Hot on the heels of its own win against its competitor in Federal Court in California in late August, Apple on Monday filed fresh claims against Samsung for patent infringement in the USA, this time citing Korean company’s flagship smartphone, the Galaxy S III, as a device which Apple believes is in breach of its intellectual property rights.
Since early 2011, Apple has been engaged in a ‘patent war’ against Samsung over design aspects of both companies’ smartphone products. Spanning 20 suits in 10 countries, Apple’s endeavours to ban sales of certain Samsung products nearly found success in Australia earlier this year when an injunction on the sale of the Samsung Galaxy Tablet 10.1 was granted in Federal Court. The injunction has since been overturned, but Apple has further pending claims against Samsung in Australia similar to those against which Samsung was ordered to pay US$1.05 billion by a jury in August, a decision that the Korean electronics giant is sure to appeal.
In complex, global efforts in patent litigation like Apple’s ‘war’ against Samsung, the American suit and its result often becomes a litmus test for how its corresponding overseas cases may turn out, especially in similar markets like the UK and Australia. However, the Californian verdict was delivered by a jury, which isn’t obliged to have or explain any legal reasoning behind its decision, and therefore is unlikely to hold much sway over the opinion of patent judges in other countries. While Apple has won the first of its cases against Samsung in the USA, Samsung has prevailed in facing similar claims in South Korea and, this past Friday, in Japan. The European and Australian suits filed in this dispute are more likely to be influenced by a verdict in the UK case than by Apple’s win in the USA.
Part of what makes Apple’s Californian win against Samsung in August interesting is the role played by several of Apple’s design patents for various details of the iPhone, iPad and iOS.
Whereas utility patents cover the function of an invention, design patents, commonly thought to be a ‘weaker’ form of intellectual property in contrast to utility patents, cover aspects of a product’s form and presentation such as shape and appearance. Apple’s triumph in being awarded over a billion dollars in damages for infringement of patents including its design patents has given spectators cause to consider the idea of the design patent anew. The nature of this landmark lawsuit highlights several issues.
First, it draws attention to an ongoing blurring of lines between utility and design in technology products. With gadgets like Apple’s iPhone, the look, feel, and overall slickness of design can be as important to the user and as key to the product’s success as its functionality. It is possible that the emerging supremacy of industrial design and panache in delivery in arenas like the $300 billion smartphone industry is changing the way patent infringement cases are settled and damages awarded. Where key aspects of design arguably are the product, are intricately tied to its function, or are at least major draws in the minds of consumers, whether or not there is or should be a meaningful distinction between design and utility patents gets called in question.
Second, the US Apple v Samsung decision raises the question of whether the protection of ‘registered designs’ is to considered as broad by an Australian court as design patents are by US juries. It is arguable whether or not features of a product like the icons that make up a graphical user interface are registerable designs under Australian law. In 2008, the Australian Design Office denied registration of a type font created by Microsoft because it could not be applied to and represented as a feature of a particular product. But a later decision by the ADO in 2011, which referenced the 2008 case, granted registration of a layout of a GUI for a remote control. It’s uncertain whether designs that are not tied to any particular device such as the icons that make up the GUI for Apple’s iOS would survive the scrutiny required to defend them from potential infringements by Samsung in an Australian court.
Third, a win of this magnitude on the basis of design patents seems almost to invite argument about what should and shouldn’t be patentable. Consumers and professionals alike may well ask if it’s altogether reasonable for Apple to enjoy protection to the tune of a billion dollars for seemingly trivial details like how the corners of a device are curved and how far apart the icons on the iOS ‘home screen’ are spaced. But what seems inconsequential to many might in fact be extremely innovative and commercially significant. Patent law is tasked with keeping up with the ever more subtle innovations in some sectors which can and do place products oceans apart in consumers’ minds, but which require careful and nuanced thought in protecting legally.
Normative questions of patentability are especially relevant at the moment in Australia. The Intellectual Property Laws Amendment (Raising the Bar) Act promises to bring Australian requirements for patent registration in line with international standards. A key change to the law is a new requirement to describe how an invention is to be implemented for each application for which an innovation patent is sought. It will soon no longer be good enough to be granted a patent in Australia to claim that an invention has a certain application without being able to prove it. This means significantly bigger and more complex patent applications will become the norm. Good news perhaps for Australian patent attorneys and exporters seeking strong patents overseas on the basis of their Australian IP.