Wednesday, November 16, 2011

Samsung modified and relaunched Galaxy Tab 10.1 in Germany, may steer clear of design right infringement

[Update] On Thursday, November 17, 2011, Yonhapnews cited an official confirmation from Samsung that the Galaxy Tab 10.1N, a version with two design modifications for the German market, exists and will go on sale next week. [/Update]

In its intellectual property spat with Apple, Samsung proves resilient, perseverant, and courageous. If there ever was any doubt about those virtues (not on my part anyway), here's the latest example: the Galaxy Tab 10.1 is once again available in Germany, despite a preliminary injunction that Apple won in early August and the Dusseldorf Regional Court confirmed in September.

Samsung has designed and slightly renamed the product (it's now called Galaxy Tab 10.1N), apparently in an attempt to steer clear of infringement of Apple's asserted Community design, a design-related intellectual property right. reported on this today. Mobiflip points to an online store that offers it and published photos of the old (banned) and the new design. For example, as notes, the metal frame -- the so-called bezel -- now wraps all around the edge to the extent that a part of it covers the margins of the front side. That is a characteristic of at least one of the devices rejected by the court as prior art. It seems to me that this design resulted from teamwork between Samsung's German lawyers and its product design group.

Another change relates to the location of the loudspeakers.

I'm not in the position to say that this product definitely steers clear of infringement. That's up for the courts to decide. But without a doubt, Samsung has upped the ante for Apple and its lawyers in case they wish to request a new injunction or allege that this constitutes an infringement of the existing one.

A Community design is infringed only if all of its key characteristics are matched, or if that is the overall impression on an informed person. The Galaxy Tab 10.1N still has rounded corners, but Apple doesn't have an exclusive right on just one such feature: what is protected is a set of characteristics and the overall impression it makes.

I don't know what Samsung's strategy is, but if I were (which I'm not) an adviser to them, I'd probably recommend them to carefully test the waters and try to find out exactly where the courts draw the line and find an infringement. I wouldn't recommend to Samsung to fundamentally depart from its original design. I would try to identify the "sweet spot" at which the product still looks somewhat similar to Apple's products, but just about distinctive enough that there's no infringement. If necessary, I would risk a second preliminary injunction and then launch the product a third time. But that's my thinking and Samsung could be more -- or less -- conservative in its approach.

It's not unusual for a company to try to work around an injunction, and it's not even the first time for Samsung to do this in its dispute with Apple. In fact, Samsung also worked around an injunction granted by a Dutch court against several of its smartphones by simply changing the way users flip pages in the photo gallery. (I, too, noticed that change as a result of a firmware update.)

In an intellectual property dispute, there are always four hurdles that a right holder must clear in order to have serious business impact:

  1. There must be a valid intellectual property right. (Samsung is, in fact, contesting the validity of Apple's asserted Community design, Yonhapnews reported last month.)

  2. That right must actually be infringed. (Samsung is also contesting that, but the Dusseldorf Regional Court sided quite clearly with Apple on these first two questions.)

  3. The infringer must not be licensed, or entitled to a license. That is a non-issue here, or at least there's no indication that Apple has any obligation to grant Samsung a license or that Samsung can come up with whatever equitable defense. (It is an issue for most of the patents Samsung is asserting against Apple in many jurisdictions.)>

  4. And even if all of the foregoing is the case, a court victory means little unless the infringed intellectual property right is also very hard to work around (meaning that it's very costly to do so and/or impairs the usefulness, user experience or perceived value of a product).

It's not easy to knock out a company like Samsung. That company can afford to try out different designs until the courts accept it. A small player might not even be able to afford all of the litigation this provokes. For Samsung, that's an inconvenience and an expense it would rather avoid, but not a big deal.

Earlier today I commented on the delay Apple has in the United States, where a federal judge still hasn't ruled on Appe's motion for a preliminary injunction (almost five weeks after the related hearing). If the Galaxy Tab 10.1N is above board in Germany, it appears even more likely to be acceptable in the U.S. market. My interpretation is that the corresponding U.S. design patent on a tablet computer design is narrower than the Community design.

Like I wrote earlier today, I understand that Apple wants to protect its design-related rights, but if it wants to defeat Samsung in court, it will have to rely on utility (in this case, hardware and software) patents.

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