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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Virgin Atlantic airline attempted to enforce their patent and UK unregistered design rights in their Upper Class Suite (UCS) seat against Premium Aircraft Interiors (aka "Contour") for supplying a similar seat to Air Canada, who had earlier considered but decided against taking a licence from Virgin. The case is of interest in showing just how far a competitor can go in “taking inspiration” from a design without infringing. The mammoth 12 day trial resulted in a 93-page, 344 paragraph judgment – we read it, so you don’t have to!

According to the evidence, Virgin were playing catch-up with British Airways (BA). BA's fully flat first class seat/bed, introduced in 1996, was enthusiastically received in the design world. Design Week gave it the award for “Product of the Decade”. As the judge says, "All the main airlines decided that they needed to emulate BA". BA’s patented trick was to use a “herringbone” arrangement of seats and the competitors, including Virgin, used variants on essentially the same theme.

BA’s patent discloses two arrangements; an “outward herringbone” (commercially used by BA themselves and most other airlines afterwards) and an “inward herringbone”. Virgin’s own design was the first to commercialise the “inward herringbone”, and (until the alleged infringement) the only one to do so. It also won several design awards between 2003 and 2005.
In the course of the lengthy trial, the judge heard very extensive expert witness evidence – in a manner resembling a software copyright infringement action. That is unusual for a design case in the UK but perhaps inevitable here since there was also a patent action to be considered in the same trial.

Normally, in a case involving copying, showing that the competitor had access to the protected design, and showing similarity to that design, is sufficient to pass the burden of proof to the defendant to disprove copying. By way of backdrop, the expert evidence showed that copying is widespread in the industry:

“Since the airline industry is highly competitive, all airlines are constantly looking at their competitors' offerings. ... typically, an airline will analyse the product of its closest competitor and try to make its own product better. ... In the case of BA the LOPA [Layout of Passenger Area] for each of its aircraft is available on its website. The same applies to other airlines too. From this and other information an airline can study its competitor's PAU [Passenger Accommodation Unit]. It will also take photographs and make slides of the competing product. Airline staff and their consultants will also fly on rival airlines and, within the constraints imposed by the presence of cabin crew, will take measurements of their rival's PAU. These measurements can be quite detailed, including for example the angle of the seat pans, and the width of the seat. ... One of the processes will be an overlay of any new seat design over its nearest rivals ... Mr Moreno, Virgin Atlantic's expert, said in his report that if he had been asked to design a new flat-bed business class seat in 2001 his first step would have been to review the seats that were already on the market and assess their advantages and disadvantages.”

The facts in the present case were even more incestuous than this backdrop might suggest, since the defendant Contour had supplied Virgin’s own UCS seat, and their designers Acumen had previously designed the BA First seat, and 12 others for other airlines. The defendants attempted initially to maintain a “clean-room defence”: that despite the corporate connection with Virgin, their designers of the alleged infringement had not had access to Virgin’s design. However, this defence broke down when discovery showed that there were indeed overlapping designers and access to UCS documents.

There were clearly attempts (successful, as it seems) to design around Virgin’s patent, but a host of “smoking guns” from discovery showed continual knowing references to Virgin’s UCS design during the process of designing the infringement: it was referred to as "the "guess who" design", and features were described as "virginesque" "a la virgin", "Virgin style", "as per Virgin", and "as used on Virgin".

The resulting design was also similar – due to customer demands, perhaps more similar than the defendants had hoped when they began the design process. As per the Managing Director of Acumen, the designers, “to my eye there are obviously quite fundamental differences from the real Virgin product but certainly as a superficial representation of a Virgin product you could be forgiven for thinking, yes, that is a Virgin product.”

There were, moreover, contradictions and confusions in the defendants’ designers’ evidence as to how they arrived at the alleged infringement. At one point, the judge commented that “Even with this explanation I found it difficult to understand why Mr McKeever [the chief designer of the alleged infringement] had specifically asked for files showing “the Virgin product”.

However, the judge found that whatever had been copied, if anything, was not “the design”, by a process of filtration.
Initially, he commented on the complexity of the design process by way of a circus metaphor – “a very intricate balancing act” which “involves juggling a very large number of factors in a very constrained environment”. There was, in other words, limited design freedom.

It also appears to have been significant that Virgin did not in fact invent the “inward herringbone”; BA had already patented that, with the knowledge and involvement of Acumen prior to Virgin’s design.

Added to this, as noted above, the judge seems to have taken into account (wrongly, we think) the widespread industry practice of competitive analysis. He notes also, regarding the involvement of Acumen, that “any design house will draw on its experience in designing the kind of articles under consideration, and the customer will know that. ... Acumen were one of the leading designers of aircraft seating and over the years had built up a stock of valuable know-how. I do not find it in the least surprising that they drew on that experience and know-how” – a warning to those who use external designers for projects they wish to keep exclusive against competitors.

Some features were filtered out as “must-fit” (i.e. were there to enable the article to fit against another so that either could perform its function).

The most significant tool the judge used, however, was the idea/expression dichotomy. His view is well expressed by a quote from Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399, a design copyright case he cites, though he does not quote the passage concerned: “The inference that copying has taken place which might arise from a pure look at the two articles must be tempered by the recollection, long established, that copying an idea is not enough. Once anyone has got the idea, the general shape and dimensions of the product were inevitably going to be dictated by functional considerations.” Having established that the major similarities were due to the copying of the inward herringbone “idea” (not considered part of the design), he found the remaining minor similarities could all have resulted from independent design to meet the functional constraints of aircraft interiors.

With the greatest of respect to the judge, this feels like the wrong result. Similarity and repeated access to, and an attempt to compete with, the Virgin seat ought in our view to have led to a finding of infringement. We fear that, having heard experts for the patent part of the case, the judge may on this occasion have fallen into the expert trap identified (in the context of design validity) by the late, great Mr Justice Laddie in Household Articles Ltd's Registered Design [1998] F.S.R. 676:

“A consequence of litigation is that the court will be taken in detail through the evidence, including the evidence of a number of experts, and will have its attention drawn over a period of hours or days to the minutiae of the similarities and differences between the design in suit and the prior art. Such a concentrated, protracted and precise analysis is far removed from the process of visual assessment undertaken by a customer or even a trader. By the end of the case the court's assessment may have been clouded by familiarity.”

For this reason, Lord Justice Jacob in the Court of Appeal has in the recent past issued stern warnings about the dangers of expert evidence in design cases, in:

o Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166. "If one is not careful this [i.e. expert evidence] can mushroom out of proportion"
o Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 ("The evidence of experts ... is unlikely to be of much assistance").

The appeal ([2009] EWCA Civ 1062 ) only dealt with the patent parts of the judgment, but it is clear that the Court of Appeal was unhappy about the role the judge allowed the experts to play on those topics: “claim construction is a matter for the judge once he has the understanding of the skilled man. It is beside the point what the experts or lawyers think the claim means. If one allows this sort of evidence to play a part – even if only one of “comfort” - one is on the slippery road to ... a general lengthening of proceedings.” A point rather proved by this lengthy trial, and one equally applicable to the treatment of designs in the case.

Relying on the “idea-expression” dichotomy is also dangerous in design cases, and has a history going back only one year, to Rolawn Ltd & Anor v Turfmech Machinery Ltd [2008] EWHC 989 (Pat) on which we commented in the last issue of Design Features.

It is longstanding, perhaps even trite, copyright law that expressions, not ideas, are protected and that therefore the latter may be copied. However, the House of Lords, the highest UK Court, has warned twice about the difficulty of applying the analysis to artistic works: “... it needs to be handled with care. What does it mean?” asked Lord Bingham, in Designers Guild Ltd v. Russell Williams (Textiles) Ltd, citing Lord Hailsham’s comment, in L.B. (Plastics) Ltd v. Swish Products Ltd [1979] R.P.C. 551, 629, that "it all depends on what you mean by 'ideas”” By stripping away the “top level” of a design as being an “idea” and the “bottom level” as being dictated by function, it is all too easy to destroy something that should be considered in the round, and miss the evidence of copying, and overall similarity to an award winning design, that ought to lead to a finding of infringement.