Apple v. Samsung Tablet Wars – On Novelty       

Published by Baris Isik | October 11, 2011

As the competition in the mobile gadget world heats up by the day, consumers witness fierce debates between the rivals such as the ongoing debate between Apple (AAPL) and Samsung (SSNLF.PK). In a very recent case, the preliminary injunction (click to see the press release) by the Dusseldorf District Court barring the distribution of Samsung’s tablet PC ‘Galaxy Tab 10.1’ in the European Union (except for the Netherlands) has intensified the debate between the parties. Although the initial injunction concerned the EU in its entirety; it must be noted that the District Court lifted the ban for the rest of the European Union since it has no competence to issue bans across the entire Union. That said, the ban is limited to the distribution of Galaxy Tab 10.1 tablets by Samsung branches operating in Germany.

This is not the only case that Apple has brought against Samsung. In fact, Apple has filed lawsuits in the UK, Japan, and Australia as well. Apple argues that Samsung blatantly copies its protected designs and thereby infringing its intellectual property rights. On the other side, Samsung has recently changed its defensive attitude towards a more offensive one. The company has already filed a lawsuit against Apple in Australia claiming that Apple is in violation of its wireless technology patents. The ruling is expected to be out sometime this week, as reported by Reuters [1].

What lies in the core of these patent wars is on the one hand Apple’s iPad design patent which was granted in November 23, 2010 (registered as Community design patent in Europe); on the other hand Samsung’s UMTS (Universal Mobile Telecommunications System) patents that relate to the technology used in devices rather than their designs. These patents are:

"European Patent (EP) 1114528 Samsung “the device for controlling a demultiplexer and a multiplexer for the matching of data rates (rate matching) in a mobile communication system, so the data according to the 3G standard wireless can be established between a mobile station, such as a mobile or tablet, and a base station. ” EP 1478136 provides a method for controlling the speed of the uplink from mobile to base station, through which great strides to increase or decrease, which improves throughput. EP 1097516 is for the data signal from a 3G device. And EP 1188269 relates to finally TFCI (Transport Format Combination Indicator) field that informs receiver on the data rate of the data that is transmitted by a mobile or tablet. Samsung brings also other similar patents in contention against Apple in the courts including the United States, Britain, Germany, France, Japan and South Korea. Samsung’s patents are so-called standard essential patents, they are actually part of the 3G and UMTS standards as laid down in the late nineties by various standardization organizations such as ETSI.” [2]

A common practice in patent applications is to keep the claims in the application as broad as possible, yet not too wide that would lead to the rejection of the application. The broader the granted patent, the broader the protection that patent provides. The claim of the iPad design patent clearly demonstrates how broad a claim could get. A rectangular shape of the tablet, a round-shaped button on the front-face, slightly curved back cover etc. These features could be easily designed by the person skilled in the art.

The Patentable Subject Matter - Novelty, Prior Art, Originality

At this point the question is, ‘is this design patentable at all, regardless of the applicant?’ At first sight, it is apparent that the design is indeed patentable under EPO guidelines considering that the EPO granted a patent for this design. Just for the fun of it, let’s delve into this question in light of theUS and EU regulations.

Design patents are regulated under 35 U.S.C. 171 in the United States. Under the US law, if the design lacks ornamentality, the design is not patentable. Furthermore, if there was no unique or distinctive shape or appearance to the article –not dictated by the function that it performs, the design lacks ornamentality and is therefore not proper subject matter for a patent.

In addition, a design to be patentable must be “original.” A design that simulates a well-known or naturally occurring object or person is not original as required by the statute.

Under the EU law, on the other side, design patents are governed under the Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. Under Article 3 of the Regulation, a design is described as:

“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation."

Similar to the principles of 35 U.S.C. 171, designs may be protected under EU law if they are novel (no identical design has been made available to the public); and if they have individual character (the person skilled in the art would find it different from other designs that are already available to the public).

The novelty criterion is particularly significant in the Apple v Samsung battle. Samsung’s defense relies -which will be seen on its opposition- on the lack of novelty of the iPad design. Novelty-destroying examples are all over the internet nowadays. For instance, the tablet PC shown in the movie ‘The Incredibles’ was argued to be novelty destroying for the iPad design. However, the movie was aired on October 27, 2004. Apple registered Community design [3] for a generic tablet design at OHIM (Office for Harmonization of the Internal Market) on May 24, 2004 which pre-dates the release of the movie. Therefore, “The Incredibles” cannot be used as a means of opposition to the deign patent.

Samsung, however, is using much more solid argument that the tablet device shown in the movie “2001: A Space Odyssey” which was aired in 1968 in the USA, eight years before Apple was established.

Despite obvious differences in size and shape, this device actually is a strong weapon in Samsung’s hands in its opposition on grounds of lack of novelty. On a side note, novelty could be destroyed by any form of communication such as a conversation between the designer and a third party, a motion picture, a doodle on a napkin depicting the design etc.

Now, as we get back to the granted iPad design patent, the claim read as ‘the ornamental design for a portable display device, as shown and described.’ In the patent application, there are eight figures depicting the device’s look & feel.

                               

It is no surprise that many accounts like Sascha Pallenberg criticized the German judge’s decision which ‘allowed Apple to sell thin square tablets with round edges’ and on the other side prevented its competitors from selling devices with such characteristics.

For now, the injunction against Samsung is temporary until the final decision of the Regional Court. If the Regional Court rules in favor of Apple, the injunction will become permanent. Samsung already announced that it will challenge this preliminary order in order to have the injunction lifted as soon as possible. It sure will be interesting to see the Regional Court’s decision on Samsung’s arguments on novelty.

Baris Isik

 

[1] “Australia ruling in Apple vs Samsung case expected next week,” (29.09.2011) by Narayanan Somasundaram and Amy Pyett; Writing by Ed Davies; Editing by Balazs Koranyi. Available at: http://reut.rs/o01sn8

[2] “Samsung eist verbod iPhone en iPad in Nederland,” (23.09.2011) by Andreas Udo de Haes. Available at: http://bit.ly/r9Kf0Z

[3] OHIM Certificate of Registration, http://scr.bi/qubgx0

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