Apple v Samsung: The ongoing war in Silicon Valley

The court was looking at a bevelled-edged front screen containing a colourful grid of 16 icons on the respective parties' tablets. Those same features are to be considered by the Supreme Court of the United States, where there remains a hard-fought registered design patent dispute in the US's highest appellate court. There is a long-established principle of legal construction that demands international comity when construing statutes, but HHJ Birss's supercool judgment remains unheeded.

The two key points in dispute are:

• When comparing two designs for infringement purposes, should unprotected elements also be compared? and

• Where only some features of a design are legally protected, should an award of infringer's profits be limited to those components?

The District Court found in Apple's favour on both and the Federal Circuit did not overturn those findings.

But back here in Blighty we decided those two issues some time ago. In 1928 in Jones and Attwood v National Radiator Co Ltd (1928) 45 RPC 252, High Court Judge Mr Justice Tomlin, when comparing the designs of competing boilers, decided that one compares the designs as a whole whether they embody novel features or not. By English standards the US courts have done no wrong.

In relation to the seemingly excessive damages Apple has been awarded, the English courts have already decided that damages are, of their very nature, compensatory only. A claimant can only recover for those parts of the infringed design that have been taken by the defendant.

Hence, in Celanese International Corp v BP Chemicals Ltd [1999] RPC the judge famously deployed a ship's whistle analogy: 'Someone invents a new form of tin whistle. With the aid of his patent agent he obtains a patent... Claim 1 is for the tin whistle. Claim 10 is for a funnel to which the new tin whistle is connected. Claim 15 is for a battleship with a funnel to which the tin whistle is connected... on an account of profits substance, not form, counts. What the defendant has to account for is the profit made by exploitation of the invention, i.e. the whistle, not profits made by exploitation of material or activities which are not attributable to the plaintiff's ingenuity, i.e. the rest of the battleship.'

As Samsung's legal team put it in their writ of certiorari filed last month before the US Supreme Court: 'Even if the patented features contribute 1 per cent to the value of Samsung's phone, Apple seeks to get 100 per cent of Samsung's profit.'

Perhaps the difference in the US and English approach is that these two bones of contention are jury and not specialist intellectual property judge issues, and, according to Samsung, the jury was not properly directed on either.

Mark Engelman is head of intellectual property at Hardwicke and an intellectual property research associate at St Edmunds College, Cambridge @hardwickelaw www.hardwicke.co.uk