31 December 2011

Australian Taxpayers Dig Deep for ‘Trade Liberalisation’ in LDC’s

WTO Building, GenevaMany Australian taxpayers – this one included – may be surprised to learn that we are collectively donating A$18 million for ‘trade facilitation to support the Least Developed Countries’ (LDC’s) in their endeavours to reduce or eliminate tariffs and ‘non-tariff barriers’ in order to benefit through global free trade.

You might have thought that our government would be loudly promoting this magnanimous gesture, but in fact we might not have found out about it if the World Intellectual Property Organisation (WIPO) had not issued a thank you note media release shortly before Christmas, announcing ‘an Australian donation of A$2 million for projects to help developing and least developing countries (LDC’s) build capacity in the field of intellectual property (IP) and ensure they were in a position to actively participate in the benefits of innovation and the knowledge economy.’

And we might not even have noticed the WIPO media release if it had not been kindly pointed out on the always-on-the-ball IPKat blog earlier this week.

The IPKat, and the WIPO release, both inform us that this is part of ‘a A$16 million contribution announced at the 8th World Trade Organization Ministerial Conference’.

So, armed with this clue we went in search of further information about our significant financial contribution to global free trade and IP capacity-building…

28 December 2011

Why IP Australia is Clearly Wrong About Research Affiliates

Research Affiliates, LLC. [2010] APO 31 (17 December 2010)
Research Affiliates, LLC [2011] APO 101 (5 December 2011)

Manner of manufacture – whether method, system and computer program product for generating a weighted securities index is patent-eligible

RAIn this continuation of IP Australia’s ‘war on business methods’, a Delegate of the Commissioner of Patents has, for a second time, rejected claims directed to an invention directed to the construction and use of passive portfolios and indexes for securities trading.

A first set of claims was rejected in a decision issued on 17 December 2010, with that decision subsequently being appealed to the Federal Court of Australia.  However, the applicant – originally the inventor Robert D Arnott, and subsequently the assignee, Research Affiliates LLC – had filed a divisional application with slightly different claims, and the appeal was placed on-hold pending a decision on this further application.

The outcome in the second case is unsurprising.  The Delegate (who also issued the first decision) has not even bothered to provide full reasoning for his decision, instead settling for a comparison table to explain why the reasons in the first decision apply also to the revised claims of the divisional application.  Indeed, he has gone a step further, stating that the divisional claims constitute ‘an even greater contravention’ of the requirement to define a manner of manufacture than the claims of the parent application.

Research Affiliates has now appealed the second decision also.  We expect that the two appeals will be joined to a single proceeding, to be heard together.

We are hopeful that the appeals will be successful.  IP Australia’s decisions in these cases are not merely wrong, they are demonstrably inconsistent with very clear statements made by the Full Court of the Federal Court of Australia (by which a single judge of the court is bound) plainly indicating that the subject matter of the Research Affiliates claims, in both the parent and divisional applications, is patent-eligible in Australia.

23 December 2011

Patent Attorney Sails to Hobart, Raising Money for MS Research

Kiss Goodbye to MSStarting on Boxing Day – when many of us will be relaxing at home, and recovering from Christmas festivities, one of our colleagues at Watermark Intellectual Asset Management, Ian Lindsay, will be amongst the crew of the yacht Kiss Goodbye to MS battling whatever nature decides to dish up this year in the Rolex Sydney Hobart Yacht Race.

Ian is a regular crew member on the yacht here in Melbourne, which normally goes by the name Beyond Outrageous.  However, for the Sydney-Hobart race it will be kitted out with sails bearing giant red lips in support of the Kiss Goodbye to MS campaign, which will run officially from May 2012.  One of Ian’s fellow crew-members has MS (multiple sclerosis), and anyone who knows someone living with this disease – or is at least familiar with the work of Michael J Fox – will be aware of just how insidious it is.

Watermark is proud to be sponsoring Kiss Goodbye to MS in its efforts to raise money for MS research – and also, hopefully, to achieve success in the yacht race!  IP Australia is also doing its bit, incorporating the efforts of Ian and the rest of the crew into its ‘IP on the High Seas’ feature.

You can sponsor Ian – who is already over half way to his target of raising A$5000.00 – through his fundraising page at EverydayHero.com.au.  If you are a regular visitor to this blog, then you have, indirectly, already made a small contribution – we have donated 5 cents for each one of the 2327 ‘unique visitors’ that Google Analytics tells us have visited the site in the past month.

Many organisations are competing for your charity dollar at this time of year, all of them worthy and deserving causes.  While some others may seem more specific to the time of year, the fact is that all charities work hard throughout the year, but rely on the extra generosity of spirit during the festive season for a large portion of their public financial support.  Please consider helping Ian to reach his goal, and then track his progress via the Sydney Hobart Yacht Race web site.

That link for donations, again, is www.everydayhero.com.au/ian_lindsay.

And happy holidays to everyone!  However you celebrate this time of year, please do so safely – we hope that you will continue to follow the blog in 2012.

22 December 2011

IPWatchdog & Patently-O Neck-and-Neck in ABA BLAWG 100!

In what is becoming something of an annual derby, the two blogs widely-recognised as leaders in US IP law, Dennis Crouch’s Patently-O and Gene Quinn’s IPWatchdog, are once again slugging it out for the title of top-blawg in the 2011 ABA Journal Blawg 100.

Indeed, the two IP law blogs are the clear leaders in their category – each having over ten times the vote of any other contender – but they are also currently numbers two and three overall, out of the 100 nominees, with only the New York Law School students’ blog Legal As She Is Spoke ahead of them (by some margin – one suspects on-campus campaigning might be partly responsible).  But the China Law Blog is pretty hot on their heels.

So, have you considered voting in the poll? And if so, then for whom?

Apple v Samsung Down Under – 2011 Redux

Apple-GalaxyThe opening gambit in the Australian arm of the global dispute between Apple and Samsung finally drew to a close earlier this month, neatly typing up a few loose ends in what must surely be the biggest Australian patent story in recent memory. The stage is now set for the main event – full trials on infringement and validity of various Apple and Samsung patents – during the course of next year.

A review of the story so far is therefore timely, as the Australian courts close down for an extended break over the holiday season, before getting back into full swing for the new year in February 2012.


On 9 December 2011, the High Court of Australia refused Apple's request for special leave to appeal from a decision of a Full Bench of the Federal Court denying a preliminary injunction against the launch of the Galaxy Tab 10.1. (Article: Breaking: High Court Rejects Apple Appeal Bid.)

In what turned out to be a temporary win for Apple, an injunction had originally been granted by a single judge of the Federal Court, pending a full trial in relation to Apple’s claims of patent infringement. (Article: Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1.)

Samsung’s tablet is now on sale in Australia, just barely in time for Christmas, and four months after the originally-planned launch in mid-August.

21 December 2011

IP Australia’s Escalating War on ‘Business Methods’

elephant-in-roomWe would much prefer to be spreading Christmas cheer at this time of year, but unfortunately the time has come to address the elephant with which many Australian practitioners in the information technology space have been sharing a room for too long now.

The elephant in question is the alleged controversy over so-called business method patents.

We have written numerous articles about individual cases, and imagine that by now it is pretty clear that we are not in agreement with IP Australia’s current policies and practices in this area.  Recent examples include Another Computer-Implemented Invention Struck Down, Australian Patent Office Shoots Down Another ‘Business Method’, Computer-Implementation No Insurance Against Rejection, and Computer-Implemented Invention Found Unpatentable.

We have now been quoted extensively in a current blog article by Joff Wild on the IAM Magazine web site, in relation to what is now clearly an intentional campaign by IP Australia to challenge the patentability of anything they consider to be a ‘business method’ invention.

Anybody – wherever they may be in the world, but Australian businesses in particular – who invests significant amounts in developing innovative new products and services which find application in the financial services sector, or are directed at improving the efficiency of organisational processes in any sector, needs to be aware of the current question-mark hanging over the availability of  patent protection for such innovations in Australia.

You think maybe we are exaggerating?  Sorry, but we no longer think that there is any scope to give IP Australia the benefit of the doubt here.  We offer the following four examples as evidence that IP Australia is waging a deliberate campaign against ‘business methods’.

15 December 2011

Federal Court Notes Possible Drafting Error in Patents Act

DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2011] FCA 1411 (7 December 2011)

Amendments – application to Federal Court for direction to amend patent – correction of claim dependency

Obvious mistake!In an otherwise unremarkable decision, directing the correction of a trivial error in the claims of a patent owned by Garford Pty Ltd, Justice Yates in the Federal Court of Australia has noted, in passing, a possible oversight in the drafting of the Australian Patents Act 1990 (‘the Act’).

In particular, on one interpretation of section 105 and section 102 of the Act, a court may be barred from directing an amendment to correct a clerical error or an obvious mistake.  If this interpretation were correct, then it would also apply to correction of such errors by direct application to the Patent Office under section 104 of the Act.  This would be a disturbing flaw in the drafting of the Act which could significantly complicate the making of certain amendments which should, in fact, be the simplest cases.

13 December 2011

IP Australia Proposes – Mostly – Modest Fee Increases

FeesUpBack in September we reported the announcement by IP Australia, which encompasses the Australian Patent, Trade Marks and Designs offices, that it was about to conduct a periodic review of the fees charged for various services (see IP Australia News – Fee Review and New Web Site). 

The purpose of the review is to ensure that the existing IP Australia cost recovery arrangements, fees and charges are transparent and consistent with the Australian Government Cost Recovery Guidelines 2005 and the Australian Government cost recovery policy.

The first stage of the review process is now complete, and a Consultation Paper setting out the details of proposed fee changes has been published for comment on the IP Australia web site.

Two stages of fee increases are proposed to take place in 2012, with most changes taking place on 1 July 2012, and a few to follow later, on 1 October 2012.  The later commencement date apples to those fees associated with services for which IP Australia plans to introduce new online or B2B service channels.  In general, where both paper filing and online filing options are available, an incentive is provided to improve efficiencies by charging a lower fee for use of the online channel

Additionally, a new ‘preliminary search and opinion’ service, and associated fee, is expected to commence on or after March 2013.

The arrangements proposed in the Consultation Paper are intended to cover a period up until June 2016, at which time fees may again be adjusted following a review.

09 December 2011

Breaking: High Court Rejects Apple Appeal Bid

Samsung has had a win today in Australia, where the High Court has refused Apple's application for 'Special Leave' to appeal from last week's decision of the Full Federal Court overturing the grant of a preliminary injunction against the launch of the Galaxy Tab 10.1 (see Samsung v Apple – A Closer Look at the Appeal Decision).

Samsung will now be free to sell its tablet in Australia, at least pending a full trial and decision in Apple's primary infringement case in the Federal Court before Justice Annabelle Bennett.  Reportedly, we should see the galaxy Tab 10.1 in Australian stores before the end of next week, for those looking to pick up a last-minute Christmas present or two!

There is, at present, no date set down for the main infringement case to be heard.  However, Samsung's counter-suit against Apple's iPhone 4S, and other 3G devices, is scheduled to be heard during March and April next year (see Samsung Drops Injunction Demands, Grabs Reins in Apple Dispute).

07 December 2011

Australian Government Improves Access to Commercialisation Grants

GrantedThe Australian Minister for Innovation, Industry, Science and Research, Senator Kim Carr, has announced changes to the governments Commercialisation Australia program which will make the grants more affordable and accessible to Australian businesses developing new products, processes or services.

From today (7 December 2011) Australian entrepreneurs will not have to repay the program’s Early Stage Commercialisation grants.  Additionally, these grants will be available to more businesses, with the maximum annual turnover permitted by eligible applicants has risen from $20 million to $50 million.

In addition, growing businesses that can benefit from access to skilled managers will now be able to apply for an Experienced Executives grant of up to $350,000, increased from $200,000.

Announcing these changes to Commercialisation Australia's grants, Senator Carr said that they would give Australian inventions a better chance of flourishing in the market place.

Further changes appear to be in the air, with the Minister also announcing that, from early 2012, eligible expenditure guidelines for Early Stage Commercialisation grants will be amended to provide broader support for the development of pilot manufacturing plants and innovative manufacturing facilities.

04 December 2011

Could Samsung’s US ‘Win’ Influence Australia’s High Court?

US-Flag-galaxyIn what could be a very timely decision for Samsung, Judge Lucy Koh in the United States District Court for the Northern District of California issued orders late on Friday, 2 December 2011, denying an interim injunction in the US patent infringement action which was initiated by Apple on 15 April 2011.

We have obtained a copy of the order, which is available for viewing in Google Docs, or for download as a PDF (2.7 Mb).

The order means that Samsung will be able to continue selling its Galaxy Tab 10.1, Galaxy S 4G, the Infuse 4G and the Droid Charge in the United States, until and unless Apple is ultimately successful at trial in establishing infringement by Samsung of at least one valid claim of the patents which it has asserted in the US proceedings. 

Significantly, despite denying a preliminary injunction at this stage, Judge Koh has indicated her provisional opinion that at least one of the four patents relied upon by Apple in the preliminary application is likely valid and infringed.  If that turns out to be so, then Samsung is potentially looking down the barrel of an expensive damages claim, unless it can settle its disputes with Apple in the meantime.

One ‘news’ item that has emerged from the publication of Judge Koh’s order – despite commercially-sensitive passages being substantially redacted – is the supposed revelation that, contrary to widely-held opinions, Apple is in fact willing to license at least some of its ‘smartphone/tablet’ related patents to its competitors, and has even negotiated with Samsung to do so.  (See, e.g., coverage by The Verge, Apple licensed iOS scrolling patent to Nokia and IBM, offered license to Samsung.)

The reason that this information should not come as any surprise is that (as we will discuss further below)  it was already revealed in Justice Bennett’s interlocutory decision in the Federal Court of Australia, again highlighted by a sea of surrounding redactions.

So, with Apple now denied a preliminary injunction in the US as well as in Australia (albeit on appeal), it seems that the stars may finally be aligning for Samsung.  However, it still faces the hurdle of a Special Leave hearing before the High Court of Australia this Friday (see High Court Grants Apple Further Galaxy Tab Reprieve).  So is it possible that the US decision could have any impact on the outcome here?

02 December 2011

High Court Grants Apple Further Galaxy Tab Reprieve

This morning at 9.30am, Justice Heydon heard arguments from Apple requesting an extended stay of the orders made on Wednesday by the Full Federal Court, overturning the injunction barring Samsung's Galaxy Tab 10.1 tablet computer from the Australian market.

The Federal Court granted a stay of its orders until 4pm today, to give Apple an opportunity to launch an application for Special Leave to appeal to the High Court.  While it would be impossible to schedule a hearing on such an application before the end of the week, the Federal Court determined that any further stay of the orders would be a matter for the High Court.

After hearing arguments from both sides, Justice Heydon granted Apple's request for a further stay, finding that the extension is necessary ‘to preserve the subject matter of a Special Leave application’, and ensuring that it will now be at least a further week before Samsung is able to bring stock of the Galaxy Tab 10.1 into Australia.

Samsung v Apple – A Closer Look at the Appeal Decision

Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 (30 November 2011)

Appeal from decision to grant interlocutory injunction – whether leave to appeal should be granted – principles to be applied when considering grant of interlocutory injunction – need to evaluate strength of the probability of success of applicant – need to take strength of probability into account when assessing the balance of convenience and justice – infringement – strength of prima facie case – invalidity – strength of prima facie case – balance of convenience – factors to be considered

Galaxy-Tab-MagnifierOn Wednesday we provided our initial thoughts on the decision of Justices Foster, Dowsett and Yates overturning the grant of an interlocutory injunction to Apple, barring the sale of Samsung’s Galaxy Tab 10.1 tablet in Australia.  For most readers the case will need no introduction.  Anybody needing to catch up can read back over the various articles we have posted since the dispute began.

Before looking at the decision in more depth, we have to say firstly that Patentology feels somewhat vindicated by the judgment of the Full Court.  Way back on 2 August 2011, when the Apple and Samsung juggernaut first rolled into Justice Bennett’s courtroom, we predicted that Apple would not be granted an interlocutory injunction (see It’s Apple vs Samsung Down-Under as Smartphone War Escalates).  From this, we suggested, further consequences would flow, such as an increased likelihood that Apple and Samsung would reach some form of global settlement of their ongoing disputes before the matter could make it to a full trial in Australia.

Justice Bennett put paid to that course of events, by holding a number of days of hearings and then, against all of our expectations, granting Apple its injunction.  This was, as the Full Court has now confirmed, an error on her part, meaning that – on this occasion at least – our original prediction was a correct evaluation of the relevant law.  An interlocutory injunction in a patent case – preventing sale of an allegedly infringing product prior to the patentee proving infringement – ought to be an extraordinary remedy only granted in exceptional cases. 

Yet the time taken to reach this point has clearly been to Apple’s benefit.  If Samsung now releases the Galaxy Tab 10.1 to the Australian market, it will be four months later than its original intended launch date, and less than three weeks before Christmas.  Apple’s early wins not only in Australia but elsewhere, such as Germany and the Netherlands, appeared to catch Samsung off-guard.  And while the sparring companies are starting to look more evenly-matched, Samsung has certainly had to come back from behind.  As matters have transpired, our prediction of a fairly orderly tit-for-tat leading to a truce was simply not to be.

30 November 2011

Breaking: Galaxy Tab Injunction Lifted, Orders Stayed Until Friday

[Updated: 3:05pm with initial views on the court's reasons]

At 12.30 today, the Full Bench of the Federal Court (Foster, Dowsett and Yates JJ) handed down a decision in Samsung's appeal against the interim injunction issued by Justice Annabelle Bennett barring sale of the Galaxy Tab 10.1 tablet computer in Australia.

The court has unanimously overturned Justice Bennett, opening the way for Samsung to get its products into stores just in time for Christmas (for those who have not yet done their shopping).

Apple requested a stay of the order lifting the injunction, so that it can appeal to the High Court, which Samsung said would only serve to prolong the injustice that had already been visited upon it.  Justice Foster has granted a stay until 4pm on Friday AEST. 

26 November 2011

Amazon Clicks-On in Canada as Appeals Court Keeps 1-Click Alive

The Attorney General of Canada and The Commissioner of Patents v Amazon.com [2011] FCA 328 (24 November 2011)

1-click CanadaThe Canadian Federal Court of Appeal has issued its decision in the dispute between Amazon.com and the Canadian Intellectual Property Office (CIPO) over whether Amazon’s ‘1-click’ ordering system comprises patent-eligible subject matter in Canada.  And, contrary to the position argued by the Commissioner of Patents, the court has held that CIPO should be ‘open to the possibility that a novel business method may be an essential element of a valid patent claim’, i.e. that there is no blanket prohibition of the patenting of ‘business methods’ under the Canadian patent law.

The appeals court has largely upheld the reasoning provided by Justice Phelan in the earlier Federal Court decision overturing the rejection of Amazon’s claims by the Canadian Commissioner of Patents, once again reversing the Commissioner’s original determination. 

However, the court also technically upheld the appeal, finding that Justice Phelan had effectively ordered CIPO to grant a patent to Amazon, by providing a definitive interpretation of the claims in the absence of relevant expert opinion, and without deferral to the greater expertise of the CIPO examiners in technical matters.

The Court of Appeal has therefore remanded the application back to the Commissioner for claim construction and re-examination on a expedited basis in view of the court’s reasons.

25 November 2011

Judges Grill Apple Lawyers in Galaxy Appeal

never-lose-appealToday Samsung and Apple faced-off once again in the Federal Court of Australia, at a hearing which is likely to determine whether Samsung’s Galaxy Tab 10.1 tablet computer is ever officially released to the Australian market.

A full bench of the court, comprising Justices Lindsay Foster, John Dowsett and David Yates, sat to hear Samsung’s appeal – and Apple’s defence – of the preliminary injunction imposed last month by Justice Bennett against the Galaxy Tab, pending a full hearing of Apple’s patent infringement claims.  (See Date, Panel Set for Samsung Appeal Against Galaxy Injunction for further background on the judges.)

A decision in the appeal is expected early next week, which would still leave Samsung – if successful – with sufficient time to shift a few tablets in the lead-up to Christmas, and perhaps a few more in the post-Christmas sales.  However, if the full court upholds the injunction, and with a date for a full trial on Apple’s claims yet to be set, then it seems unlikely that the Galaxy Tab 10.1 will see the inside of Australian stores.

Government Response to Patent Reviews: ‘Not Much Left to Do’

Not much to do...On 23 November 2011, the Australian Government finally issued its response to nearly a decade’s worth of reviews of the Australian patent system.  The full response can be downloaded from IP Australia’s web site.

While the Government’s response is nominally in reply to the report of the Australian Senate Community Affairs Committee Inquiry into Gene Patents (which was published almost exactly a year ago, and reported on this blog in Gene Patents Survive Australian Senate Enquiry – For Now), it has also taken the opportunity to accept a recommendation of that report to respond simultaneously to:
  1. the 2011 Advisory Council on Intellectual Property’s (ACIP) Patentable Subject Matter Report (PSM Report, covered here in ACIP Reports on ‘Patentable Subject Matter’, and discussed again in Why IP Professionals Must Take ‘Gene Patent’ Opponents Seriously);
  2. the review of Australia’s patent system by IP Australia, which has already led to the introduction in the Senate of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (see Senate Patent Reform Bill – A Closer Look); and
  3. the 2004 Australian Law Reform Commission’s (ALRC) Report No. 99, Genes and Ingenuity: Gene Patenting and Human Health (ALRC Report), on which work commenced nearly ten years ago, in 2002.
Out of these three reviews, the Government had identified 58 distinct recommendations to which it has responded by:
  1. ‘accepting’ 24 recommendations;
  2. ‘accepting in principle’ 17 recommendations;
  3. ‘noting’ seven recommendations;
  4. ‘not accepting’ five recommendations; and
  5. finding that five recommendations are for other bodies or organisations to address.

20 November 2011

Shades of Gray as Dispute Over Invention Ownership Goes Viral

The Royal Children’s Hospital v Robert Alexander [2011] APO 94 (10 November 2011)

Entitlement – employer/employee relationship – whether employee had a ‘duty to invent’ – whether inventions made ‘in the course of employment’ – whether patent applications should proceed in the name of the employer or employee

Electron micrograph of the bird flu virusIn a tale of two pending patent applications filed by the sole named inventor Dr Robert Alexander, one has been found rightfully to belong to his employer, The Royal Children’s Hospital (RCH), while he will be allowed to keep the other for himself, according to a Hearing Officer (Delegate Karen Ayres) in the Australian Patent Office.

As in the leading decision of the Full Federal Court in University of Western Australia v Gray [2009] FCAFC 116, ownership was resolved by considering whether Dr Alexander had a ‘duty to invent’ the subject matter of each application under any express or implied terms of his employment contract with RCH.

At the relevant times, Dr Alexander was Head of Virology at RCH where his primary role was to maintain the Virology/Tissue Culture and Molecular Diagnostics service, which conducts viral diagnostic work on upwards of 10,000 clinical samples at the hospital each year.  The Delegate found that in this role it was one of his duties to improve the viral diagnostic techniques used at the hospital, so as to enable the hospital to better diagnose viral diseases.  However, he was not required, or expected, to conduct extensive (and, perhaps, expensive) research into possible modifications to equipment used in diagnosis, particularly where there had been no substantial issues identified with the effectiveness of the existing equipment.

As a result, the Delegate has directed that Dr Alexander’s patent application for an invention related to improvements in diagnostic techniques should proceed in the name of RCH, while a second application covering modifications to a microtitre assembly tray used in the testing process should remain in Dr Alexander’s name.

19 November 2011

Patent Office, Professionals, Must Get With the Social Media Program

IPAU TwitterOn Wednesday this week we attended IP Australia’s ‘IP Forum’ event in Melbourne, Fighting the War on Patents.

Putting aside the hyperbole of the title for one moment, the concept was a good one – bring together a panel of experts to present their thoughts, and engage in debate, on issues such as smartphone patent battles, and gene patenting, which have generated some negative media coverage of the patent system.

Gathered together for our enlightenment were: Mr Philip Noonan, the Director General of IP Australia; Dr Trevor Davies, a Partner at Allens Arthur Robinson Patent & Trade Mark Attorneys and a member of the Council of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA); and Dr Aaron Mitchell, Manager of the South Australian Research & Development Institute (SARDI).  Following the formal presentations, they were joined by Mr Michael Caine, Partner at Davies Collison Cave, and also an IPTA Council member.

In other words, four advocates for the patent system.  Not that there is anything necessarily wrong with this – Patentology is pro-patent in general – although a dissenting voice might have livened things up a little.  But the three speakers appeared to make a number of common assumptions: firstly, that they were preaching to the choir, i.e. a room full of fellow patent-proponents; secondly, that the negative coverage of the patent system is generally unfair, largely factually incorrect, and the result of either ignorance or malicious intent on the part of opponents; and thirdly that the point of the forum was to discuss what ‘we’ should be doing to counter this ‘attack’ on the system.

16 November 2011

Samsung Drops Injunction Demands, Grabs Reins in Apple Dispute

reinsApple and Samsung were back in the Federal Court of Australia on 15 November 2011, for a hearing into Samsung’s application for a preliminary injunction barring sale of the iPhone 4S in Australia.  The hearing was scheduled for at least three days, but was over almost as soon as it started, after the parties agreed instead to prepare for a full trial early in the new year.  (See Fairfax Media report Apple v Samsung war 'might have been avoided', and ZDNet report iPhone 4S injunction gets final hearing date).

In earlier hearings relating to Apple’s (successful) application for an interim injunction against Samsung’s Galaxy Tab 10.1, it was Apple pressing for a rapid progression to a full trial, with Samsung maintaining that it would not be able to prepare its case for a trial before early 2012 (see Apple v Samsung Hearing to Continue…).  Indeed, on 29 September 2011, Apple professed that it could be ready for trial in the first week of October – a suggestion that we considered to be quite ludicrous.

Nonetheless, in her decision granting Apple its injunction, Federal Court judge  Justice Annabelle Bennett indicated that one of the factors she considered in ‘an almost evenly weighted’ balance was Samsung’s unwillingness to be available for a limited early final hearing this month.

So the shoe was firmly on the other foot when Samsung arrived in court for the first day of hearings into its own application for a preliminary injunction against the iPhone 4S, and almost immediately offered to withdraw its application for interim relief on condition that the matter be set down for an early trial in March 2012.

13 November 2011

‘Stolen’ Invention Restored to Rightful Owner

Laurence Clifford Scott v Icon Plastics Pty Ltd [2011] APO 84 (3 November 2011)

Opposition – entitlement – whether the named inventor actually invented the subject matter of the application – whether the named applicant is an entitled person – filing of new application by entitled party

burglar-with-swag-bagA Hearing Officer (Delegate Ranganath Subbarayan) in the Australian Patent Office has invoked a rarely-used provision of the Patents Act 1990, which allows a true inventor to recover the right to apply for a patent on an invention that has been appropriated by another party.

It sometimes happens that someone – through a misunderstanding, ignorance or a lack of scruples – files an application for a patent in their own name, when in fact they are not entitled to do so because the invention was actually made by someone else.  Disputes over inventorship and ownership are not uncommon, and there are mechanisms to resolve issues of this type when they arise in relation to patent applications.

The simplest cases can be dealt with under Section 32, which allows the Commissioner simply to direct that an existing application proceed in the name of the rightful applicant.

However, some disputes are more complex.  In this case, a patent application in the name of Laurence Clifford Scott (‘Scott’) had been accepted, and was subsequently opposed by Icon Plastics Pty Ltd (‘Icon’).  One of the grounds of opposition was that Scott was not entitled to the patent, because he was neither the inventor nor a legitimate assignee of the inventor.  According to Icon, the invention disclosed and claimed in the application was actually devised by Icon General Manager Royston Douglas Bull (‘Bull’), had been misappropriated by Scott, and wrongfully made the subject of the application in Scott’s name.

The difficulty with succeeding in an opposition in these circumstances is that the result of a successful opposition is invalidation and rejection of the opposed application, leaving the party genuinely entitled to the patent with nothing!  The solution to this problem is provided by Section 33, which permits a new patent application to be filed by the opponent in these circumstances, and for the claims of that application to be given the benefit of the relevant earlier filing date of the original, unentitled, applicant.

12 November 2011

Successful Appeal Paves the Way for Generic EFFEXOR-XR

Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 (28 October 2011)
Appeal from: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth Australia Pty Ltd [2010] FCA 1211
See also: Australian Federal Court Blocks Generic EFFEXOR-XR

Validity – ‘external’ fair basis – whether claims entitled to priority date of original US application – whether claims are novel

effexor-xrGeneric pharmaceutical manufacturers Sigma Pharmaceuticals (Australia) Pty Ltd, Alphapharm Pty Ltd and Generic Health Pty Ltd will be free to sell in Australia their own versions of an "extended release" formulation of antidepressant drug venlafaxine hydrochloride (marketed by Wyeth as EFFEXOR-XR), after a Full Bench of the Federal Court of Australia upheld their appeal against a decision issued a year ago by Justice Jagot.

Each of the three generic pharmaceutical companies had previously obtained registration of extended release formulations of venlafaxine hydrochloride on the Australian Register of Therapeutic Goods (ARTG).  According to these registrations, Sigma's product is known as Evelexa XR, Alphapharm's as Enlafax-XR and Generic Health's as "generichealth XR".

In the original case before the Federal Court, the generic manufacturers sought revocation of Wyeth’s Australian Patent No. 2003259586 ("the XR patent"), so that they would be free to market their generic products in Australia.  In response, Wyeth argued that the proposed manufacture and sale of generic drugs would infringe claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of the XR patent.  Justice Jagot dismissed the generic manufacturers' invalidity claims, and granted an injunction barring them from selling generic extended release venlafaxine hydrochloride in Australia.

On appeal, Justice Bennett, Justice Nicholas and Justice Yates have found that the relevant claims of the XR patent are invalid, and that the primary judge erred in finding that they were entitled to the benefit the priority date of United States Patent Application No 60/14006, filed on 25 March 1996.  In fact, the Full Court has found, the claims are based on amendments filed on 20 December 2006, and are not entitled to any earlier date.  As a result, they are anticipated by the sale of EFFEXOR-XR in Australia since 1999.

Justice Bennett has written the leading opinion of the Full Court, with Justices Nicholas and Yates concurring, and providing their own additional reasons in relation to selected aspects of the case.

10 November 2011

IP Australia Seeking 'the Next Albert Einstein'

Are you an Australian citizen?  Have you ever thought about becoming a patent examiner?

If so, now may be your chance, because IP Australia is looking for 'the next Albert Einstein or Thomas Jefferson'.

Of course, neither Einstein nor Jefferson were Australian citizens.  Nor are they probably best known for their work as patent examiners.  And, in all fairness, Jefferson only got the job after he helped to found a nation, draft its Constitution, and implement its first patent laws, and we do not imagine that most people would be willing to go to such extremes just to become a patent examiner!

However, IP Australia has a point, which is this: examining patents is not a job for dummies; to do it well you need sound technical knowledge, an inquiring mind, attention to detail, sharp critical faculties, and (preferably) the ability to form firm opinions, and to express them clearly and cogently.

05 November 2011

How Apple Punches Above Its Weight in Smartphone Disputes

Apple boxingWe have written previously on this blog about ‘patent analytics’, patent ‘landscapes’ and ‘theme maps’ (see IP Australia on Collision Course with Private Practitioners?).  Tools for mining and analysing patent data, i.e. the contents of the databases maintained by national and international patent authorities, are provided (at not insignificant cost) by companies such as Thomson Reuters, with its Thomson Innovation product.

Thomson’s ThemeScape maps employ a visual analogy with geographic contour maps, to present large quantities of complex information as a two-dimensional ‘landscape’.  As part of some ongoing research for an article likely to be published in the coming months in IAM Magazine, we have been working with our colleagues in the Information Services team at Watermark Intellectual Asset Management on some ThemeScape mapping relevant to the ongoing disputes in the ‘smartphone/tablet’ space involving companies such as Apple, Samsung, Microsoft, Google and Motorola.  The preliminary results of this research are extremely interesting, so we thought we would share a few insights as a taste of what is to come in the final article.

In essence, what the results show so far is that the mobile technology patent landscape is dominated on the ‘hardware’ side by the major traditional manufacturers, such as Samsung and Motorola, and on the ‘software’ side by Microsoft.  And while Apple’s portfolio is small by comparison, its recent successes in various courts around the world are strong evidence that the patents Apple does hold are of particular strategic significance.

03 November 2011

Date, Panel Set for Samsung Appeal Against Galaxy Injunction

WigsUpdated: We originally reported that the appeal would be heard by Chief Justice Keane, along with Justices Dowsett and Yates.  The Commonwealth Courts Portal entry has now been updated to show that the appeal will be heard by Justice Foster, not Chief Justice Keane.  The original parts of this article have been retained, and marked to show corrections, while information about Justice Foster has been added.

Following on from the initial hearing in relation to Samsung’s appeal against the injunction imposed against the Galaxy Tab 10.1 in Australia (see Samsung Over First Hurdle in Bid To Overturn Apple Injunction), on 2 November 2011 Apple and Samsung again appeared before Justice Foster, who has now laid out the timetable for the appeal to be heard by a full bench of the Federal Court of Australia.

According to orders issued following the appearance, the application for leave to appeal, along with the appeal itself (if allowed) will be heard on 25 November 2011.  Justice Foster has set a schedule for the day which will see Samsung present its principal case between 9.30 am and 12 noon, followed by Apple’s case in answer between 12 noon and 1.00 pm, continuing after lunch between 2.00 pm and 3.30 pm.  Samsung will have the last word in reply between 3.30 pm and 4.00 pm.

Judgment is likely to be fairly swift.  It is not out of the question that the court could issue a ruling – either confirming or lifting the injunction – almost immediately, with detailed reasons to be published at a later date.  In any event, a final decision is likely to be handed down in less than a week.  This means that if Samsung is successful in its appeal, it may still get stock of the Galaxy Tab 10.1 into shops in time for the last-minute Christmas rush (not to mention the post-Christmas sales).

While the Commonwealth Courts Portal entry does not (at the time of writing) list the panel of three judges who will hear the appeal, according to a tweet from Fairfax Media’s Asher Moses, the full bench will be made up of Chief Justice Pat Keane, Justice John Dowsett and Justice David Yates.  Correction: the panel will be Justices Foster, Dowsett and Yates.


With the spring racing carnival in full swing, we think that a guide to the ‘form’ of the judges may be in order!

01 November 2011

FRAND Obligations to be Aired in Australian Court

Under fire - the iPhone 4S Apple and Samsung today faced Justice Annabelle Bennett once again in the Federal Court of Australia, in Sydney, at a directions hearing in relation to Samsung’s application for an interlocutory injunction barring the iPhone 4S from the Australian market.

According to reports on ZDNet.com.au and ITNews.com.au (see Mobile telcos face Apple-Samsung scrutiny and Apple invokes French law in iPhone hearing) much of the discussion in court today centred around how the ‘FRAND licensing issue’ will play out.

As we reported on 18 October 2011 (see Samsung Appeals, Retaliates, in Patent War With Apple), the patents upon which Samsung is relying in this chapter of the dispute are technically strong, in that they relate to features of the core wireless communications technologies deployed in the 3G mobile communications standards.  If Apple’s products did not implement the patented functions, it is likely that they would be unable to communicate effectively with the networks operated by carriers such as Telstra, Optus and Vodaphone.

However, these patents also suffer from a potential strategic weakness, in that their very essentiality to implementation of the wireless communications standards could limit the manner and extent to which they are enforceable against Apple.


So what is the ‘FRAND licensing issue’, and why is it likely to occupy so much of the court’s attention?

Another Computer-Implemented Invention Struck Down

Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. [2011] APO 82 (28 October 2011)

Opposition – claims to a computer-implemented system for use in operating a lottery – whether claims novel – whether claims inventive – whether claims useful – whether claims satisfy requirements of section 40 of the Patents Act 1990whether claims relate to a ‘manner of manufacture’

That tears it!Once again, a hearing officer (Delegate Greg Powell) in the Australian Patent Office has wiped out patent claims directed to a computer-implemented invention in one fell swoop, on the basis that they do not define a ‘manner of manufacture’ – the threshold test for patent-eligibility under Australian law.

Thanks to the strict approach adopted recently by the Patent Office, manner of manufacture could become the thermonuclear warhead in the arsenal of opponents to patents relating to software-based technologies.  As in the earlier opposition decision Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48, the present case – in which two parties opposed a patent relating to a lottery system by Elot, Inc (‘Elot’) – involves the invalidation of all claims previously approved by a Patent Office examiner, and which were found to be otherwise valid (i.e. satisfying all other requirements of the Patents Act 1990, including novelty and inventive step).

The primary basis for all the rejections in this case was (as is becoming the pattern) a series of the Patent Office's own earlier, but relatively recent, decisions, particularly Invention Pathways Pty Ltd [2010] APO 10, Iowa Lottery [2010] APO 25, Research Affiliates, LLC [2010] APO 31 and Network Solutions, LLC [2011] APO 65.  The real authorities on manner of manufacture – the High Court in National Research and Development Corporation v Commissioner of Patents (‘NRDC’) [1959] HCA 67, and the Full Federal Court decisions in CCOM Pty Ltd v Jiejing [1994] FCA 1168 and Grant v Commissioner of Patents [2006] FCAFC 120 – are now viewed principally through the lens of these non-binding Office decisions.

In our view, however, the approach now taken by the Patent Office in relation to this subject matter has drifted a long way from the authorities.  This is resulting in harsh, confusing and inconsistent decisions, and creating great uncertainty for applicants and their advisors.  In this case, we consider that a return to the basic principles set down by the courts results not only in a more straightforward and pragmatic analysis, but also in a different result from that reached by the Delegate in the present decision.

This is one of our lengthiest articles to date, however we trust that interested readers will bear with us.  It is our objective in the latter portion to, in effect, take on the role of the decision-maker and demonstrate how we believe the law should – and should not – be applied

27 October 2011

Samsung Over First Hurdle in Bid To Overturn Apple Injunction

Android hurdling apple!In the New South Wales registry of the Federal Court of Australia this morning, Justice Foster heard lawyers for Samsung present their initial submissions in their attempt to secure a hearing before a Full Bench of the Federal Court of Australia appealing against the injunction granted by Justice Annabelle Bennett on 13 October 2011 (see Australian Court Bars Sale of Samsung Galaxy Tab 10.1). 

A ‘Full Bench’ of the Court is a panel of three judges, not including the original judge, who will determine whether or not there was any error made in the initial judgment.  Samsung must persuade a majority of the panel – i.e. at least two judges – that Justice Bennett ‘got it wrong’.

ZDNet reporter Luke Hopewell was in court for the hearing, and reports that Samsung complained against Justice Bennett’s decision on multiple grounds, including that she was in error in placing excessive weight on Samsung’s alleged ‘unwillingness’ to move to an early final hearing, and that she gave too little consideration to the damage to Samsung’s reputation with Australian retailers which would result from the injunction  (see Samsung contests Galaxy Tab injunction). Further coverage of the hearing is available on itnews.com.au (see Samsung granted full bench appeal on Galaxy Tab 10.1).

Contact Lens Cleaning Method ‘Inherently’ Anticipated by Prior Use

Abbott Medical Optics, Inc v Alcon Laboratories, Inc [2011] APO 79 (26 September 2011)

Opposition – novelty – whether claimed method anticipated by prior published instructions and prior use where benefits of method previously unrecognised – whether ‘strict proof’ of prior use required

contact_lensThis decision, issued by Delegate Dr B. Akhurst, concerns methods for the care of contact lenses.  In particular, the invention at issue is directed to the use of a single solution for cleaning and disinfecting contact lenses.

The interesting aspect of the decision is its analysis of novelty in the case that the claimed method may have been taught/performed before the relevant priority date, even though the actual inventive contribution or discovery of the later inventor may not have been previously disclosed or recognised.

In some other jurisdictions, such as the US, this situation would fall under the ‘doctrine of inherency’.  In Australia, there is no formal legal ‘doctrine’ of inherency although – as this decision demonstrates – this does not mean that it is necessarily possible to obtain a patent based merely on the discovery of a previously unknown property of a known process or composition.  In place of any distinct doctrine, the notion of inherency is itself inherent in the established tests for novelty of a claimed invention.

25 October 2011

Apple Pursues Australian Online Retailers Over Galaxy Tab Sales

Online Shopping Cart News Limited’s national daily paper, The Australian, is reporting this morning that Apple has written to Queensland-based e-commerce provider eTail Solutions – which is associated with online retailer mobicity.com.au – requesting that it cease sales of Samsung’s Galaxy Tab 10.1 to Australian customers.  (Unfortunately the full article, Apple ups the ante on Galaxy, is behind the newspaper’s new paywall, and requires a subscription for viewing in its entirety.)

Despite its ‘.com.au’ domain, Mobicity is based in Hong Kong, where the Galaxy Tab 10.1 is widely available.  While it is an infringement to import patented products into the country, putting a stop to the imports would most likely require Apple to obtain a further injunction against Mobicity.  The Federal Court of Australia could – and indeed probably would – issue such an injunction, however it would be necessary then to apply to a Hong Kong court in order to enforce it against Mobicity.  As we have previously noted, there are no provisions in the Australian patent law which would enable Apple to have goods seized by customs upon entry to the country.

We are not at all surprised by Apple’s action (see Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1 and Samsung Appeals, Retaliates, in Patent War With Apple for previous discussion on this topic), although it remains to be seen how far it is willing to go in pursuing individual retailers.

Jobs Biography Reveals Irrational Android ‘Thermonuclear’ Reaction

thermonuclearIn the lead-up to today’s accelerated launch of Walter Isaacson’s authorised biography of Steve Jobs, much of the publicity has centred on Jobs’ self-professed animosity towards Google generally, and Android in particular.

Of course, some of the most inflammatory material has been provided to the media to generate publicity for the book.  For example, as reported in the Daily Mail (Steve Jobs vowed to use his ‘last dying breath’ destroying iPhone rival Android in a ‘thermonuclear war’), Jobs swore ‘I'm going to destroy Android, because it's a stolen product. I'm willing to go thermonuclear war on this.’  He also vowed to ‘spend my last dying breath if I need to, and I will spend every penny of Apple's $40 billion in the bank, to right this wrong.’ 

For Jobs, it seems, the battle over smartphone technology was not about money, as he reportedly told former Google CEO Eric Schmidt, ‘I don't want your money. If you offer me $5 billion, I won't want it. I've got plenty of money. I want you to stop using our ideas in Android, that's all I want.’

Now that we have been able to obtain a copy of the book (ironically via Amazon for our Kindle, or Kindle reader on Windows or Android), we can confirm that all this is indeed covered in Isaacson’s biography.  Indeed, the book contains a great deal more regarding Jobs’ grievances against Google (‘outside of Search, Google’s products – Android, Google Docs – are shit’), Adobe (‘I put Adobe on the map, and they screwed me’), Microsoft (‘Bill [Gates] is basically unimaginative and has never invented anything….  He just shamelessly ripped off other people’s ideas’) and Dell (email to Michael Dell: ‘CEOs are supposed to have class.  I can see that isn’t an opinion you hold.’)

24 October 2011

Assuming Next-Day Delivery of Mail an ‘Error’

TransLang Technology Ltd v Twister B.V. [2011] APO 70 (6 September 2011)

Opposition – request for extension of time to serve Statement of Grounds and Particulars – delay in postal delivery – whether ‘all due care’ taken – whether ‘circumstances beyond control’ – whether ‘error or omission’

Express POST boxIn this recent Patent Office decision, Delegate Dr S.D. Barker was required to consider a delay by the opponent, Twister B.V., in serving a Statement of Grounds and Particulars of opposition upon applicant TransLang Technology Ltd, which arose due to slow delivery by Australia Post.  Specifically, the Statement was mailed by the opponent’s attorneys from the Sydney CBD on Wednesday, 6 April 2011, in order to meet a deadline for service upon the applicant – whose attorneys were also located in the Sydney CBD, about three blocks away – of Thursday, 7 April 2011.

The delivery in fact took three business days, arriving on Monday, 11 April 2011, four days after the deadline.

These facts, which were set out in a Statutory Declaration made by Twister’s attorney, were not in dispute.  What the Delegate had to determine was whether they provide a basis for grant of an extension of time for service of the Statement, and on what grounds.

The opponent’s attorney argued that an extension should be granted because the delay had occurred despite all due care on his part.  However, the Delegate determined that assuming next-day delivery did not constitute the requisite standard of care.  The extension was granted nonetheless, on the alternative basis that it was a relevant ‘error’ on the part of the attorney to rely upon Australia Post to deliver an article the next day within the same metropolitan area.

22 October 2011

No Extension for Patent on Drug ‘Combination’ That Is Not a ‘Mixture’

The Children's Medical Center Corporation [2011] APO 80 (7 October 2011)

Pharmaceutical extensions of term – whether indication for use of therapeutic goods in combination with another substance constitutes an inclusion of the combination on the register – whether a combination of separate known dosage forms is a ‘pharmaceutical substance per se

Thalidomid and DexamethasoneThe drug thalidomide is an anti-angiogenic agent – it suppresses the formation of new blood vessels in tissues and organs, something which occurs in only limited circumstances in healthy individuals, but which can occur in an uncontrolled manner in certain disease states, such as cancers.

Australian patent no. 2005202596 (‘patent’), in the name of The Children’s Medical Center Corporation (‘patentee’),  relates to combinations comprising anti-angiogenic compounds – particularly thalidomide – with anti-inflammatory compounds (including steroids).  The patent is the grandchild of an application originally filed on 4 November 1997, so its maximum 20-year term will expire on 4 November 2017.

The patentee sought an extension of the term of the patent of five years, until 4 November 2022, based upon registration of  thalidomide on the Australian Register of Therapeutic Goods (ARTG).  This registration includes indications for the use of thalidomide in combination with various steroids for treatment of multiple myeloma.

In this decision of Delegate Dr L. F. McCaffery, the Australian Patent Office has refused to extend the term of the patent on two grounds:
  1. thalidomide in combination with a steroid does not constitute goods included on the ARTG, where there is an indication for the combination in an entry for thalidomide; and
  2. a combination of separate known dosage forms does not constitute a ‘mixture’ within the meaning of the term ‘pharmaceutical substance per se’.

18 October 2011

Samsung Appeals, Retaliates, in Patent War With Apple

Apple-Android-InvadersLast Friday, we reported in detail on the published judgment of Justice Annabelle Bennett, in the Federal Court of Australia, granting Apple a preliminary injunction against Samsung’s Galaxy Tab 10.1 (see Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1).

While we were doing so, Apple and Samsung were back in court arguing about the scope of the injunction.  As reported by Fairfax Media (Apple fails in new Samsung court bid), Apple’s lawyers argued that the injunction should be broad enough in its terms to prevent Samsung from launching any new tablet device, and expressed concerns that the Korean company would simply launch a near-identical problem under a different name.  Samsung, for its part, rejected this argument, pointing out that a broad injunction could impact upon products already on the market in Australia – such as the Galaxy Tab 7 and 10.1v – about which Apple has not complained.

Unsurprisingly, Justice Bennett – who indicated earlier in the proceedings that she would entertain issuing only a narrow injunction – rejected Apple’s submissions.  The Court Orders require that Samsung ‘will not import, promote, offer to supply, supply, offer for sale or sell in Australia the device, examples of which were supplied by the solicitors for the respondents to the solicitors for the applicants on 25 August 2011 (Australian Galaxy Tab 10.1)’, or ‘any version of a Galaxy Tablet 10.1’ which includes the ‘heuristics’ feature or ‘touch screen’ panel as demonstrated to the court, and allegedly covered by Apple’s patents.

14 October 2011

Samsung’s ‘Eyes Wide Open’ Sinks Australian Galaxy Tab 10.1

Apple Inc. v Samsung Electronics Co. Limited [2011] FCA 1164 (13 October 2011)

Application for interlocutory injunctionprima facie case of infringement – balance of convenience – relative weight of factors contributing to balance

Eyes Wide Open! As we reported briefly yesterday, Apple has been successful in obtaining a preliminary injunction barring Samsung’s Galaxy Tab 10.1 from the Australian market.  The full written decision of Justice Annabelle Bennett has now been published (link above), enabling us to look at the court’s reasoning in greater detail.

We consider the grant of an injunction in this case to be significant – indeed a high-water-mark in the grant of injunctive relief for patent infringement in Australia.  The way this case has played out may have a significant impact on the way in which patent-owning competitors conduct business and litigation in this country for some time to come.  In our view, this impact will not be positive.

A number of factors distinguish this decision:
  1. it is the first time, to our knowledge, that a preliminary injunction has been granted barring the sale of a mass-market consumer product;
  2. due to the high level of interest in the product and the parties, the hearing took place in the spotlight of Australian and global media attention;
  3. ultimately, the basis for the injunction, barring the Galaxy Tab 10.1 from Australian sale in its entirety, is just three claims of two patents (discussed in Back in Court, Apple Blames Samsung for Failure to Reach a Deal) covering the interface of a product with literally thousands of underlying valuable software and hardware functions; and
  4. the timing of the injunction is critical, keeping a desirable competitive product off the market in the lead-up to Christmas, and thus impacting not only upon Samsung, but also upon Australian consumers and retailers.
As a measure of the level of public interest in this case, Patentology found ourselves chatting about it with Red Symons on his popular Melbourne breakfast radio program, for the second time in the last few weeks.  Never – as far as we can recall – has there been such wide-ranging interest in Australia in the subject of patent law.  Not even the gene patents debate of the past couple of years – which attracted the attention of the ‘serious’ media – has received such intensity of coverage.

13 October 2011

Australian Court Bars Sale of Samsung Galaxy Tab 10.1

Following the conclusion last week of a hearing held in the Federal Court of Australia, in Sydney (see Back in Court, Apple Blames Samsung for Failure to Reach a Deal), at noon today Justice Annabelle Bennett handed down her decision as to whether or not Apple would be granted an injunction preventing sale of Samsung’s iPad-rivalling Galaxy Tab 10.1 in Australia.

Apple has been successful in obtaining a preliminary injunction preventing the sale of the Samsung Galaxy Tab in Australia, pending a full trial on Apple’s patent infringement claims.  This certainly means that the Samsung product will be unavailable in Australia to complete with Apple’s iPads in the run-up to Christmas.

While Justice Bennett’s decision was announced in the courtroom today, we understand that the full written decision, along with a decision summary, will not be published until tomorrow.  The delay is intended to enable both Apple and Samsung to review the decision, and indicate whether they believe it contains any confidential information that should be redacted.

Patentology will report further as additional information becomes available.

12 October 2011

Computer-Aided Design Method Held Patentable in UK

Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 October 2011)

UK Patents – patentable subject matter – whether claim to a method of designing a drill bit constitutes an unpatentable ‘mental act’

drill-bitIn the recent decision Re Halliburton Energy Services Inc, the England and Wales High Court (Patents Division) has overturned the rejection of four patent applications by the UK Intellectual Property Office (UKIPO), providing some much-needed clarity around the application of the exclusions from patent-eligibility in section 1(2) of the UK Patents Act 1977  to computer-implemented inventions.

The decision overturns a current practice of the UKIPO, which essentially adopts a wide approach to determining whether a claimed invention is excluded from patentability on the basis that it is a scheme, rule or method for performing a mental act.  According to this practice, a method that is expressly claimed in a computerised form, but which would constitute merely mental steps if performed without the aid of a computer, is rejected as being both a mental act and a computer program as such. 

This practice formed the basis for rejection of the four Halliburton applications, each of which related to a method of designing a drill bit using simulations based on a finite element analysis, i.e. essentially computer-aided design (CAD) techniques.

The Halliburton decision confirms that the ‘mental acts’ exclusion is narrow in scope, and acts to prevent the grant of claims that would be infringed merely by mental processes.  It also confirms the patentability under UK law of inventions having a requisite technical nature, even when implemented in the form of a computer program.

08 October 2011

Vale Steve Jobs, But Your Influence Will Live On

steve-jobsSteve Jobs – who, as the whole world knows, passed away last week – was a prolific and successful innovator.  The New York Times has identified 317 US patents on which he is named as an inventor, which is in itself enough to justify an article on this blog!

There is, however, nothing that can be said about the man, or his achievements, that has not already been said – and said better – elsewhere.  The only unique angle that Patentology can offer, by way of tribute, is a personal perspective.  Hopefully this will strike a chord with others (particularly those of a certain age), and prompt a few thoughts about the impact that Steve Jobs, and his creations, have had in your own life.


Although I have never personally owned even a single Apple product, the passing of Steve Jobs at the age of 56 (not much more than a decade older than I am) has given me pause to think about the influence that his innovations have had in my life.  The fact is that I can barely remember a time when there were no Apple products around me.  While I cannot know what the world would have been like without Steve Jobs, I can be sure that it would have been, for me at least, a different place.

05 October 2011

USPTO Receives 850 Fast-Track Applications in First Week

uspto-logo-bullet We wrote recently about the passage of the US patent reform legislation (‘America Invents’), and its potential impact on non-US applicants (see US Patent Reform Passes, Simplifying Life for Foreign Applicants).

Among the many changes to US patent law brought about by America Invents is the introduction of prioritised examination of patent applications, also known as the ‘fast track’, or ‘track 1’.  The prospect of a multi-track examination process was first raised by USPTO Director David Kappos last year (see USPTO Multi-Track Examination Proposal & Non-US Applicants), in which applicants would be able to choose between ‘normal’ examination (‘track 2’), delayed examination (‘track 3’) and – upon payment of a suitable fee – prioritised examination (‘track 1’).

In fact, fast-track examination almost went into effect earlier this year, but was abandoned when it became apparent that there was no guarantee that the USPTO would be able to keep the corresponding additional fees necessary to fund the program.

However, with the passage of America Invents, fast-track examination has been implemented, and as of 26 September 2011 is available to all new applications.

04 October 2011

Back in Court, Apple Blames Samsung for Failure to Reach a Deal

No deal between Apple and Samsung At the adjournment of the Federal Court hearing last week (see Apple and Samsung Talk Possible ‘Deal’ as Hearing Again Adjourned), there appeared to be some glimmer of hope that Apple and Samsung would return to the Federal Court today bearing an agreement that would have seen Apple drop its application for a preliminary injunction, and the Samsung Galaxy Tab 10.1 on the market in Australia in good time for Christmas.

Alas, it seems that this was not to be.

Lawyers for both parties today returned to the courtroom in Sydney to continue submissions in the hearing, the outcome of which will determine whether or not Apple wins a preliminary injunction preventing Samsung from launching the Galaxy Tab 10.1 in Australia, prior to a final ruling on infringement and validity of Apple’s patents.  Samsung counsel Neil Young confirmed that no deal had been reached, and that ‘the parties are a considerable distance apart’.

And so the hearing continued, with both parties (finally) wrapping up their submissions to the court.

03 October 2011

Refusal of Preliminary Injunctions – a Recent Case

Interpharma Pty Ltd v Aventis Pharma SA [2011] FCA 32 (1 February 2011)

Interlocutory injunctions – where damages will be an adequate remedy – where there has been undue and inadequately explained delay

taxotere The protracted hearing over Apple’s application for an interlocutory (preliminary) injunction against Samsung’s Galaxy Tab 10.1 provides a good opportunity to look back at a decision from earlier in the year, which we did not report at the time.  On that occasion, the requested injunction, pending a full trial on the issues of patent infringement and validity, was refused by the court.

The case involved an application for interlocutory injunctive relief by the owner of Australian patent no. 666859 (the patent), Aventis Pharma SA, and its exclusive licensees, to restrain generic pharmaceutical companies Interpharma and Hospira from threatened infringement.  The patent relates to a pharmaceutical dosage form for two compounds of the taxane family known as Taxol (paclitaxel) and Taxotere (docetaxel) which are used in the treatment of cancers.  It is due to expire on 3 July 2012.

Interpharma and Hospira proposed to supply their docetaxel dosage forms as soon as possible after expiry of another patent relating to the compound docetaxel, on 6 February 2011.  Aventis argued that the proposed supply would infringe claims 1 to 4 and 6 of the patent (which, as noted, does not expire until 3 July 2012), while the generics contended that their supply will not infringe the patent and that the patent is invalid in any event.

The issue to be decided by the court was whether, in these circumstances, a preliminary injunction should be granted.  The application by Aventis was dismissed.

30 September 2011

Apple and Samsung Talk Possible ‘Deal’ as Hearing Again Adjourned

Tablets attending the Federal Court in Sydney
The hearing in Apple’s case seeking a preliminary injunction barring release of Samsung’s Galaxy Tab 10.1 in Australia has again been adjourned – this time until 10.15am on Tuesday, 4 October 2011 (Monday being a public holiday in Sydney).

Time ran out for the parties to complete their arguments today, as the judge and participants in the highly-publicised Federal Court proceedings were forced to vacate Court no. 1, on the 21st level of the courts building (shown right), to make way for a moot – a mock court hearing for law students!

Justice Bennett had been expected to deliver a ruling next week, which is likely to determine whether the Samsung Galaxy Tab 10.1 tablet will be available in Australia in time for Christmas, or whether the kids will all be getting iPads!

Yet in a surprise development at around 3.30pm it seems there was suddenly talk in the court of a possible deal between the parties which might allow Samsung to get the Galaxy Tab onto the Australian market, in some form, ahead of a final ruling.  If Apple and Samsung were to reach such an agreement, there would be no need for Justice Bennett to rule on the preliminary injunction.

However, the sudden talk of a deal did not prevent the hearing from continuing today.  When Apple's lawyers suggested a break in proceedings, to enable them to take instruction from their client, Justice Bennett decided to proceed with hearing the rest of the evidence first.  No doubt she wanted to ensure that there would be no need for a return to the courtroom next week if a deal could not be struck.  Unfortunately, time was against her all the same.

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