiciary are fashion conscious, the Judge concluded that Samsung Tablets were “not as cool” as the Apple RCD and so the overall impression was different. Therefore the Samsung tablets do not infringe the RCD.

Conclusion

This case was interesting for a number of points. This case illustrates the importance of properly taking into account the informed user’s knowledge and experience of the design corpus. The use of expert witnesses, and the cross-examination of such witnesses, really assists in this process.

Additionally, it was interesting how the Judge looked beyond the front side of the Samsung tablet and the RCD. The fact that these objects are designed and built to be handled by users meant that the design of the front is important, but not exclusively important. It is the overall impression of the totality of the design which will be decisive.

This is a point worth noting in view of the increasing importance attributed to the design of handheld devices in the marketplace.

Finally, as Sir Jonathan Ive and the late Steve Jobs would surely appreciate, their tablet design has now been judicially recognised as ”cool”.