Curvy Edges and a Credible Expert Witness: Apple Inc [2017] ADO 4 (16 May 2017)

On 8 March 2013, Apple, Inc (the Owner) filed a registration application under the Designs Act 2003 (Cth) (“the Act”) for an “Input mechanism for an earphone” (the Design). The Design was entered on the Register of Designs on 27 June 2013 and had a priority date of 8 September 2012.

Examination of the Design was requested on 25 July 2013. Several examples of prior art that were similar or related to the Design were then raised by the examiner. The earliest example was United States design patent number D597071 (the Earlier Design), called an “Input Mechanism” and had a publication date of 28 July 2009. The Earlier Design relates to an in-line controller used for a set of earphones, which is placed along an earphone cable and used to control various functions such as volume, starting or pausing a music player, and answering phone calls.

In Australia, a design must be found to be both “new” and “distinctive” upon comparison with the prior art base for the design as it existed before the priority date. This can include designs that were published in a document anywhere. Here, the Design was considered as “new” because it is not identical to the Earlier Design. The question then is whether the Design can be considered “distinctive” under s 16(1) of the Act.

As the Design Registrar’s delegate noted:

6.Section 16(2) of the Act states that a design ‘is ‘distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base’. Section 19 of the Act goes into more detail, by setting out the factors to be considered when assessing substantial similarity in overall impression. More weight is to be given to similarities between the Design and the prior art than to differences between them [4] I must also:

• have regard to the state of development of the prior art base for the Design[5]
• where only part of the Design is substantially similar to an example of prior art, have regard to the amount, quality and importance of that part in the context of the design as a whole,[6] and
• have regard to the freedom of the creators of the Design to innovate

Apple submitted that there is a distinction between “in-line controllers that are placed at the junction between the cable running to the device and to the two earphones” and “in-line controllers that sit along one of the ear phone cables (therefore having only two cable holes).” This was supported by a declaration from freelance tech journalist and MacWorld Australia editor Anthony Caruana. The hearing officer agreed with this distinction. (Apple also provided declarations from two other patent attorneys from their representatives’ firm.) The hearing officer noted, “11.Mr Caruana is presented as an expert witness, having been a freelance journalist and publication editor in the field of information technology for over 10 years. He has also personally owned and used a variety of earphones for mobile phones from several different sources, including from the Owner.” As it turned out, his evidence went a long way.

The evidence filed in the lead up to the hearing included an extensive search of the prior art base on Google Images as well as prior art searches on design patents in the United States of America, covering the period of 7 September 2007 to 7 September 2012. The results revealed a “very well developed prior art base” (to quote the hearing officer), with a substantial amount of variations on the overall form of an in-line earphone controller. A person familiar with in-line earphone controllers at the relevant date will have enough familiarity to note smaller differences in designs.

The art found in the search results as well as Mr Caruana’s declaration point to the following visual features common in the prior art base for the products related to the Design:

• An overall diameter close to the gauge of the cable
• A cylindrical or rectangular overall
• shape, in order to ‘look as much like the cable as possible’
• The appearance of being integrated into the cable
• Colouring similar to the cable

Mr Caruana also includes the following visual features as a way of distinguishing between designs:

• The number of buttons on the controller (related to the degree of functionality)
• The shape(s) and labelling of button(s)
• Colour
• The shape of the housing

The hearing officer noted that there are no visible buttons on the Design or the Earlier Design, but accepted that there are concealed buttons because the search results indicate that users can interact with three areas by applying pressure to points on the controller. Evidence as to “colour” was considered as irrelevant given the comparison involved line drawings.

When it comes to side-by-side comparison of the Design and the Earlier Design, the hearing officer was of the view that there are several areas of apparent similarity, but they are only to a small degree and unlikely to be noticed by the informed user. The configuration of the buttons and, to a certain degree, their shapes, are significant enough to be noticed by an informed user, but the side by side comparison shows that there are points of difference in the Design and the Earlier Design in both fact and number. The hearing officer noted in his conclusion around distinctiveness:

“30.There remains one area of similarity which carries significance: the configuration of the buttons and, to a certain degree, their shapes. While this is no doubt an important area of similarity for a user, there are points of difference significant both in fact and in number. 31.Mr Caruana’s point that overall shape of the housing is typically used by people familiar with the product to differentiate between designs in the market finds support in the review of the Design which is annexed to Schinella. This article states ‘what has changed is the inline-remote and mic, which is now roughly 25 percent larger with curvier edges.’ It is these curvy edges that stand counter to the similarity in the arrangement of the buttons. This is apparent in all representations, but is most dramatic in the perspective and end views. This curvature effects not only every edge, but transforms the end from a right-angled cylinder shape in the Earlier Design to the softer curved end of the Design. Through this, the housing appears as though it is made from two pieces instead of four.”

Ultimately, despite the number of similarities (which as per s 19(1) of the Act must be given greater weight than the differences), the hearing officer was convinced that the overall impression of the Earlier Design and the Design is that they are not substantially similar and that there are no grounds for revocation. As a result, the examination has been completed and a certificate of examination has been issued. This was a good result for Apple, assisted by a competent expert witness.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.