SAMSUNG APPLE PATENT WAR: IMPLICATIONS ON THE UNIFORM

APPLICATION OF TRIPs AND CONFLICT OF DECISIONS IN DIFFERENT

JURISDICTIONS

THE START OF PATENT WAR

The patent dispute between Apple and Samsung has rightly been viewed as one battle in a
larger proxy war between Apple and another industry giant, Google. The two companies are
jockeying for control over the mobile operating system (“OS”) industry, and their respective
mobile operating systems, iOS and Android, are currently the top two mobile operating
systems by a large margin. iOS and Android currently enjoy respective market shares of
14.9% and 75%, while the next most successful competitor, BlackBerry, controls only 4.3%
of the market. Apple’s co-founder, Steve Jobs, famously told his biographer Walter Isaacson
that he viewed Android as a “stolen product” and vowed to wage a “thermonuclear war”
against Google for its release.1 However, rather than attacking Google directly, Apple has
elected to sue companies that use Android in products that currently compete with Apple’s
iPhone and iPad. Apple has yet to sue Google itself, instead targeting a number of consumer
electronics manufacturers that sell devices running Android, including Samsung, HTC Corp.
(“HTC”), and Motorola. Some commentators speculate that this is because Google distributes
Android free of cost under an open source license, and therefore does not directly profit from
Android, making damages much more difficult for Apple to prove. Nonetheless, a series of
courtroom victories against manufacturers that use Android may encourage Apple to target
Google, because some of Apple’s patent claims implicate features that are found in the core
Android operating system. Various patent disputes arose at a time when many in the
technology industry were becoming sceptical about the usefulness of software patents in
fostering invention.2

One common thread connecting the lawsuits in the global Apple-Android legal battle is the
Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPs Agreement” or
“TRIPs”).3 Signed in 1994, the TRIPs Agreement attempted to harmonize global intellectual

1
Connie Guglielmo, Apple Analysts Call Verdict an Important Victory in ‘Thermonuclear War’ with Google
Android, FORBES, [Available at: http://www.forbes.com/sites/connieguglielmo/2012/08/27/apple-analysts-
callverdict-an-important-victory-in-thermonuclear-war-with-google-android/, last accessed on 01.09.2017 at
12:00 P.M.]
2
Matthew Lammertse, Apple vs. Android: Global Software Patentatbility and the Mobile OS Wars, 39 Brook. J.
Int'l L. (2014).
3
TRIPs is central to the Apple-Android patent dispute because it articulated a global standard for what types of
inventions are patentable. See Agreement on Trade-Related Aspects of Intellectual Property Rights art. 27, Apr.

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property (“IP”) law by requiring a minimum level of IP protection of its signatory countries.
The agreement applies to all the members of World Trade Organisation (WTO) and the
jurisdictions discussed in this paper are signatories to the same.
Several aspects of the TRIPs Agreement are relevant to software patents. First, some groups
contest whether TRIPs even requires patent protection for software in the first place.4 Second,
TRIPs requires signatory countries to issue patents for a minimum of twenty years, and the
twenty-year term applies regardless of subject matter or technological field. Third, TRIPs
mandates that its signatory countries offer injunctive relief as a remedy for patent
infringement. Given the rapid rise and fleeting market life of consumer electronics globally,
the TRIPs Agreement should be updated to reduce the minimum patent period for software
applications from twenty years to five years, and provide for a specific definition under
Article 27 of what constitutes an “inventive step . . . capable of industrial application,”5
which would streamline international patent litigation, reduce litigation costs for both patent
holders and patent issuing countries and reduce industry reliance on high volume but low
quality patent portfolios as a primary patent strategy.6

This draft of the paper talks about disparity of judgements in jurisdictions like EU, UK,
England and Wales and Australia.

15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33
I.L.M. 1197 [hereinafter TRIPs Agreement].
4
Article 10 of the TRIPs Agreement states that software s to be afforded protection under the Berne
Convention, which provides for copyright protection.
5
Under the TRIPs Agreement, an invention must be “new, involve an inventive step and [be] capable of
industrial application” in order to be patentable.
6
See Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1, 42 (2005).

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NEED FOR DESIGN PROTECTION
Why do you think that people pay a lot of money for these kinds of products? Because of the
reputation of the company producing them? Because they want to belong to the customer
group that uses them? Because of the quality and functionality of the products? Because of
their appealing designs?
The answer is the typical one for the legal profession: “It depends”. But it is very likely that
many or even all of these reasons affect the customer’s purchase decision.
Nowadays customers are used to having a broad range of products to choose from. Most
customers base their buying decision not only on the functionality or quality of the product
but also on its design.
The iPad example perfectly illustrates what a modern customer finds appealing: simple and
elegant design adorned with little or no ornamentation. These products enjoy a high
reputation, which primarily derives from the fact that customers perceive them as embodying
the perfect combination of functionality and appearance.
At the same time, industrial design is increasingly important for a company’s success. Not
only does it define the visual appeal of the product itself, but also has an essential impact on
its competitiveness and commercial success within a certain market. From a company’s point
of view, design is often considered as a strong marketing tool, and from a consumer’s
perspective, it allows product differentiation as well as “socio-economic differentiation
among the consuming public”.
The answers to these questions are different in each case and jurisdiction. Industrial design
protection is debated all around the world and different jurisdictions offer different
approaches. Their common denominator is that legislators and courts see the need to offer
protection for industrial design. But especially when it comes to simplistic design having
little or no ornamentation, there is a lot of controversy as to whether and under which
intellectual property laws protection can be granted. Modern designs are often created in such
a way that the “form [i.e., design] follows the function. From a designer’s perspective this
may bring disadvantages in effectively protecting their work, since legislators and courts are
traditionally rather reluctant to offer protection to designs under trademark or copyright law.
This reluctance is based on the assumption that the purpose of these laws does not really
include design protection.

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THE EUROPEAN UNION CLAIM
Design protection has always played an important role at the European level. Already in the
1950s, the Europeans aimed to harmonize patents, trademarks and design. After a failed
attempt to harmonize the national laws, the European Commission finally succeeded in
introducing European legislation intended to lead to a European design patent regime.
The European Union passed a Design Directive in 1998 and a Design Regulation in 2001.
Similar to the Community Trademark, the goal was to first harmonize the national laws of the
member states and subsequently create a parallel form of protection at Community level,
known as the Community design system.

1. Directive on the Legal Protection of Designs (1998)

The Directive was adopted in 1998 and Member States had to revise their national design
laws by October 28, 2001. The Directive sets minimal standards as to the eligibility and
scope of protection for industrial designs. In order to be eligible for protection, a design must
be novel and have individual character.7 The owner then has the exclusive right to use it and
to prevent others from using it.8 The term of protection can be renewed every five years but
may not exceed twenty-five years.9
However, Member States are still free to independently regulate the “procedural provisions
concerning registration, renewal and invalidation of design rights and provisions concerning
the effects of such invalidity”.10

2. Community Design Regulation (EC) No 6/2002

The Design Directive alone would have retained the territorial nature of design protection. To
encourage and “allow goods embodying designs to flow freely within the internal market”11,
a uniform form of design protection was considered essential.12 The Community Design
Regulation (hereinafter the “CDR”) was adopted on December 12, 2001 and came into force
on March 06, 2002. It introduced the concept of registered and unregistered Community
designs. While the unregistered Community design was already protected after March 06,

7
See Art. 3 (2) Design Directive.
8
See Art. 12 Design Directive.
9
See Art. 10 Design Directive.
10
See Recital (6) Design Directive; note, that the substantive grounds for refusal of registration and
invalidation are not subject to the Directive.
11
See Explanatory Memorandum to Design Directive/ Regulation; Green Paper on Design, paragraph 3
(9) (2) – 3 (9) (3).
12
See Recital (1), (3), (4) Community Design Regulation (EC) No 6/2002.

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2002, the registration of Community designs was not possible before April 01, 2003. From
then on, companies and individuals were able to obtain protection at European level without
having to obtain design protection for each Member State at national level.13 In the case of
registered Community designs, it is possible to obtain Community-wide protection through
one application in one language.14
It should be mentioned that the concept of unregistered Community designs does not
necessarily exist at national level in all twenty-seven Member States. Unlike the registered
design, the unregistered design is a concept at European Community level.
The European legislator has not obliged Member States to introduce a comparable form of
protection at national level.

3. Justification of the European Laws

The CDR, coupled with the Design Directive, has a high impact on design protection in
Europe. Not only were the Member States required to harmonize parts of their national
design laws, but the European legislator also introduced a totally new form of design
protection called Community design.
There are several reasons why design protection is so strongly regulated by the European
legislator. The most prominent one goes back to one of the original core objectives of the
European Union, namely the establishment of an internal market as set forth in Art. 26 of the
Treaty on the Functioning of the European Union (TFEU). In the mid-1980s, legislators
recognized the high impact of design for a product’s commercial success and found it to be
crucial for the trade between the Member States. The fact that Member States offered design
protection at very different levels was, therefore, seen as a threat to undistorted competition
within the internal market.
There was also increasing concern at European as well as at national level that companies
might use national copyright and design protection to protect designs that are highly
functional and thereby harm free and undistorted competition.
The European laws, therefore, point out that design protection can only refer to the
appearance of a product and may by no means extend to aspects that are solely dictated by
the product’s technical function.15

13
An implementing regulation and a fee regulation had to be adopted in order to being to apply for
registration; see Art. 107 Community Design Regulation (EC) No 6/2002.
14
Recital (5), Art. 35, 98 Community Design Regulation (EC) No 6/2002.
15
See Art. 7 (1), (2) Design Directive, Recital 10, Art. 8 Community Design Regulation (EC) No 6/2002.

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The German court system is structured similar to the United States in the sense that there are
trial courts, appellate courts, and a supreme court known as the Federal Court of Justice.
Unlike the United States, Germany has a specialized court that deals specifically with patent
lawsuits, called the Federal Patent Court.16 The Federal Patent Court has jurisdiction over
cases involving the granting, denial, or withdrawal of industrial property rights. Similar to the
CAFC‘s appellate jurisdiction, the Federal Patent Court is a court of second instance and has
jurisdiction over the appeals from the decisions of the German Patent and Trade Mark Office
in cases involving patents, trademarks, utility models, and designs. The 118 judges of the
Federal Patent Court are divided into different boards that handle specific issues. One unique
feature of the German Federal Patent Court is that its judges include not only lawyers, but
also natural scientists, referred to as ―technical judges.‖ These technical judges, who have all
the rights and duties of a professional judge, sit on all cases related to the properties of a
technical invention.
Additionally, in Germany there are bifurcated infringement and validity proceedings. This
means that many times a court that is tasked with determining an infringement issue will
grant a stay until the Federal Patent Court has decided on the issue of a patent‘s validity. 17
While there are significant differences between the courts of the United States and Germany,
perhaps the most significant difference is the German courts‘ prohibition against jury trials in
patent infringement proceedings. The issue of utility patent infringement in Germany is
handled in a very similar manner to the way that it is handled in the United States.
Infringement can be either literal (i.e. the accused device possesses each and every limitation
of the patented claims) or by equivalents. While German courts use the same standard for
claim construction—technical terms are construed according to the understanding of a person
of ordinary skill in the pertinent art at the time of filing—because they do not leave the
question of infringement to a jury, the outcomes of infringement cases are far more
predictable. Additionally, the damages awarded in Germany have traditionally been lower
than those awarded in the United States, partly due to the fact that Germany has no concept of
wilful infringement. In the United States, a finding of wilful infringement allows the patent

16
See generally Gerhard Casper & Hans Zeisel, Lay Judges in the German Criminal Courts, 1 J. LEGAL
STUD. 135, 142 (1972).
17
See Frank Peterreins, Global Patent Enforcement Strategy: Germany, FISH & RICHARDSON P.C., URL:
http://www.fr.com/files/uploads/attachments/6.%20Frank%20Peterreins% 20%28II%29%20-
%20Patent%20Enforcement%20in%20Germany.pdf, Last accessed on 01.09.2017 at 2:00 P.M.

6|Page
owner to request that the judge enhance the damages, up to three times compensatory
damages.18
Wilful infringement is found if the patent holder can: (1) prove by clear and convincing
evidence that the alleged infringer acted despite ―an objectively high likelihood that its
actions constituted infringement of a valid patent‖; and (2) show that this objectively high risk
was ―either known or so obvious that it should have been known‖ to the alleged infringer.
Similar to the Federal Patent Court of Germany, The Intellectual Property Enterprise Court
(IPEC) in London is an alternative to the High Court for bringing legal actions involving
intellectual property matters such as patents, registered designs, trademarks, unregistered
design rights, and copyrights.19 The Enterprise Judge of the IPEC is a Specialist Circuit
Judge, and the judges of the High Court, Patents Court are able to sit as judges of the IPEC as
necessary. Additionally, certain senior members of the Intellectual Property Bar are qualified
and able to sit in the IPEC when the need arises. Similar to the technical judges in Germany,
the IPEC aims to employ judges with a technical background to hear cases.
European patents are granted by the European Patent Office, subject to an autonomous legal
system that was instituted by the European Patent Convention.20 Protection of intellectual
property is covered by many international conventions, most of which are implemented by
the World Intellectual Property Organization and the World Trade Organization. The
European Patent Convention dictates that there are four basic requirements for patentability
that must be met to obtain a patent that is enforceable in the E.U.
The four requirements are: ―(i) there must be an ‗invention,‘ belonging to any field of
technology . . . ; (ii) the invention must be ‗susceptible of industrial application‘. . . ; (iii) the
invention must be ‗new‘ . . . and (iv) the invention must involve an ‗inventive step‘. . . ―
Enforcement of European patents happens at the national level, and is subject to national
laws. These European jurisdictions differ from the United States in one major way: they have
court systems that are used specifically for intellectual property disputes, while the United
States has no such specified court system. Creating courts specifically designed to address
intellectual property disputes has allowed these European jurisdictions to utilize judges with
backgrounds related to intellectual property. Of course, a more informed and educated
judiciary will undoubtedly lead to more consistent and just results.

18
Timothy M. O‘ Shea, New Rule For Proving Willful Infringement and Why Opinions From Patent Counsel
Still Matter After Patent Reform, LEXOLOGY 35 USC (2013)
19
See generally The Intellectual Property Enterprise Court Guide, H.M. CTS. & TRIBS.
20
See generally THE EUROPEAN PATENT CONVENTION (15th ed. 2013)

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THE UNITED KINGDOM ADJUDICATION:
Samsung sued Apple on June 29, 2011 in the High Court of Justice, Chancery Division in the
United Kingdom (UK) for a declaration that its Galaxy tablets were not too similar to Apple’s
products. Apple filed a countersuit against Samsung in the UK court on September 14,
2011.21 On July 9, 2012, British Judge Colin Birss ruled that Samsung’s Galaxy Tab 10.1,
Tab 8.9 and Tab 7.7 do not infringe Apple’s design patent, after making a backhanded
comment that Samsung’s Galaxy tablets were not “cool” enough to be confused with Apple’s
iPad. This ruling has effect throughout European Union. Apple appealed but the Court of
Appeal of England and Wales upheld the lower court judgment on October 18, 2012. This
was a big victory for Samsung because the German court gave the opposite ruling on the
same patent. One other outcome of this case was that, on July 18, 2012, the British court
ordered Apple to publish an announcement on their website a disclaimer stating that Samsung
did not copy the iPad. Apple appealed; however, the British Court of Appeals upheld the
lower court ruling.

The United Kingdom holds a long history of patent litigation. The United Kingdom’s
specialization of the court system took root from the Judicature Acts of 1873–75. These acts
modernized the old system of Common Law and Chancery courts, and combined them into
the High Court of Justice (“High Court”). Prior to the creation of the High Court, a patent
holder seeking relief from infringement would have to bring suit in the common law court to
establish validity and infringement and then bring a separate suit in the Chancery court to
seek equitable relief in the form of an injunction. By creating the High Court, the Court of
Chancery division (within the High Court) could now hear patent infringement cases from the
start and determine validity, infringement, and whether an injunction was warranted.
Although these judges had no particular expertise in patent law, they gained experience with
the subject matter because there were only a few judges hearing patent matters at the time.
This system remained largely unchanged until the 1940s. In 1946, a Government Committee
expressed its concern with the lack of technical expertise possessed by the patent judges,
which led to longer trials. The committee proposed reform where the judges appointed are
not only members of the Bar, but also possess “technical or scientific qualifications, at least
sufficient to enable him to grasp the broad technical principles of a case without the necessity

Meyer, David “Apple sues Samsung in the UK over Android”

21

[Available at:http://www.zdnet.com/applesues-samsung-in-the-uk-over-android-4010024342/ last accessed on

02.09.2017 at 1:00 P.M.]

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of extensive preliminary explanation or instruction in the elements of science with which the
invention is concerned.” When evaluating the competency of a trial court, most researchers
turn to reversal rate statistics as a reliable measure of competency. The overall appellate
reversal rate in the United Kingdom of all patent cases was 19% in 2007, lower than any
other type of civil action. When compared to the overall appellate reversal rate of all civil
cases in 2007 (41.9%), one would conclude that the patent trial court set the standard for
consistently upheld decisions. Since most civil trials are bench trials, this data suggests that
the specialized IP courts perform better than the generalized civil courts.

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THE ASIAN JURISDICTION
Japan established its IP High Court in 2005 as a court specializing in intellectual property
cases. Unlike the German intellectual property court system, which assigns different courts
for infringement and validity proceedings, the IP High Court is a court of first instance for
appeals from decisions made by the Japanese Patent Office and an appellate court of second
instance for civil cases relating to intellectual property. To address the technologically
complex nature of many patent cases, Japan has established the role of Judicial Research
Officials. Judicial Research Officials are full-time court officials whose job is to assist judges
by conducting extensive research on the technical matters necessary for hearing and resolving
specific patent cases. In an effort to make more reliable and convincing judgments, the IP
High Court appoints additional technical advisors from a pool of experts with a wealth of
knowledge and experience, including leading scholars, scientists, and patent attorneys in
various technical fields. These technical advisors are asked to participate in court proceedings
and to provide judges and parties with unbiased explanations of the technically complex
matters involved in the patent lawsuit at hand. To ensure that the use of judicial research
officials and technical advisors are as efficacious as possible, every year a ―Technical
Advisor Workshop‖ is held, in which technical advisors and judges participate in an exchange
of ideas regarding how the use of technical advisors and Judicial Research Officials could be
improved.

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