Module 10

MODULE 10

INTERNATIONAL SCENARIO/ INTERNATIONAL CONVENTIONS

10.1 INTERNATIONAL FILING DETAILS

There are two ways of getting your design filed internationally. The first is to file national
design applications in each country of interest, and the second is to file an ‘international'
design application via the Hague System for the International Registration of Industrial
Designs. 1

10.1.1 What is the difference between design applications filed nationally and via the
Hague System?

The primary distinction is that in any of the regions that are party to the Hague Agreement,
the Hague System enables the person to file a single design request for design security.
Otherwise, for each country for which design protection is needed, separate design
applications are needed.2

In either case, a person must file within 6 months of the first filing of his / her design in all of
his/her countries of interest, and this can potentially be done more easily through a single'
international' application. That said, not all nations are parties to the Hague Agreement, so the
person may only be able to get design protection through a direct domestic filing in some
instances.3

Before you file a design you should consider that-

• laws and procedures can differ greatly from country to country
• you may need to have documents translated if the property office does not use English

as their official language
• if you are not a resident of that country you may have to use the services of an

intellectual property (IP) professional
• fees vary from country to country

1 International Designs, Albright IP, available at: https://www.albright-ip.co.uk/designs/international-designs/
(last visited on Sept 15, 2019).
2 Ibid.
3 Ibid.

• certain countries, such as the US and the Philippines, will only accept applications
made in the designer's name.

10.1.2 Hague Agreement

The Hague Agreement is a scheme that allows design holders belonging to certain nations to
apply centrally for designs for several states and/or intergovernmental organizations
(especially the European Union Intellectual Property Office (formerly known as OHIM))
,instead of having to apply separately for each state and/or intergovernmental organization. It
came into effect on 13th June 2018. The Hague Agreement, however, is a ' near ' scheme
which means that candidates, who are registered, domiciled or have a true and efficient
business institution in a working state are only accessible for use. 4

At present there are 73 contracting parties covreing 90 nations, which are presently accessible
through the Hague International Design Registration System. Countries accessible through
this path include the United States, the European Union, Japan, South Korea, as well as many
individual European nations (unless European Union protection is required), and chosen
African, Asian and South American nations. The United States became a part of the Hague
Agreement in 2015, and the United Kingdom joined on June 13, 2018. Russia joined the
Hague Agreement on April 3rd, 2017 5

To file an international design application (IDA) under the Hague Agreement, the applicant
must be a national of a Contracting Party or be a national of a Member State of an
intergovernmental organization which is a Contracting Party (such as the European Union or
the African Intellectual Property Organization) or have a domicile in the territory of a
contracting party or have a real and effective industrial or commercial establishment in the
territory of a Contracting Party, or only under the Geneva (1999) Act or have a habitual
residence in a Contracting Party. 6The application must include: the applicant’s full name /
company name (plus state or incorporation) and address, drawings or photographs of the
design, details of any priority applications, an indication of the product with a Locarno

4 International Design Registration- The Hague Agreement, Mewburn Ellis,
https://mewburn.com/resource/international-design-registration-the-hague-agreement/ (last visited on Sept 15,
2019).
5 Russia joins the Hague System for the International Registration of Industrial Designs, Baker McKenzie
(2018), available at: https://www.bakermckenzie.com/en/insight/publications/2018/03/russia-joins-the-hague-
system (last visited on Sept 15, 2019).
6 How to File Your Application: Entitlement, WIPO,
http://www.wipo.int/hague/en/how_to/file/entitlement.html (last visited Sept 15, 2019)

classification, and the number of designs and embodiments.2 Also, applicants must ensure
their IDA meets the specific requirements for each country in which they are seeking design
protection. For example, the United States requires an oath or declaration from the
inventor(s).7

The Hague system is administered by the Geneva, Switzerland-based World Intellectual
Property Organization and is intended to safeguard the decorative or esthetic elements of
industrial design. Such elements include an article's shape; two-dimensional characteristics
on an article's surface, such as patterns, lines or color; or both. The Hague system's
significant advantage is the ability to file up to 100 designs in a single implementation in 64
regions.8

The Hague system decreases the cost and complexity of filing overseas design requests by
allowing candidates to submit a single design request in one language for various nations or
areas, paying one set of charges in one currency and one office (WIPO). Furthermore, if no
objections to the application are raised by a specified patent office, the applicant may avoid
the need to maintain local counsel in that jurisdiction. Centralized subsequent management as
renewals and modifications of the international registration can be done centrally at WIPO.

10.1.3 Instruments

The Hague Agreement consists of several separate treaties, the most important of which are:
the Hague Agreement of 1925, the London Act of 2 June 1934, the Hague Act of 28
November 1960 (amended by the Stockholm Act), and the Geneva Act of 2 July 1999. The
original version of the Agreement (the Hague version of 1925) is no longer in force, as all
States Parties have signed up to the subsequent version of the Agreement. The London Act of
1934 officially applied between a London acts state that had not signed up until October 2016
to the Hague and/or Geneva Act in relation to other London act countries. However, the
implementation of this law had been frozen since 1 January 2010.9

7 Kenneth Matuszeweki & Elizabeth Ferrill, ‘Meeting of the Minds: Around the World and Back: Making a
Champion Out of your Design with International Design Rights’, American Bar Association, available at:
https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2018-19/january-
february/around-world-back-making-champion-out-your-design-international-design-rights/ (last visited on Sept
15, 2019).
8 Industrial Designs, WIPO, available at: https://www.wipo.int/designs/en/ (last visited on Sept 15, 2019).
9 Hague Agreement Concerning the International Registration of Industrial Designs, WIPO, available at:
https://www.wipo.int/treaties/en/registration/hague/ (last visited on Sept 15, 2019).

Countries may become a party to the Hague Act of 1960, the Geneva Act of 1999, or both. If
a nation signs up to one Act only, then candidates from that nation can use the Hague system
only to acquire protection for their models in other nations that are taken up to the same Act.
For example, because Japan has only signed up to the 1999 (Geneva) Act, applicants who
qualify to use the Hague system because they are domiciled in the European Union can only
obtain protection in countries that have also signed up to the 1999 Act or both to the 1999 and
1960 Acts.

10.1.4 Entitlements

• Be a national of a Contracting Party.
• Be a national of a Member State of an intergovernmental organization which is a

Contracting Party ( such as the European Union of the African Intellectual Property
Organization);
• Have a domicile in the territory of a Contracting Party;
• Have a real and effective industrial or commercial establishment in the territory of a
Contracting Party;
• Have a real and effective industrial or commercial establishment in the territory of a
Contracting Party, or only under the Geneva (1999) Act.
• Have a habitual residence in a Contracting Party.

Also, but only under the 1999Act, an international application may be filed based on habitual
residence in any Contracting party. The Contracting Party with respect to which the applicant
fulfills the above condition is referred to as the "State of origin" under the 1960 Act and the
"applicant's Contracting Party" under the 1999 Act. 10

10.1.5 Cumulative Entitlements

Although, only one entitlement (by nationality, domicile, real and effective manufacturing or
business organization or habitual residence-see above) is required to submit an international

10 The Hague System for the International Registration of Industrial Designs, WIPO, available at:
https://www.wipo.int/edocs/pubdocs/en/designs/911/wipo_pub_911.pdf (last visited on Sept 15, 2019).

application under the Hague system with one Contracting Party, the plaintiff may indicate
more than one Contracting Party for each criteria.11

The applicant needs to specify all the entitlements he may have in separate Contracting
Parties as these various entitlements can be cumulated to provide security on a wider
geographical scale. For example, an applicant having the nationality of Contracting Party A,
bound solely by the 1960 Act (and therefore entitled to designate only Contracting Parties
bound by that Act based on nationality alone), may also have a place of residence in
Contracting Party B, bound solely by the 1999 Act. By indicating both such rights
(citizenship and domicile), the applicant may appoint any Contracting Party, whether bound
by the first.12

10.1.6 International Entitlements

To be entitled to file an international application, the applicant must fulfill at least one of the
following conditions:

1. Be a national of a State which is a Contracting Party or a State member of an
intergovernmental organization which is a Contracting Party; or

2. Have a place of residence in the territory of a State which is a Contracting Party or in the
territory in which the Treaty establishes an intergovernmental organization; or

3. Have a real and effective industrial or commercial establishment in the territory of a
Contracting Party or in the territory in which the Contracting Party Treaty establishes an
intergovernmental organization.13

There are several such situations in which entitlements may be cumulated:

• Where the applicant has links with different Contracting Parties of a different nature (i.e.,
the nationality of Contracting Party A, the domicile of Contracting Party B, the habitual
residence of Contracting Party C, etc.), or

11 Completing a Hague System Application, WIPO, available at:
https://www.wipo.int/hague/en/how_to/file/completing_hague_app.html#entitlement (last visited on Sept 15,
2019).
12 Ibid., 11.
13 Entitlement to file an International Application, WIPO, available at:
https://www.wipo.int/hague/en/guide/entitlement.html (last visited on Sept 15, 2019).

• Where the applicant has links with different Contracting Parties of the same nature (i.e., a
real and effective commercial or industrial establishment of Contracting Party C).

• Where the applicant has one or more contacts with a Contracting Party which is a
member of an Intergovernmental Organization and that Intergovernmental Organization
is itself a Contracting Party (for example, Greece, which is a Contracting Party to the Law
of 1960, is a Member State of the European Union which is a Contracting Party to the
Law of 1999), both of which are entitled by the State and the Intergovernmental
Organization to be cumulated. 14

Consequently, it is highly suggested that the applicant specify all links with the Contracting
Parties, even though in many instances the Contracting Party involved is the same.

Multiple Contracting Parties may be chosen, if appropriate, by clicking on that Contracting
Party's official two-letter code one after the other.

10.1.7 Standard Contents of the Application

The international application must be submitted in English, French or Spanish (at the option
of the applicant) and electronically via the electronic filing interface (e-filing) available on
the WIPO website (wipo.int/Hague/en) or the official form (available on the WIPO website).
No previous request or registration is needed at a domestic or regional level.15

There may be up to 100 distinct designs in an international application. However, all designs
must belong to the same category as the Locarno Classification, the International
Classification for Industrial Designs.

In specific, it must include a reproduction of the industrial designs involved and the
designation of the Contracting Parties where protection is sought.

The applicant may request the postponement of the publication of the designs for a period
not exceeding 12 months (under the 1960 Act) or 30 months (under the 1999 Act) from the
date of filing or, where priority is claimed, from the date of priority.

14 Supra note 11.
15 Guide to the International Registration of Industrial Designs, WIPO, available at:
https://www.wipo.int/hague/en/guide/text.jsp (last visited on Sept 15, 2019).

A global implementation is subject to three kinds of charges (in Swiss francs), namely:

• a fundamental fee;

• a publishing fee;

• a normal fee or an individual fee for each specified Contracting Party.

Specific content is required by certain Contracting Parties and relevant information for each
Contracting Party.

The statements produced by some of the Contracting Parties to the 1999 Act may also affect
the aspects included and the decisions taken in an international application designating them.
Sometimes, it may also be necessary to take into account factors on their substantive law.

Users will be automatically notified by the system of the particular criteria set by a specified
Contracting Party when using the E-filing interface to file an international application.
Alternatively, the following links may be helpful:

• Member Pages – These give access to the list of declarations made by each Contracting
Party to the Hague System and certain information concerning their national/regional
procedures (http://www.wipo.int/hague/en/members/index.html).

• Frequently Asked Questions (FAQs) – To get more specific information on the
designation of Contracting Parties (http://www.wipo.int/hague/en/faqs.html).

• Guidance on Preparing and Providing Reproductions to Forestall Possible Refusals on the
Ground of Insufficient Disclosure of an Industrial Design by Examining Offices – To
prepare reproductions of the design in view of the designation of certain Contracting
Parties.

10.1.8 Filing the International Application

The WIPO website's e-filing interface will remind candidates to consider the following
factors-

a. Direct filing with the International Bureau:

• It is suggested that the applicant verify whether the legislation of the Contracting Party of
the application requires that the domestic Office carry out safety clearance processes, which
may involve indirect filing;

b. Indirect filing (through the Office of the Contracting Party of the applicant):

• Indirect filing is permitted if the Contracting Party of the applicant has not informed the
International Bureau that it is not permitted to file global apps through its Office;

• If indirect filing is permitted, the Office of a Contracting Party may require the applicant to
pay the transmission fee for its advantage.

In the event of direct filing, the global request may be submitted either online (e-filing) or on
paper at the applicant's option:

a. Due to its simplicity and contemporary characteristics, e-filing is an easier, cheaper and
quicker way to file an international application.

A specially developed e-filing tutorial is designed to help the applicant use the
tutorial/index.html e-filing portfolio manager (www.wipo.int/hague/en/howto/e filing);

b. The applicant must fill out the application form (www.wipo.int/hague/en/forms) and send
it by mail or facsimile in the case of a paper application. E-mail submission is not recognized.

10.1.9 Formal Examination by International Bureau

Upon receipt of an international application, the International Bureau checks that it complies
with the prescribed formal requirements, such as those relating to the quality of the
reproductions of the industrial designs and the payment of the required fees. The applicant is
informed of any defects, which must be corrected within the prescribed time limit of three
months, failing which, the international application is considered abandoned.

Where an international application meets the prescribed formal requirements, the
International Bureau shall proceed with its registration in the International Register and the
publication in the International Designs Bulletin of the corresponding registration. The
publication shall take place six months after the international registration date unless in the
international application the applicant has requested immediate publication or deferment of
publication. The publication takes place on the WIPO website electronically and contains all
relevant data relating to the international registration, including a reproduction of the
industrial design.

The International Bureau does not assess or in any way concern itself with the novelty of the
design and is, therefore, not entitled to dismiss an international application on this or any

other substantive grounds (substantive examination falls within the exclusive competence of
each designated Contracting Party's Office)

10.1.10 Substantive Examination by the Office of Each Designated Contracting Party:
Possibility of Notifying a Refusal of Protection

Once the Bulletin is published on the WIPO website, each Office shall identify the
international registrations in which it has been designated to carry out, if any, the substantive
examination provided by its domestic law. Indeed, one of the primary characteristics of the
Hague system is that the Office of each assigned Contracting Party may refuse to protect an
industrial design in its land which does not fulfill the substantive privacy circumstances given
by its national law.

However, such rejection may not be awarded based on non-compliance with official
demands, as such conditions are to be regarded as having already been fulfilled following the
examination conducted by the International Bureau.

Within six months of the publishing of the global registration on the WIPO website, any
rejection of protection must be notified to the International Bureau. However, under the 1999
Act, any Contracting Party whose Office is an Examining Office or whose law gives for the
possibility of resistance may declare that the six-month rejection period shall be substituted
by 12 months. Any refusal of protection shall affect only throughout the territory of the
Contracting Party whose Office has issued such a refusal.

The applicant has the same remedies in the case of rejection as he would have had if he had
submitted the design in question directly with the Office which issued the rejection. The
subsequent proceedings shall take place exclusively at a national level; the owner shall appeal
a rejection with the competent authority of the nation involved, within the time limit and in
accordance with the circumstances laid down in the relevant domestic law. In such an
operation, the International Bureau is not engaged.

A rejection may be withdrawn in whole or in part. Such withdrawal may also take the form of
a declaration that protection is given to the industrial models or to some of the industrial
designs that are the topic of the global registration process.

10.1.11 What are the Effects of the International Registration?

If no rejection is notified within the prescribed time limit by a specified Contracting Party (or
if such request has subsequently been withdrawn), the impact of the global registration in that
Contracting Party, under the law of that Contracting Party, is as a grant of protection.

Therefore, it must be emphasized that the Hague System is simply a global procedure
arrangement. Any substantive element of privacy is completely an issue for each designated
Contracting Party's national legislation

10.1.12 Duration of Protection

For an original period of five years, international registrations are impacted.

They may be renewed for a further five-year period. The minimum protection period for each
designated Contracting Party shall be at least 15 years, subject to renewal and up to the
expiry of the total protection period permitted by the respective laws of those Contracting
Parties.

Renewal applications must be submitted to the International Bureau together with the
payment of the appropriate renewal fees. The electronic renewal interface (E-renewal)
accessible on the WIPO website (www.wipo.int/hague/en) may be used to renew
international registrations.

Renewals can be made for all or some of the industrial designs included in the international
registration and for all or some of the Contracting Parties designated.

10.1.13 Changes in the International Register

The following modifications can be registered in the International Register, which may
influence a global registration:

a. Change the holder's name and address;

b. Change in ownership of an international registration (for all or some of the designated
Contracting Parties and/or for all or some of the designs of industry);

c. Renunciation of all industrial designs for any or all of the Parties appointed; and

d. Limiting only certain industrial designs concerning any or all of them.

An application for recording such changes must be submitted on the appropriate official form
to the International Bureau and must be accompanied by the charges specified. Information
about such modifications is registered in the International Register and released for third-
party data in the Bulletin.
10.1.14 Advantages of Using the Hague Agreement

• Applications seeking protection no longer need to file a separate application in each of the
CPs:

1. One set of drawings

2. Single IDA prepared in one language; and

3. Can be electronically filed by anyone.

• Up to 100 different designs in the same class may be included in a single application
(may pay each design).

EU designations gain you protection in non0 EU countries such as:

1. Switzerland,

2. Iceland,

3. Norway, and

4. Outside of the EU, such as Turkey and Ukraine.

• Centralized formality review by WIPO.
• CPs can obtain design protection for their designs with minimum formalities and expense.
• No need to monitor multiple renewals or pay a series of renewals fees, pay directly to the

IB.
• No petition for color drawings (applies to all design applications, not just IDAs).

The specification must contain a reference to color drawings or photographs.

Minimizes law firm fees – avoid multiple filings, one fee to be paid.

• Minimizes administration – bypasses additional 6-month inquiry.
• Broader and quicker initial coverage.
• The application will publish, but publication can be delayed.

10.1.15 Disadvantages of using the Hague Agreement

• National applications refused by a designated CP require local counsel.
• Initial Notice of Refusal will be sent to original counsel:
• Possibility of miscommunications or late notifications.
• Each CP applies its laws for patentability/registrability.
• A “Characteristic Feature” is not required in the US, as in other countries (Italy only),

which may serve to later limit the claim in the US.
• Exact drawing requirements for each CP must be considered when preparing

drawings.
• No RCE/CPA allowed in an IDA must file a continuation application or another IDA.

10.2 INTERNATIONAL CASES

10.2.1. Apple vs. Samsung

Facts

Apple submitted a suit of 4 design patents covering the basic shape of the iPhone on January
4, 2007, 4 days before the iPhone was launched to the market. These were followed up by a
huge filing of a color design patent covering 193 screenshots of different iPhone graphical
user interfaces in June of that year. It is from these filings along with Apple's utility patents,
registered trademarks, and trade dress rights, that Apple selected the particular intellectual
property to enforce against Samsung.16

Apple sued its component supplier Samsung, alleging in a 38-page federal complaint on April
15, 2011 at the United States District Court for the Northern District of California that several
of Samsung's Android phones and tablets, including Nexus S, Epic 4 G, Galaxy S 4 G, and

16 Yukari Iwatani Kane & Ian Sherr, ‘Apple: Samsung Copied Design’, available at:
https://www.wsj.com/articles/SB10001424052748703916004576271210109389154 (last visited on Sept 15th,
2019).

Samsung Galaxy Tab, infringed Apple's intellectual property: its patents, trademarks, user
interface and style.17

Apple's complaint included particular federal claims for patent infringement, false origin
designation, unfair competition, and trademark infringement, as well as state-level claims for
unfair competition, infringement of common law trademarks, and unfair enrichment.18

Apple's proof presented to the tribunal included side-by-side iPhone 3GS and i9000 Galaxy S
picture comparisons to illustrate the supposed similarities in packaging and app icons.
However, the pictures were later discovered to have been manipulated to make the sizes and
characteristics of the two distinct products appear more similar, and Samsung counsel
accused Apple of presenting false proof to the tribunal.

South Korean Courts

Samsung lodged a lawsuit in the Central District Court in Seoul on April 2011 quoting five
breaches of the patent. A panel of three judges in Seoul Central District Court issued a split
decision in late August 2012, ruling that Apple infringed two Samsung technology patents,
while Samsung infringed one of Apple's patents. The tribunal granted both firms tiny
damages and ordered a temporary suspension of production of the infringing products in
South Korea; however, none of the prohibited products were the recent Samsung or Apple
models.19

The tribunal held that over the so-called "bounce-back" impact in iOS, Samsung breached
one of Apple's utility patents and that Apple breached two of Samsung's wireless patents. The
claims of Apple that Samsung copied the iPhone and iPad designs were considered invalid.
The tribunal also held that there was "no chance" that customers would confuse the two
brands ' smartphones, and that the smartphone icons from Samsung did not infringe Apple's
patents.20

17 Nilay Patel, ‘Apple sues Samsung: a Complete Lawsuit Analysis’, available at:
https://www.theverge.com/2011/04/19/apple-sues-samsung-analysis (last visited on Sept 15, 2019).
18 Apple Inc. v. Samsung Electronics Co. Ltd. et al, United States District Court, available at:
https://cand.uscourts.gov/lhk/applevsamsung (last visited on Sept 15, 2019).
19 Christina Bonnington, ‘South Korean Court Rules Apple and Samsung Both Owe One Another Damages’,
Wired (2012), available at: https://www.wired.com/2012/08/s-korea-court-rules-damages/ (last visited on Sept
15, 2019).
20 Ibid.

However, in 2013 a court in South Korea went in favor of Apple. They rejected a Samsung
Electronics case in which the firm attempted to prevent purchases of certain South Korean
Apple devices and tablet computers. The Court said that Samsung's mobile messaging
technology patents had not been infringed by Apple. It rejected Samsung's request for 100
million earned, or $95,000, in damages and a marketing prohibition on elderly South Korean
iPhone and iPad designs..21

Japanese Courts

In Japan's Tokyo District Court, Samsung's complaint cited two infringements. Apple filed
other patent suits against Samsung in Japan, most notably one for the feature of "bounce-
back." Samsung also sued Apple, claiming infringement of Samsung's patents on the iPhone
and iPad.22

On 31 August 2012, the Tokyo District Court held that Samsung's Galaxy smartphones and
tablets did not infringe an Apple technology patent that synchronizes music and videos
between phones and servers. The Japanese panel of three judges also granted legal costs to
Samsung to be reimbursed. Chief Justice Tamotsu Shoji said: "The products of the defendant
do not appear to have used the same technology as the products of the plaintiff, so we reject
the claims [Apple ] produced”.23

German Courts

In August 2011, Apple's application for an EU-wide preliminary injunction was granted by
the Landgericht court in Düsseldorf, Germany, barring Samsung from purchasing its Galaxy
Tab 10.1 phone on the basis that Samsung's item was infringed on two of Apple's interface
patents. The Court rescinded the EU-wide injunction after hearing Samsung's accusations of
proof tampering and awarded Apple a lower injunction that applied only to the German

21 Eric Pfanner, ‘Korean Court Rejects Samsung Lawsuit Against Apple’, The New York Times (2013),
available at: https://www.nytimes.com/2013/12/13/technology/korean-court-rejects-samsung-lawsuit-against-
apple.html (last visited on Sept 15, 2019).
22 Chico Harlan, ‘Tokyo Court finds no Samsung infringement on Apple patent in latest in global battle’, The
Washington Post (2012), available at: https://www.washingtonpost.com/world/tokyo-court-finds-no-samsung-
infringement-on-apple-patent-in-latest-in-global-battle/2012/08/31/49b14bf4-f348-11e1-adc6-
87dfa8eff430_story.html?noredirect=on (last visited on Sept 15, 2019).
23 Hirocko Tabuchi, Tokyo Court Hands Win to Samsung Over Apple', The New York Times (2012), available
at: https://www.nytimes.com/2012/09/01/technology/in-japan-a-setback-for-apples-patent-
fight.html?mtrref=www.google.com&gwh=35CDD7D3009568F953DB44B51FEE16FA&gwt=pay&assetType
=REGIWALL (last visited on Sept 15, 2019).

industry.24 Samsung also pulled the Galaxy Tab 7.7 from Berlin's IFA electronics fair due to
the ruling preventing marketing of the device before the court was set to make its ruling on
September 2011.25

In the same time period and in similar cases of related legal strategy, Apple filed
contemporaneous suits against Motorola about the Xoom and against German consumer
electronics reseller JAY-tech in the same German court, both for design infringement claims
seeking preliminary injunctions.26 On September 9, 2011, the German court ruled in favor of
Apple, with a sales ban on the Galaxy Tab 10.1.27

The Court discovered that the patents of Apple were infringed by Samsung. Johanna
Brueckner-Hofmann, the presiding judge, said there was a "definite sense of resemblance."
The judgment would be appealed by Samsung. In March 2012, both the Apple and Samsung
instances concerning possession of the "slide-to-unlock" function used on their corresponding
smartphones were rejected by the Mannheim state court magistrates. 28

In July 2012, the Munich Higher Regional Court Oberlandesgericht München approved the
rejection of Apple's request for a preliminary injunction by the reduced Regional Court on
Apple's allegation that Samsung infringed Apple's "overscroll bounce" patent; the appealable
ruling of the appeal court confirmed the February judgment of the higher court that doubted
Apple's patent's legitimacy. On September 21, Mannheim Regional Court held in favor of
Samsung that it did not breach the proprietary characteristics of Apple concerning touch-
screen technology.29

24 Chris Foresman, ‘Apple Stops Samsung, wins EU- wide injunction against Galaxy Tab 10.1’, ARS Technica
(2011), available at: https://arstechnica.com/gadgets/2011/08/samsung-facing-eu-wide-injunction-against-
galaxy-tab-101/ (last visited on Sept 15, 2019).
25IFA 2011: Samsung removes the Galaxy Tab 7.7 from its booth, Money Control (2019), available at:
https://www.moneycontrol.com/news/technology/ifa-2011-samsung-removes-the-galaxy-tab-7-7-from-its-
booth-2038235.html (last visited on Sept 15, 2019).
26 Matt Macari, ‘ German Court rejects Apple’s claim that Motorola Xoom tablet infringes on I Pad design’,
The Verge( 2012), available at: https://www.theverge.com/2012/7/17/3164792/german-court-motorola-xoom-
tablet-does-not-infringe-ipad-design (last visited on Sept 15, 2019).
27 Doug Smith, ‘Apple scores another patent victory Samsung Galaxy Tab 10.1 banned in Germany’, Mobility
Digest (2011), available at: http://mobilitydigest.com/apple-scores-another-patent-victory-samsung-galaxy-tab-
10-1-banned-in-germany/ (last visited on Sept 15, 2019).
28 Tom Warren, ‘Samsung loses second patent suit against Apple in Germany’, The Verge (2012), available at:
https://www.theverge.com/policy/2012/1/27/2751869/samsung-loses-second-german-patent-suit-with-apple (
last visited on Sept 15, 2019).
29 Jun Yang & Karin Matussek, ‘Apple Loses German Court Ruling against Samsung in Patent Suit’,
Bloomberg (2012), available at:https://www.bloomberg.com/news/articles/2012-09-21/apple-loses-german-
court-ruling-against-samsung-in-patent-suit (last visited on Sept 15, 2019).

Italian and French Courts

Shortly after the launch of the iPhone 4S, Samsung lodged in court proceedings in Paris and
Milan to further prevent Apple's iPhone revenues in France and Italy, claiming that the
iPhone infringed two distinct Wideband Code Division Multiple Access permits. Samsung
allegedly identified the French and Italian economies as main electronic commerce industries
in Europe and prevented moving home to the German tribunal where she had won a round
previously in her fight with Apple.

British Courts

Samsung applied to the Samsung Electronics (UK) Limited & Anr v. Apple Inc. High Court
of Justice, Chancery Division, for a statement that its Galaxy tablets were not too similar to
the products of Apple. Apple counterclaimed, but Samsung prevailed after a British judge
ruled that the Galaxy tablets of Samsung were not sufficiently similar to the iPad of Apple. In
2012, a judge at the High Court in London had originally ruled in July that the look of
Samsung's Galaxy Tab computers was not too similar to designs registered in connection
with the I Pad. He said at the time that Samsung's devices were not as "cool" because they
lacked Apple's "extreme simplicity".30

U.S. Courts

The patent battle began in 2011, leading to a $1 billion decision in favor of Apple. But there
it didn't finish. A sequence of requests moved the conflict back and forth to the Supreme
Court as the firms continuously rehashed which patents were infringed and, more lately, just
how much Samsung pays Apple due to the breach. The situation revolved around a range of
android development and service inventions, such as zoom touch and house monitor phone
board. But, while the fight was hashed out using particular patents, the battle was eventually
about whether in the beginning days of smartphones Samsung reproduced Apple to achieve
an advantage. The jury agreed it had in a lot of respects.31

30 Apple loses UK tablet design appeal versus Samsung, BBC News (2012), available at:
https://www.bbc.com/news/technology-19989750 (last visited on Sept 15, 2019).
31 Jacob Kastrenakes, ‘Apple and Samsung settle the seven-year-long patent fight over copying the I Phone’,
The Verge (2018), available at: https://www.theverge.com/2018/6/27/17510908/apple-samsung-settle-patent-
battle-over-copying-iphone (last visited on Sept 15, 2019).

There was another significant patent battle between Apple and Samsung, which was first
established in 2014 but was not over until last year. Apple earned $120 million in that event
over its slide-to-unlock patent violations and several others. The two firms also had
international patent battles, but in 2014 they decided to cancel those proceedings.32

10.2.2. Automotive Body Parts Association vs. Ford Global Technologies, LLC

Ford Global Technologies (Ford) is an initial producer of machinery (OEM) with design
patent numbersD489, 299 and D501, 685 addressing the decorative characteristics of the Ford
F-150 truck nose cap and dashboard engineering, respectively. Automotive Body Parts
Association (ABPA) is an organization of businesses that include aftermarket components
providers, including Ford trucks. In a claim lodged with the International Trade Commission
(ITC), Ford earlier claimed violation by some of ABPA's representatives of these two design
patents, as well as others. That issue has been resolved.33

The Federal Circuit investigated the distinctions between patents for construction and utility
patents on attraction. While design patents safeguard "fresh, initial and decorative layout for
a manufacturing item," utility patents are patentable based on their features. Ultimately, the
Court upheld the District Court's decision, dismissing the ABPA's multiple claims and
implementing well-established law to consider Ford's patents legitimate and enforceable. The
Federal Circuit strongly dismissed claims that a design's esthetic attraction indicates that a
design patent is misdirected to operational rather than decorative elements of an item, and
therefore void. 34

In creating this claim, ABPA attempted to analogize the Ford design patents with the design
patents in Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996), were models
for a blade part of a button were assumed to be operational depending on the accepted reality
that the respective lock would not be operated by any alternately constructed blade. Similarly,
it said, alternative designs for Ford truck headlamps and hoods would not do, because they
were not aesthetically acceptable to Ford truck owners. The Federal Circuit disagreed:35

32 Ibid.
33 Majid AlBassam & William Gvoth, ‘Ford Scores Win at the Federal Circuit in Design Patent Case, The
National Law Review (2019), available at: https://www.natlawreview.com/article/ford-scores-win-federal-
circuit-design-patent-case (last visited on Sept 15th, 2019).
34 Ibid.
35 Ibid.

"ABPA argues that Ford's hood and headlamp designs are functional because they
aesthetically match the F-150 truck. But ABPA does not identify, nor can we find, any design
patent case ruling aesthetic appeal of this type of functionality. We hold that, even in this
context of consumer preference for a particular design to match other parts of a whole, the
aesthetic appeal of a design to consumers is inadequate to render that design functional."

The Court dismissed ABPA's further claims that the trademark law notion of "esthetic
features" should be transferred to design patents, discovering no precedent in supporting the
implementation of this notion to design patents and stating persuasive distinctions between
trademarks and design patents that would not promote such a request. ABPA also asserted
that safe products are not a consumer issue and that Ford's layout rights should–as a subject
of decision–be enforceable only on the F-150 vehicles OEM industry.

The Federal Circuit dismissed the concept that the drawings contained in Ford's design
patents were not a question of interest to stop customers, stating proof that customers pick
substitute components comparable to the components embodying the safe model depending
on aesthetic similarity to initial F-150 truck components. The Court dismissed the original
business claims of the ABPA relying on sufficient proof of the significance of aesthetic
presence on the industry for aftermarket components.

The Federal Circuit further rejected ABPA’s “attempts to develop design patent-specific
exhaustion and repair rules,” noting:

“[W]e apply the same rules to design and utility patents whenever possible.”

In this respect, the Court first dismissed the claims of ABPA that Ford's patents are
unenforceable under the doctrine of exhaustion against aftermarket vendors. ABPA argued
that exhaustion allows Ford's models to be used on substitute components designed for use
with the F-150 truck. ABPA's effort to expand the privilege of transfer to include substitute
components was also dismissed by the Federal Circuit. The Federal Circuit decided that an
F-150 truck buyer is entitled to fix the particular components on the truck, but that this
privilege does not allow a third party to generate papers that embody the safe features of
those components.

10.2.3. Motorola Mobility v. Apple Inc.

The iPhone patent spat between Apple and Motorola traced back to 2010. Apple sued
Motorola Mobility for infringing its patents in one situation, while Motorola accused Apple
of infringing three of its patents in a distinct situation. The complaint was rejected after being
merged before going to court two years earlier but was resurrected last month as a portion of
a judgment of the Federal Appeals Court. There have also been problems with the U.S.
International Trade Commission, as well as in Germany where there have been real retail
bans.36

Although not as high-profile as the one between Apple and Samsung, it rapidly increased
after Google announced intentions to purchase Motorola Mobility in 2011 for $12.5 billion.
For once, that meant that over smartphone patents, something that hadn't occurred yet, Apple
and Google were trying top to toe in a trial. Then matters became complex previously this
year when Google announced intentions to sell Motorola to Lenovo at a $2.91 billion fire
sales cost. The two companies decided to dismiss all lawsuits against one another. However,
the pair did not agree to any cross-licensing patent agreement that would have signaled a
larger peace between the two companies.37

10.2.4. Markman v. Westview Instruments, Inc.
The Petitioner, Markman (Petitioner), brought a patent infringement suit against the
Respondent, Westview Instruments, Inc. (Respondent). The jury interpreted expert witness
testimony and held for the Petitioner. The Judge directed verdict for the Respondent stating
that the jury interpreted the information incorrectly.
Synopsis of Rule of Law. In some cases where it is unclear as to whether a judge or jury
should decide upon terms of art in a case that is traditionally decided by a jury, precedent
states that, judges, because of their experience may be more capable to define the terms. 38

36 Josh Lowensohn, Apple and Google's Motorola Mobility settle a long-running patent lawsuit, The Verge
(2014), available at: https://www.theverge.com/2014/5/16/5725154/apple-and-motorola-mobility-settle-long-
running-patent-lawsuit (last visited on Sept 15, 2019).
37 Ibid.
38 Law School Case Brief, LexisNexis, available at:
https://www.lexisnexis.com/community/casebrief/p/casebrief-markman-v-westview-instruments (last visited on
Sept 15th, 2019).

Facts

The Petitioner in this infringement suit owned a patent for his inventory control and reporting
system for dry cleaning stores. The patent described a system that could monitor and report
the status, location and movement of clothing in a dry-cleaning establishment. The system
consisted of a keyboard and data processor to generate written records for each transaction
and included a bar code readable by optical detectors operated by employees who logged the
progress of clothing through the dry-cleaning process. 39

The Respondent’s product, the Exponent, also included a keyboard and processor and it listed
charges for the dry-cleaning services on bar-coded tickets that could be read by portable
optical detectors.

Petitioner brought an infringement suit against Respondent and Althon Enterprises, an
operator of dry-cleaning establishments using Respondent’s products. Respondent answered
that Petitioner’s patent was not infringed by its system because the Respondent’s system
functioned merely to record an inventory of receivables by tracking invoices and transaction
totals, rather than recording and tracking an inventory of articles of clothing. Part of the
dispute hinged upon the meaning of the word “inventory.” 40

A jury heard the case and heard from one of Petitioner’s witness who testified about the
meaning of the claim language. The jury compared the patent to Respondent’s device and
found an infringement of Petitioner’s claim. 41

The District Court nevertheless granted Respondent’s deferred motion for judgment as a
matter of law, reasoning that the term “inventory” in Petitioner’s patent encompassed both
cash inventory and the actual physical inventory of articles of clothing. Since Respondent’s
system could not track items it directed a verdict on the ground that Respondent’s device did
not have the means to maintain an inventory total and could not detect and localize additions
to inventory as well as deletions from it as required by Petitioner’s claim. 42

Petitioner sued, arguing that the District Court erred in replacing its building of the contested
request word "stock" with the building it had been provided by the jury. The Federal Circuit
Court of Appeals of the United States confirmed that the definition of the conditions of the

39 Ibid.
40 Ibid.
41 Ibid.
42 Ibid., 33.

request was the exclusive jurisdiction of the tribunal and that the Seventh Amendment of the
Constitution of the United States was compatible with that principle.

Issue

Whether the definition of a so-called patent claim, the part of the patent paper defining the
range of the freedoms of the patent proprietor, is a question of law completely exclusively for
the tribunal or a Seventh Amendment guarantees that a jury will determine the significance of
any contested art word for which expert testimony is provided.43

Discussion

Part of the conflict depended on the jury and judge's analysis of the significance of the term
"stock." The court's first issue was whether the source of the intervention was historically one
that was either attempted at law or in equity. If a point of law was raised, the second issue
was whether the specific choice of the court had to be taken by the jury in order to maintain
the content of the common law as it occurred in 1791.44

As for the first question, before the merger of the courts of law and equity, the Court
compared the statutory action with actions brought in the courts of England in the 18th
century. It discovered that this situation was no distinct since patent infringement instances
were historically attempted at law. The second issue was the harder one. 45

It questioned if a specific problem in a court proceeding (here building a copyright statement)
was actually a court problem itself, so a judge would decide. But when, like here, there was
no definite response from history. The Court had to create a decision on the validity of the
constitutional provision for the seventh amendment relying on the current precedent. 46

Where practice did not answer any concerns, precedent made it possible for operational
factors to choose whether magistrates or juries could properly describe conditions of practice.
Because copyright building was, in specific, a unique occupation needing unique preparation
and exercise, the magistrate was more inclined to offer such situations a correct
understanding than would a jury because of his training and discipline. Therefore, in carrying

43Markman v. Westview Instruments, Inc. Quimbee, available at: https://www.quimbee.com/cases/markman-v-
westview-instruments-inc (last visited on Sept 15th, 2019).
44 Ibid.
45 Ibid.
46 Ibid.

out such a obligation, the judge was more probable to be right and precise than could be
anticipated to be a jury.