Novelty does not necessarily mirror infringement: product-by-process claims

Author: Darren Smyth (EIP)

Hospira UK Ltd v Genentech Inc [2014] EWHC 3857 (Pat), Patents Court, England and Wales, 21 November 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv030, first published online: February 21, 2015

Mr Justice Birss expounds, interprets and applies the law on construction, novelty and infringement of patent claims that have a ‘product-by-process’ feature.

Legal context

It is frequently held as a fundamental tenet of patent law that, according to the ‘post-infringement’ test for novelty, tests for novelty and infringement must mirror each other: ‘what infringes if after, anticipates, if before’. This was affirmed under pre-1977 law in the UK by the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, which stated ‘the notion behind anticipation is, as we understand it, that it would be wrong to enable the patentee to prevent a man from doing what he has lawfully done before the patent was granted’. However, there are in fact recognized under the current Patents Act 1977 many situations where the novelty test does not mirror the infringement test. For example, it was confirmed by the House of Lords in Synthon BV v Smithkline Beecham plc [2005] UKHL 59 that it is necessary, when considering novelty, for the prior art to have enabling character, whereas there is no equivalent requirement in the infringement test.

The European Patent Office (EPO) interprets a ‘product-by-process claim’—that is, for example, a claim in the form of ‘Substance X obtained/obtainable by process Y’—as a claim to the substance as such. If X is not novel, and if process Y does not necessarily impart some novel feature to X, then the claim is held to lack novelty. This is so whether the language used is ‘obtained’ (on the face of it a narrower wording) or ‘obtainable’ (on the face of it a broader wording).

The question that therefore arises is whether a product-by-process claim should be given a similarly expansive construction for the purposes of infringement.

Facts

The dispute underlying the case concerned two patents, EP (UK) 1 516 628 and EP (UK) 2 275 119, belonging to Genentech, which are divisionals from the same parent. They both relate to lyophilized (ie freeze dried) formulations of trastuzumab, the antibody that is the active ingredient in the well-known anti-cancer drug Herceptin.

Claim 1 of the 628 patent had two product-by-process features, one of the narrower type, ‘lyophilized mixture’, and one of the broader type, ‘obtainable by lyophilizing’ a particular solution. The scope of both the narrower and broader expressions in relation to both novelty and infringement was considered.

Analysis

The leading case previously concerning product-by-process claims is the House of Lords decision in Kirin-Amgen Inc v Hoechst Marion Roussel [2004] UKHL 46, which relates to recombinant erythropoietin. In that case, on the matter of novelty of the product-by-process claim (Claim 26) Lord Hoffmann held (as Birss J summarized) that

a difference in the method of manufacturing did not make a product new and that was so as a matter of law. On that basis the claim could only be novel if the process definition gave the product a new characteristic of some kind.

Because recombinant erythropoietin (rEPO) was not shown to be distinguishable from naturally occurring urinary erythropoietin (uEPO), the claim was held to lack novelty. Thus, on the issue of novelty, Lord Hoffmann aligned the UK approach with that of the EPO.

However, as Birss J observed, this holding in Kirin-Amgen was not a rule of ‘mandatory claim interpretation’, but rather one of novelty. That is because

the House of Lords also decided that the defendant's rEPO did not infringe the patent because it was not the product of the expression of a gene in a host cell … Thus Lord Hoffmann was applying the process feature as a relevant limitation which was not satisfied for the purposes of (non-)infringement but ignoring it for the purposes of novelty. That can only be on the basis that the product by process rule is a rule of novelty law, not claim construction.

This disjunction between novelty and infringement in Kirin-Amgen only emerges from a very careful reading of the judgment and is easily missed. Birss J perhaps had a special understanding of the case from having acted as counsel in the proceedings. He accordingly distilled the following principles from the UK and EPO authorities in relation to product-by-process claims:

A new process which produces a product identical to an old product cannot confer novelty on that product. To be novel a product obtained or obtainable by a process has to have some novel attribute conferred on it by the process as compared to the known product.

This rule is a rule of the law of novelty. It is not a principle of claim construction. Although in effect the rule treats ‘obtained by’ language as ‘obtainable by’ language, nevertheless as a matter of claim construction a claim to a product ‘obtained by’ a process means what it says. That will be the relevant scope of the claim as far as infringement and sufficiency are concerned. Although normally a patent is drafted by the inventor ‘in words of his own choosing’, the EPO will not permit overt product by process language unless there is no other alternative available. By no other alternative, they mean no other way of defining a particular characteristic of the product in question. On this basis, when construing the claims for infringement, the narrower formulation was construed as follows:

The claim is to a ‘lyophilised mixture’. As a matter of language and applying the principles I have just discussed, that is limited to something which has actually been made by lyophilisation. It does not say ‘obtainable by’ lyophilisation, it is a claim to a product ‘obtained by’ lyophilisation. Air dried material which had never been lyophilised might anticipate the claim (but none is suggested to) but it could never infringe.

In contrast, in relation to the ‘obtainable by’ language, Birss J pointed out that for such a claim to be infringed if a different process is used, it ‘must have every single characteristic which is the inevitable consequence of that process’ and If something does not have all those attributes then it is not obtainable by the process. Even if only one attribute is missing, then it is not obtainable.

Thus, even for the broader language, it may practically be very difficult for a patentee to demonstrate infringement of the claim by a product prepared using a different process from that specified in the claim.

Practical significance

Mr Justice Birss's approach to novelty in this decision accords with that of the EPO, as the UK law on novelty has consistently been under both Synthon and Kirin-Amgen. There is no EPO law on infringement, as that is a matter for national courts. German courts have, for example, tended to take an expansive approach to infringement of product-by-process claims, analogous to that adopted by the EPO for novelty, and have considered that a product can infringe if produced by a different process, in principle irrespective of whether ‘obtained’ or ‘obtainable’ language is used, provided that the product has the same ‘fingerprint’ as that produced by the process of the claim. Even though the present decision arguably only makes evident what was always the case under Kirin-Amgen, for the first time there is clearly a divergence between the UK approach and that of other European jurisdictions.

Magmatic v PMS: no RCD infringement on appeal

Authors: David Stone and William Corbett (Simmons & Simmons LLP)

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, Court of Appeal, England and Wales, 28 February 2014; Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 408, Court of Appeal, England and Wales, 10 April 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu103, first published online: June 17, 2014

The Court of Appeal has overturned the High Court's judgment that a registered Community design (RCD) was infringed by a copied child's ride-on suitcase and has refused permission to appeal to the Supreme Court.

Legal context

The Court of Appeal has held that Magmatic's registered Community design (RCD) for its well-known Trunki child's ride-on suitcase is not infringed by a competitor product sold as the Kiddee Case.

Magmatic sought permission to appeal to the Supreme Court. The Court of Appeal refused on the basis that the case does not ‘raise any point of general public importance’. Magmatic has sought permission from the Supreme Court.

Facts

In 1997, a designer created an original design for a child's ride-on suitcase. This design was developed and subsequently commercialized by Magmatic under the trade mark Trunki. The Trunki case proved highly successful: Magmatic estimated that in 2011 approximately 20 per cent of three-to-six-year-olds in the United Kingdom possessed Trunki luggage. The product is now sold in 97 countries.

PMS admitted that its Kiddee Case was inspired by the Trunki product. However, it claimed to have instructed its designer to come up with something different from anything else on the market. PMS began selling the Kiddee Case in late 2012. Magmatic commenced proceedings in February 2013. In July 2013, the High Court (Arnold J), in a ‘clear and concise judgment’, ruled that PMS infringed Magmatic's RCD, and UK unregistered design rights (UK UDR) in relation to the Trunki's clasps, internal straps, internal pouch and tow strap (PMS conceded copyright infringement in relation to a safety notice). PMS appealed only the issue of RCD infringement on two very narrow points: that the trial judge had wrongly interpreted the RCD and had improperly excluded from his consideration of infringement the decoration on the Kiddee Case.

Analysis

How should a tribunal interpret an RCD? The Court of Appeal emphasized that the scope of protection of an RCD is determined by the representation of the design. As Kitchin LJ held, ‘[a]t the end of the day, the scope of the design must be determined from the representation itself … the scope of the protection must be discerned from the graphical representation and the information it conveys.’ Some assistance is available from drafting conventions, such as dotted lines, he said. But colour, Kitchin LJ noted, ‘presents further challenges’.

To assist in interpreting the RCD in this case, Kitchin LJ reviewed two previous Court of Appeal RCD cases, where the interpretation of black and white line drawings was in issue.

In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, the RCD was for an air freshener shown in a black-and-white line drawing: it was held to protect the shape of the design in any colour. In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, the RCD was again depicted in black-and-white line drawings. Apple had contended that a lack of ornamentation was a feature of its design: accordingly, any decoration on the Samsung tablet was held by the High Court and Court of Appeal to constitute a difference (and it was irrelevant that this ornamentation included a trade mark).

In the present case, Magmatic's RCD represented the design using monochrome 3D renders (which showed how light would play on the surface of the suitcase), perhaps more accurately described as ‘greyscale’. The shape was unadorned with any surface decoration, but the wheels and the strap were shown in a darker shade than the sides of the case.

The Court of Appeal held that the trial judge's first error was in his interpretation of the RCD, enumerated as follows. First, he failed to recognize that Magmatic's RCD looks like a horned animal (the Court of Appeal described this as ‘plainly one of its essential features’). Secondly, although the monochrome representations meant that the RCD protected the shape in any colours, the 3D renders indicated a ‘distinct contrast in colour’ between the wheels and strap on the one hand and, on the other, the rest of the suitcase. Accordingly, the Court of Appeal held that the wheels were ‘a rather striking aspect of the design as a whole’, which the trial judge had failed sufficiently to take into account.

The Court of Appeal identified the trial judge's second error in his comparison of the RCD with the Kiddee Case. Kitchin LJ held that it was ‘wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives. At least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears’. Kitchin LJ held that the Kiddee Case's ladybird and tiger versions were ‘plainly not’ horned animals and produced ‘very different’ overall impressions.

Having identified errors of principle, the Court of Appeal felt it was free to form its own view. Kitchin LJ concluded as follows: ‘[t]he impression created by the [RCD] is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.’

Practical significance

The Court of Appeal has continued its unbroken anti-RCD run: never has it found an RCD to be infringed. Practitioners who hoped that recent personnel changes on the court may herald a less interventionist and more design-rights-friendly approach will be disappointed with this decision.

Did the trial judge commit an error of law? The first error listed by the Court of Appeal was that the trial judge ‘failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal’. First, he did no such thing; the trial judge observed that ‘the ridge and the horns form important parts of its appearance’ and noted ‘the nose and tail of an animal’ shown in the RCD. Both quotes come from paragraph 64 of the trial judgment, excerpted in full by the Court of Appeal in its decision. The Court of Appeal also excerpted the trial judge's conclusion (para 77 of the trial judgment): ‘the overall impression the Kiddee Case creates shares the … prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the [RCD]’. Indeed, at paragraph 8 of its decision, the Court of Appeal notes ‘[a]s the judge recognised, one of the striking features of the [RCD] is that the handles and the clasps give the suitcase the appearance of a horned animal’ (emphasis added). It is difficult to reconcile these findings. In any event, even if this ‘fail[ure] to appreciate’ was an error, it was not an error of law but merely a difference in emphasis.

Perhaps more worrying is the Court of Appeal's reference to the RCD being ‘clearly intended to create the impression of a horned animal’ (emphasis added). As the Court of Justice made clear in C 488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL [2012] E.C.D.R. 17, the intention of the designer is irrelevant to the interpretation of an RCD.

There is a further sub-point: the Court of Appeal felt that the trial judge underplayed the contrast in shade between the wheels and the rest of the body of the suitcase, and in this they may be correct. A greyscale 3D computer representation of the shape of a product is not to be construed in the same way as a black and white line drawing. For example, a black-and-white line drawing does not show features of ‘texture’ or ‘materials’ (Article 3(a) of the Community Design Regulation (CDR)), whereas these may be shown in a greyscale model. Also, and relevantly here, contrasting shades may be shown—for example, darker wheels against a lighter case. Kitchin LJ noted, ‘the wheels are, to my eye, a rather striking aspect of the design as a whole’. To be fair to the trial judge, at first instance PMS did not list the contrasting wheel shade among the differing features on which it relied. Further, as noted by the trial judge, ‘[i]n the case of the wheels, the real difference is that the wheels on the Kiddee Case have covers over them.’ So the informed user would not have paid much attention to the wheels in any event.

Overall, this appears to have been a difference in emphasis, rather than an error of law.

The second error of law identified by the Court of Appeal is the more important one, as it may have ramifications beyond this dispute. The Court of Appeal found that the trial judge, in comparing the RCD with the Kiddee Case, was wrong to disregard the surface decoration on the later product. Kitchin LJ noted, ‘[a]t least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears.’ No authority is given for this statement, which reads dangerously like trade mark law. Indeed, the finding runs contrary to authority, including Procter & Gamble in the Court of Appeal, to compare like with like. A copyist ought not to avoid infringement by applying different markings to a product, particularly where the RCD protects shape only, devoid of decorative elements.

It is possible to look at this point another way. The CDR provides protection for ‘the appearance of the whole or a part of a product’. In filing an RCD devoid of surface decoration, Magmatic claimed protection for that ‘part’ of the product, and not the surface decoration ‘part’. In undertaking a like-with-like comparison, the trial judge was therefore right to avoid the surface decoration on the Kiddee Case. In other words, a greyscale RCD for a distinctive motor vehicle shape is still infringed by an identically shaped vehicle, even if the later vehicle is painted with zebra stripes.

In our view, the Court of Appeal was wrong to look at the ladybird and tiger markings: these should have been excluded from the comparison made by the informed user.

It is also of little assistance to practitioners that the Court of Appeal caveated its decision with ‘[a]t least in the case of this particular registered design’. Designers, practitioners and the design protection system benefit from clear tests (to the extent that is possible), and the Court of Appeal has here elucidated nothing that takes this particular design away from the usual ‘like-with-like’ comparison.

The Court of Appeal refused permission to appeal to the Supreme Court, noting briefly: ‘[w]e have reached a conclusion different from that of the judge as to the scope of the [RCD] and the issue of infringement. However, this finding is specific to the circumstances of the present case and we do not believe it raises any point of general public importance.’ It may thus be that this case will be confined to its facts, not being seen as signalling a move away from the established case law on comparing like with like.

In our view, the trial judge made neither error attributed to him, but had made an error. However, that finding did not influence his decision and therefore played no part in the appeal. The Rodeo, an earlier ride-on suitcase created by the Trunki designer, had been disclosed at an awards event in 1998. The trial judge found that that disclosure was not ‘obscure’—it could ‘reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’. Although admitting that the Rodeo was therefore a prior design for novelty purposes, Magmatic argued that the Rodeo should not be included in the design corpus, because it would not have been a design with which the informed user was familiar. The trial judge agreed, finding support in the General Court's comment in Case T-9/07 Grupo Promer Mon Graphic SA v Office for Harmonization in the Internal Market (OHIM) [2010] E.C.D.R. 7 that the informed user ‘has some awareness of the state of the prior art’ (emphasis added), and the Court of Justice's comment on appeal in that case (Case C-281/10 P E.C.R. I-10153) that the informed user ‘possesses a certain degree of knowledge with regard to the features which those designs normally include’ (emphasis added).

In our submission, there is nothing in a purposive construction of the CDR, or indeed, in Grupo Promer, that supports such a contention. In order to assess the validity of an RCD, it is necessary to compare it against each prior design (Advocate General in Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd 2 April 2014 (unreported)). If any one of those prior designs creates the same overall impression on the informed user as the RCD, that RCD is invalid. But it cannot be that an RCD that survives such an invalidity attack is then protected from the ‘kindred prior art’ that may be obscure-ish, but not obscure. For the invalidity test to be the flipside of the infringement test (Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), para 26), the ‘design corpus’ must include all the ‘prior designs’. As a practical matter, the legislature cannot have intended that tribunals should have to apply an additional filter once a prior design is found not to be too obscure. As noted above, this did not affect the trial judge′s findings, because he considered the single prior design, despite not considering it part of the design corpus of which the informed user would be aware.

The Court of Appeal's decision is a timely reminder of the attention to be paid when filing for RCD protection. Many practitioners consider that a black line drawing on white paper gives the broadest scope of protection. Had Magmatic filed for the Trunki in that form, it would likely have survived an invalidity attack based on the Rodeo, as well as leading even the Court of Appeal to a finding of infringement.

It was undisputed that PMS took a version of the Trunki suitcase, and Arnold J found that it had been copied. Modifications were made, but Arnold J found that they were not enough to avoid infringement. The Court of Appeal has disagreed, in a decision that will not please designers, originators or practitioners.

How is the scope of protection of a registered Community design to be determined?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, Court of Appeal, England and Wales, 18 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt004, first published online: February 24, 2013

The Court of Appeal decision on the scope of protection of a Community registered design confirms aspects of the approach established by previous cases, but leaves unresolved issues concerning the significance of the ‘design corpus’ and unanswered questions about product features not claimed as part of the design.

Legal context

The legal test for infringement of a Community registered design—the scope of protection—is set out in Article 10 of the Community Design Regulation 6/2002:

Article 10 Scope of protection

1. 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.

As the Community registered design system approaches its 10th anniversary, there have still been relatively few decisions from higher courts to clarify the issue of what is the scope of protection under the new law, which is harmonized throughout the EU. How should the judge don the spectacles of the informed user, and how should the question of different overall impression be judged? There is one decision from the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10 P) which gives guidance on the test of ‘different overall impression on the informed user’ in the context of whether a design has ‘individual character’. In the UK, there have been two decisions from the Court of Appeal for England and Wales, Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206. In both of these, Jacob LJ gave the leading judgment; he has once again been summoned from retirement to give the leading judgment in this, the most high-profile registered design case to date.

Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, gained prominence in the first instance judgment and appeal. It states:

The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

The history of this Recital in relation to the scope of protection in UK cases is significant. In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd, Jacob LJ, reversing the trial decision of Lewison J, rejected the idea that the Recital has the effect that ‘an accused design escape[s] infringement only if its overall impression “clearly differs” from the registered design’. By contrast, Arnold J accepted a more modest proposition in Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat):

Recital (13) of the Designs Directive [which corresponds to recital 14 of the Community Designs Regulation] indicates that, other things being equal, a registered design should receive a broader scope of protection where the registered design is markedly different to the design corpus and a narrower scope of protection where it differs only slightly from the design corpus.

This principle was implicitly affirmed on appeal.

In both earlier UK cases, the designs were held to be a great departure from that which went before, and a detailed comparison of the registered design with the prior art corpus, in order to determine the scope of protection that the registration should afford, was not conducted.

Facts

In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012), Judge Birss QC, sitting as a judge of the High Court, granted a declaration that three of Samsung's Galaxy tablet computers (the Tab 10.1, Tab 8.9 and Tab 7.7) did not infringe Apple's Community registered design No 000181607-0001. Validity of the registration was challenged at OHIM, but was not at issue in the UK proceedings.

In arriving at the result, Judge Birss used a seven-feature characterization that was put forward by Apple of features of the registered design allegedly reproduced in Samsung's products, and analysed each feature in relation to a design corpus of over 50 items of prior art put forward by Samsung. Each feature was considered against the design corpus and also considered from the point of view of design freedom.

Apple appealed the decision.

Dismissing Apple's appeal, Sir Robin Jacob (the other two judges agreeing) fully and wholeheartedly endorsed the decision of Judge Birss. He stated at [53]: ‘Overall I cannot begin to see any material error by the Judge’, and then at [54]: ‘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.’

Analysis

When reporting Judge Birss's decision for this journal, I commented that the detailed comparison that he undertook contrasted with Jacob LJ's comments in the two earlier appeal decisions, which suggested that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom.

In the appeal, Apple criticized Judge Birss for conducting a piecemeal, feature-by-feature analysis. Pointing out at [29] that ‘Apple can hardly complain … since the Judge used the very list of seven features it had identified and invited him to use’, Sir Robin emphasized that, having ‘considered the various features of the design’, the judge then ‘came to consider the overall impression of the Apple design’. Therefore it is clear that, whatever preparatory analysis is undertaken, what matters is the overall impression.

Concerning the relevance of the design corpus, and the need apparently potentially to refer to a large body of prior art in order to determine the scope of protection of a Community registered design, the situation is less clear. In the decision under appeal, Judge Birss approved at [48] Arnold J's dictum in Dyson Ltd v Vax Ltd at [39] quoted above. Moreover, at [189] he referred to the ‘importance of properly taking into account the informed user's knowledge and experience of the design corpus’. This approach is apparently endorsed, and Sir Robin approved at [53] of the ‘overall conclusion, arrived at by using his own eyes and taking into account both the design corpus and the extent to which there was design freedom’. So the consideration of a potentially large corpus of prior art is apparently required to assess the scope of protection of a Community Registered Design. But it is not clear how this is to be reconciled with Sir Robin's statement in Procter & Gamble Company v Reckitt Benckiser (UK) Ltd and repeated in Dyson Ltd v Vax Ltd that ‘[b]y and large it should be possible to decide a registered design case in a few hours.’

There also remain two unresolved issues for practitioners concerning how features of a registered design for which protection is not sought should be indicated.

The first concerns the feature of lack of ornamentation. Apple's list of features included a ‘surface without any ornamentation’ and ‘without features which specify orientation’, and Samsung did not challenge this as a characterization of the registration. Accordingly, both Judge Birss and the Court of Appeal accepted lack of ornamentation as a feature of the design registration. This has been surprising for many practitioners who have worked with the convention that not showing ornamentation in the representations of a registration would result in protection for the design with or without added ornamentation. How is an applicant now supposed to show that such a scope of protection is sought?

The second issue concerns the related question of the significance of dotted lines in a representation. Convention, supported by the OHIM Guidelines and the Invalidity Manual, dictates that features in dotted lines are disregarded, because they are either not claimed, or cannot be seen. In the present case, two views showed on the front of the tablet a frame in dotted lines. Samsung submitted that this was to be disregarded. Apple contended, and Judge Birss accepted, that the dotted line indicated a frame below a glass screen, and was not to be disregarded. Sir Robin dismissed Samsung's submission as a ‘complicated point based on the guidelines for examination’ which ‘is faintly absurd: a bit like the notice-board reading “Ignore this notice”.’ This surprising statement will leave applicants wondering how to define the scope of protection that they seek.

A possible avenue is for applicants to use the description of the invention, provided for on the application form, whose use is optional, to clarify the use of dotted lines, and whether lack of ornamentation forms a part of the claimed design. This approach, however, also awaits judicial approval, and is considered by some commentators to conflict with Article 36(6), which states that the description ‘shall not affect the scope of protection of the design as such’.

Practical significance

This decision, like the previous Court of Appeal cases, highlights that the scope of protection of a registered design is narrow. It suggests more strongly than previous Court of Appeal decisions that the prior art corpus should be taken into consideration when deciding the scope of protection. Moreover, it creates uncertainty for applicants and their representatives concerning how to indicate in an application the features for which protection is sought.

Samsung v Apple: How does the judge become an ‘informed user’?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Limited v Apple Inc. [2012] EWHC 1882 (Pat), Patents Court, England and Wales, 9 July 2012

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps142, first published online: 17 September 2012

Judge Birss QC has decided, despite initially being struck by their similarity, that three Samsung Galaxy Tab tablet computer designs did not infringe Apple's Community Registered Design No 000181607-0001.

Legal context

According to Article 10 of the Community Design Regulation (Council Regulation 6/2002):

1. 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. Moreover, Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, states: The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

How then should the judge don the spectacles of the informed user (Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936) and judge whether a different overall impression is produced?

Facts

Apple iPad

In response to Apple's allegations of infringement, Samsung brought proceedings in the United Kingdom for a declaration that three Samsung tablet computers, namely the Tab 10.1, Tab 8.9 and Tab 7.7, did not infringe Apple's tablet computer design. Apple counterclaimed for infringement, alleging that seven features were reproduced, namely:

• A rectangular, biaxially symmetrical slab with four evenly, slightly rounded corners. 

• A flat transparent surface without any ornamentation covering the entire front of the device up to the rim. 

• A very thin rim of constant width, surrounding and flush with the front transparent surface. 

• A rectangular display screen surrounded by a plain border of generally constant width centred beneath the transparent surface. 

• A substantially flat rear surface which curves upwards at the sides and comes to meet the front surface at a crisp outer edge. 

• A thin profile, the impression of which is emphasized by (5) above. 

• Overall, a design of extreme simplicity without features which specify orientation.

Samsung Galaxy

Expert evidence was adduced about whether any features of the design were solely dictated by technical function and therefore excluded from design protection altogether under Article 8(1) of the Regulation, and also the degree of freedom of the designer under Article 10 of the Regulation. Further, over 50 designs were put forward by Samsung as evidence of the existing design corpus. The judge considered each of the seven features in relation to the prior designs, and in relation to the expert evidence on design freedom.

The judge found that the first four features were present in the Samsung products, but gave them lesser significance because they were present in the design corpus.

The fifth feature was considered to be present only as a feature of a class of products that would be familiar to the informed user.

The last two features were considered to represent points of difference between the Samsung products and the RCD. The Samsung products were thinner, and they had ornamentation on the back that was absent from the RCD.

The judge concluded:

Are 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?

And:

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.

He therefore concluded that they did not infringe.

Analysis

The judge noted that ‘Community design infringement cases are supposed to be simple. The material presented in this case is complex and detailed.’ Therefore, although ‘the end result is a judgment much longer than should be necessary’, he specifically stated: ‘Given the commercial importance of this dispute I do not criticise the parties for putting it forward in this way.’ In assessing the scope of protection, the judge followed the approach advocated by Apple, and not resisted by Samsung, reading the requirements of Recital 14 into the test set out in Article 10 of the Regulation, and proceeded in the following manner:

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.

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.

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. Each of the seven features was therefore analysed in this way, leading to the final result.

The judge additionally commented in the antepenultimate paragraph of the judgment: 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.

This indicates that the expert evidence, and the mass of prior designs, is not an optional add-on that the parties can indulge in if they wish to devote extra resources to a commercially important case, but an essential step in educating the judge into an informed user. This is the more remarkable given that validity was not at issue in the proceedings, but only infringement.

This approach stands in marked contrast to the approach indicated by Jacob LJ in Procter & Gamble v Reckitt Benckiser, and again in Dyson Limited v Vax Limited [2011] EWCA Civ 1206:

The most important things in a case about registered designs are: 

• the registered design; 

• the accused object; 

• the prior art.

And the most important thing about each of these is what they look like.

And:

It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours.

These remarks recommend that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom. It remains to be seen as to how these approaches are to be reconciled in subsequent cases.

Practical significance

This judgment suggests that, in order to judge the scope of a Community design right, it will be necessary as a matter of course, and not only as an exceptional matter, to provide evidence of the design corpus and expert evidence on the degree of freedom of the designer in order that the judge can become an informed user.