Apple Computer Inc
[2007] ADO 5
•20 September 2007
DESIGNS ACT 2003
DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Design 303618 in the name of Apple Computer Inc, and examination.
Delegate: Dave Herald Representation: Applicant: C Carter, Patent Attorney of Davies Collison & Cave
Decision: Objection in examination. Registration revoked. Background
Design 303618 was filed on 18 April 2004 claiming convention priority from a US Design Patent application. The application identified the product as a ‘Connector system’. Following a formalities report, the product identification was changed to ‘A Connector Device’. The design was duly registered and shortly thereafter the owner requested examination. Three adverse examination reports were issued, and close to the expiration of the time for completion of examination the owner requested to be heard. The hearing took place in Sydney on 14 August 2007.
An initial matter that arose at the hearing was the nature of the product. The product is shown as a rectangular electrical connector, but no express or implied size was apparent. The attorney advised that the product was in fact a USB Type-A connector that is typically used on computers and related devices. The attorney noted that USB connectors were subject to strict industry standards. At the hearing the attorney foreshadowed a request to amend the product name to “A universal serial bus (USB) Type-A connector device’. Subsequently such a request was filed. I have considered that request against the requirements of s.66(6), and I am satisfied that the amendment meets those requirements. In particular, while the application documents as filed (as well as the subsequently filed priority document) make no express reference to ‘USB’, the fact that the examiner cited USB connectors against the design is a clear indication (in the circumstances of this design) that an informed user would have understood the design related to at least USB connectors. Accordingly I consider the requested amendment to be an allowable amendment, and hereafter I have considered the design as if the amendment had been allowed.
Nature of the Design
The design relates to USB ‘Type-A’ connectors. A USB Type-A connector has a rectangular housing, with the width being about 4 times the height. Within that housing there is an insulating substrate occupying one half of the height of the housing, with the exposed surface bearing electrical contacts. The socket also contains an insulating substrate, which is similarly located in the socket housing – except there is a small gap between the base of the substrate and the housing to accommodate the housing of the connector. The arrangement is such that a connector can only be mechanically inserted into the mating socket in one orientation. And in that orientation, electrical connection is made between the electrical contacts on the facing surfaces of the two substrates.
At the priority date such USB connectors had 4 electrical contacts on the insulating substrate, in a predetermined location. It should be noted that the use of electrical contacts at predetermined locations is a basic requirement for interconnectivity of the electrical contacts in any multi-contact connector /socket arrangement.
The innovation inherent in the connector the subject of this design is the provision of additional electrical contacts interleaved with the standard USB electrical contacts – such that the connector has nine electrical contacts rather than the usual four. The positioning is such that (presumably) the extra contacts are ineffective when the connector is connected with a standard USB Type-A socket. However, when inserted into a compatible socket the extra contacts provide for enhanced electronic connectivity between the devices.
The representations show the connector device with the connection housing, internal insulating layer, and electrical contacts, in solid lines, while other elements such as the grip containing the housing, and the electrical cable are shown in dotted lines. I take this as indicating that the product is an electrical cable bearing a USB connector, and that the visual features that have been applied to the product to create the design relate to the shape and configuration of the housing, insulating layer and surface contacts of the USB connector – as indicated by the solid lines.
The citations maintained by the examiner relate to the standard USB Type-A connector. That connector has existed for many years prior to the priority date. In short, the issue in the present case reduces entirely to the question of whether the current design bearing nine contacts on the surface of the insulating layer inside a USB housing is distinctive having regard to the usual USB connector that has only four contacts.
At the hearing the attorneys submissions were (in summary):
·As the examiner could not visually see the contacts in the various cited documents, the examiner erred in her assessment of the prior art;
·The art of electrical connectors was highly developed, but the examiner failed to have regard to the number and degree of similarity between the prior art designs;
·The examiner placed too much regard on the housing and insulating layer – which are part of the industry standard – and not enough emphasis on the configuration of the extra contacts. Relating to this, the examiner failed to have regard to the freedom of the creator of the design to innovate – since the housing and insulating layer configurations are dictated by industry standards; and
·The examiner failed to give any, or appropriate, weight to applying the standard of the informed user.
At the hearing the attorney handed up a declaration by himself (accompanied by various documents relating to the USB standards), and a declaration by a G Boorman (who is the ‘National IT Manager of Davies Collison Cave’) which is relevant to the question of the standard of the informed user. Mr Boorman notes that he has made purchasing decisions (to a value of around $500,000 since 2002) for his firm concerning devices and equipment that use industry standard USB connectors. [I note that the fact that he is a senior employee of the firm representing the design owner does raise questions of independence and the potential for bias, but ultimately nothing depends on these issues.] He indicates that he has been asked to make a comparison of the visual appearance of Apple’s design with standard USB connectors, and states:
·‘In noting the similarity and differences, I noted that the physical dimensions of the metal casing of Apple’s design appears to be the same as shown in both the prior design and the physical USB type-A connector. It is my understanding that there is an industry standardization concerning the physical dimensions and layout of the casing of a USB connector.
·Notably, I quickly realized that Apple’s design shows an unusual number and arrangement of electrical contacts normally found on a plastic tongue inside the metal casing of the USB connector. The nine electrical contacts shown in Apple’s design is visually impacting as an industry standard USB type-A connector clearly has only four electrical contacts visible. I also noted that the electrical contacts in Apple’s design are of differing width, another unusual visual difference.
·In visually comparing the designs I largely discounted the casing, as this appeared to me to be standard and of little visual importance other than for standardization compliance of the casing dimensions. In my opinion, the nine electrical contacts shown in Apple’s design readily distinguish the connector shown in {Apple’s design} from what I believe to be standard and well known USB connectors…’
The Informed User Standard
Critical to the assessment of distinctiveness under s.19 is the application of the standard of the informed user, as required by s.19(4). This standard effectively provides the environment or mindset against which the various issues set out in s.19(1) to (3) must be assessed. An incorrect assessment of the standard of the informed user can readily lead to an incorrect conclusion on the ultimate question of distinctiveness.
It is also pertinent to note that the principle of the informed user standard requires me (as the decision maker) to assess and apply the standard of the informed user – and not merely accept the assertions of declarants, or other evidence, at face value. As set out in para 5.21 of Australian Law Reform Commission (ALRC) Report No 74, which report led to the Designs Act 2003:
Objective test. Whether or not a design is distinctive is intended to be an objective test. The court decides the issue by placing itself in the position of an informed user. It is not a subjective test whereby an ‘informed user’ assesses distinctiveness by reference to his or her own knowledge and the court simply adopts the informed user’s assessment. It is still a matter for determination by the court. The informed user describes the standard to be applied – not who can give evidence….
The present design is to a USB connector. As stated in the Wikipedia entry included with the material of the attorney’s declaration:
USB is intended to help retire all legacy serial and parallel ports. USB can connect computer peripherals such as mouse devices, keyboards, PDA’s, gamepads and joysticks, scanners, digital cameras and printers. For many of those devices USB has become the standard connection method. USB is also used extensively to connect non-networked printers; USB simplifies connecting several printers to one computer. USB was originally designed for personal computers, but it has become commonplace on other devices such as PDA’s and video game consoles. In 2004, there were about 1 billion USB devices in the world.
From this description it is readily apparent that the USB connector is in a different category to (for example) a LAN connector or an external video connector. The USB connector is used for a vast number of generic computer peripherals and other devices. The common (if not almost universal) incorporation of USB in devices such as game pads and joysticks, and use for connecting digital cameras to computers, is a clear indication that the USB connector is used by essentially anyone who has a modern home computer – as well as anyone in a work environment who uses a computer (irrespective of the level of the person in the organization.) In contrast a LAN connection or an external video connection are likely to be used only by a much smaller number of computer users, such users most likely having particular knowledge about the requirements for connecting such peripherals (e.g. the requirements for setting up an operational LAN connection), and an ‘ordinary’ computer user is far more likely to require the assistance of someone with IT expertise.
The USB port is clearly intended for use by the ‘ordinary’ computer user; it is not a port intended to be used primarily by IT experts. In my view the relevant informed user for the present design is a person who has general familiarity with computers, and is comfortable with purchasing and attaching USB-based peripheral devices to achieve the use they desire of their computing system. It is not the person who has acquired a computer but is uncomfortable with buying or attaching peripheral devices such as cameras and game boards. And it is not the IT expert who is familiar with all the intricacies of a computing system. Accordingly while it is apparent that Mr Boorman is likely to be a person who is very knowledgeable about computers, in my view he is not representative of the informed user standard. And there is nothing in his declaration to indicate that his comments are otherwise reflective of the informed user standard (as distinct from his own specialist-based views). Accordingly I consider the views Mr Boorman has expressed about the informed user standard are to be accorded low weight.
In assessing the informed user standard with respect to a USB connector, I am particularly conscious that for a USB Type-A connector:
· the highly elongate rectangular connector /socket configuration of the USB Type-A connector means that the user will immediately recognize that there are only two possible orientations of a USB connector relative to the socket (which, by way of contrast, is not the case for a USB Type-B connector – which is essentially square in outline);
· of those two orientations, only one will permit interconnection. In the other orientation the connector will not enter the socket, and no electrical connection can be effected.
These characteristics lead to what I believe to be the typical behavior of people connecting a USB connector to a computer. In my view there are three ways users approach the connection of a USB connector to its socket. The first (and I suspect the most common) is to simply try to plug the connector in the socket in one orientation. And if that doesn’t work, they will merely turn the connector upside down and try again. And this is done without looking inside the connector to assess on which side both the socket and connector have their respective insulating layers; it is easier and quicker to just try to insert the connector in one orientation, and if it fails, turn it upside down. The second is that people might have a quick look at the engagement end for the purpose of ascertaining which half contains the insulating substrate, and which half is void. Given the nature of the USB connector this view is a superficial view; in particular, it is not a view that would illuminate any visual features on the surface of the insulating substrate that faces the opposite side of the housing. A third way is for users to have regard to the USB icon that is frequently embossed on the outside of the connector on its ‘up’ side; again, the user would not look inside the connector.
This behavior is unlike what would be expected when connecting a DIN-type connector (used on computers many years ago, and still used on other electronic devices). For example, before being superseded by the USB port, a 6-pin mini-DIN connector was the usual connector for connecting a mouse to a computer). A DIN connector has a circular housing with a variable number of pins. To connect such a connector to an electronic device, the user will typically need to look inside the connector to assess whether the pin configuration (and any indents) matches the socket – both in orientation, and whether there is a compatible number of pin receptors in the socket [noting that the connector /socket could have 4, 5, 6 or 8 pins (at least)]. As a result users would inevitably gain some appreciation of the contact layout in the connector. Similar issues arise with D-type connectors, such as those typically used in legacy serial ports, as well as video and parallel ports (and, prior to being superseded by the 6-pin mini-DIN connector, for connecting a mouse to a computer). D-type connectors come in a wide range of sizes and pin numbers, and can be either male or female. For such connectors users typically need to make a visual comparison of the connector size, pin layout and gender to ensure compatibility, and as a result would inevitably gain some appreciation of the connector layout.
Accordingly, it is my view that the informed user of a USB connector has no awareness of the arrangement or number of contacts inside the connector.
For a visual feature to have an impact on the overall impression of the product, it is axiomatic that it must be a feature that the informed user has at least some awareness of (whether directly or indirectly). The fact that the visual features upon which the present design is based (the presence of nine contacts rather than the usual 4, with the extra contacts being relatively narrow and interleaved with the usual 4 contacts) would not be seen or noticed by the informed user means that these features cannot have any impact on the overall impression of the product. And since all the other visual features of the design are the standard features present in USB type-A connectors, the design prima facie is not distinctive.
The attorney has raised the issue of freedom to innovate as set out in s.19(2)(d). The concept of freedom to innovate derives from the 1991 EC Green Paper entitled The Legal Protection of Industrial Designs – see paras 5.5.8.3 and .4 of that paper, and para 5.25 of ALRC Report No 74. One facet relates to the situation where a design relates to something particularly new, and the need to interpret the scope of such designs broadly. The other aspect, of relevance to the present situation, is recognition that where the design of a product includes elements that are dictated by reason of regulatory or market constraints, the informed user will be aware of that fact, discount the significance of such features to the distinctiveness of the design, and will give greater weight to features that otherwise are not particularly pronounced in the appearance of the product. That is, when a user expects a product to have certain visual features, the user’s perception of the overall appearance of the product will be significantly affected by the contribution of ‘lesser’ features.
In the present case, the USB standard for Type-A connectors imposes tight constraints on the size and configuration of the housing, insulating layer, and the 4 usual contacts. The concept of freedom of the innovator to create requires the significance of these features to the overall appearance of the product to be downplayed (on the basis that they are required in any such product) – such that other features may be more dominant in the assessment of the overall appearance than might otherwise be the case. But whatever weighting one might apply to the ‘lesser’ visual features, those features must necessarily be ones which the informed user would notice when assessing the product; the concept of freedom to innovate cannot operate to elevate a feature that the informed user would not notice, into a feature that provides distinctiveness. Since in my view the informed user pays no attention to the internal surface of a USB connector, the contact arrangement is not a visual feature that can be accorded greater relevance because of the concept of ‘freedom to innovate’. The contact arrangement remains a visual feature not noticed by informed users, and therefore of no impact on the overall impression of the product.
In coming to these conclusions, I am very conscious that I do not have before me any declaratory evidence from people who fall into the category of informed user for this product. However I am obligated to assess the design by applying the standard of an informed user. In that regard the Registrar:
… is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory …, he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the {Commissioner} based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.
See Commissioner of Patents v Emperor Sports Pty Ltd, [2006] FCAFC 26, 67 IPR 488, at paragraph 24. In this regard (and despite the declaration of Mr Boorman) I have formed the view based on my own knowledge, including the observations of behaviour of work colleagues, other acquaintances and consumers in general, that there is little doubt that informed users of USB connectors have no awareness of the internal contact arrangement in such connectors. On that basis I do not believe that this is a case where any ‘benefit of doubt’ considerations accrue to the owner. Rather this is a case where (in my view) it is ‘practically certain’ that the design is invalid for lack of distinctiveness.
Interestingly, the lack of visibility of the contacts in a USB connector is referred to in the attorney’s submissions, when he states (in part 1):
·None of the prior art designs identified by the examiner illustrate any arrangement of electrical connectors. The connectors are either not present or are not visible in the documentation provided by the examiner.
·As the examiner could not visually see any connector arrangement in the prior art designs, the examiner erred in how s.19 was applied…
The suggestion that the citations failed to disclose contacts, and were therefore distinguishable, is somewhat at odds with the existence of the tight industry standards for USB connectors – which would require their existence even if only by implication. More significantly, the invisibility of the contacts is consistent with my view that the informed user has no awareness of the internal contact arrangement in a USB Type-A connector.
I should further emphasize that the standard of the informed user must be applied as at the priority date. [s.15(1)]. If this USB connector became commonplace, it might well be the case that informed users would change their habits in certain environments such that they would look inside a USB connector to assess whether it was a standard four-contact connector, or the ‘enhanced’ nine-contact connector. But at the priority date of the design the USB Type-A connector was, to the best of my knowledge, only available in the standard 4-contact version. And with that connector there was never any reason for the user to look inside the connector and notice the contact configuration.
Conclusion
On my assessment of the standard of the informed user, an informed user at the priority date would not have had any regard to, or noticed, the internal contact configuration in a USB connector. Accordingly the present design, dependant as it is on the visual appearance of nine contacts rather than the usual four, does not embody any visual features that would render the design distinctive in overall impression compared to standard USB connectors. I am also satisfied that this ground of revocation could not be overcome by way of amendment under s.66.
Consequently, and subject to any notice of appeal being served on the Registrar within 28 days of this decision, or any such appeal being discontinued, I revoke Design 303618.
D Herald
Deputy Registrar20 Sep. 2007
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