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.

29 September 2011

Apple v Samsung Hearing to Continue…

Galaxy-TimebombFederal Court Judge Annabelle Bennett today adjourned, until tomorrow afternoon, the hearing to determine whether Apple will be granted a preliminary injunction barring Samsung from marketing its Galaxy Tab 10.1 product in Australia pending the outcome of a full trial on Apple’s claims of intellectual property infringement.

Today was the second of the two days originally scheduled for the hearing (see Apple and Samsung Return to Court With ‘Eyes Wide Open’ for our report of day one).  However, with the court still hearing evidence from representatives of the warring companies, Justice Bennett has decided to extend the hearings into the afternoon of a third day.

Although Samsung had previously indicated an intention to launch the tablet on Friday, 30 September 2011 (presuming a favourable outcome in court, of course), it will now have to wait a little longer for Justice Bennett’s ruling – most likely until at least next week.

IP Australia News – Fee Review and New Web Site

IP Australia logo IP Australia, which encompasses the Australian Patent, Trade Marks and Designs offices, is commencing one of its periodic reviews of the fees charged for its services, such as filing and registration of applications.

According to an email notification issued by IP Australia:

The purpose of IP Australia’s 2011 Fee Review is to assess the existing IP Australia cost recovery arrangements in accordance with the Australian Government Cost Recovery Guidelines 2005 and ensure that fees and charges are transparent and consistent with the Australian Government cost recovery policy.

The objectives of the 2011 Fee Review is [sic] to:
  1. Maintain the on-going viability of IP Australia while keeping the cost of services low
  2. Maximise innovation in Australia through a fee structure that promotes the economic value of IP Rights
  3. Simplify and streamline the fee structure by:
             o keeping fee structures as simple as possible with minimal changes 
                over time
             o reducing the administrative burden on customers while achieving
                improvements in operational efficiency within IP Australia, and
             o increasing parity and uniformity in fees across product lines
  1. Ensure fees remain internationally competitive

27 September 2011

Apple and Samsung Return to Court With ‘Eyes Wide Open’

sydney-galaxyOn Monday, 26 September 2011, Apple and Samsung returned to the Australian Federal Court in Sydney for the first day of a two-day hearing which will determine whether or not the Samsung Galaxy Tab 10.1 can be released to the Australian market in the foreseeable future – or perhaps at all.  (See It’s Apple vs Samsung Down-Under as Smartphone War Escalates and Breaking News – Apple and Samsung Back in Australian Court for our previous reports of this dispute.)

The hearing, taking place before experienced patent judge Justice Annabelle Bennett, is to determine whether or not Apple should be granted a preliminary (or ‘interlocutory’) injunction, barring Samsung from selling its latest tablet device pending the outcome of a full trial on the issue of whether the Galaxy Tab 10.1 infringes certain Apple patents, and whether those patents are valid. 

Since a full trial could extend over two years or more, and any decision may be subject to an appeal, the grant of a preliminary injunction could well spell the end of Samsung’s efforts to launch this particular product in Australia, considering the likelihood that a number of further generations of tablet are likely to be developed and released in the meantime.  After all, the time between the launch of Apple’s iPad and iPad 2 devices was less than one year.

26 September 2011

Major Outage of Online Systems Leads to NZ Patent Office Closure!

cables_tangledThe New Zealand Patent Office (i.e. the Intellectual Property Office of New Zealand, IPONZ) has been declared closed on Tuesday, 27 and Wednesday, 28 September 2011.

The reason for the closure is an outage of a number of online systems operated by the New Zealand Ministry of Economic Development (MED) which occurred during preparation work on Saturday evening to upgrade the servers hosting these websites.  The websites will be unavailable until at least midday on Wednesday 28 September (New Zealand time, of course).

Due to the decision to declare IPONZ closed, if a deadline for filing an application or document falls on Tuesday or Wednesday this week, then the application or document can be filed on the next day when the Patent Office is open (i.e. Thursday) and will be deemed to have been filed in time.

Due to the short notice, however, IPONZ is open today (26 September 2011), despite the unavailability of its online systems.  Email communications remain available (to mail@iponz.govt.nz).  The MED notice indicates that requests for extensions of time to meet deadlines falling today are likely to be viewed favourably by IPONZ, so long as they meet the normal requirements, including the provision of a reasonable explanation as to why the deadline was missed.

Full details of the impact of the outage, and the implications of the IPONZ closure, are available in a notice on a (working) MED website.

Australian Appeals Court Further Clarifies ‘Purposive Construction’

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2011] FCAFC 121 (15 September 2011)
Appeal from: Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169
See also: Innovation Patent Claims Once Again Construed Narrowly

Claim construction –  whether ‘device’ encompasses apparatus in two parts

pig-in-mud In an appeal from a decision of Justice Barker in the Federal Court of Australia, a full bench of the court comprising Justices Bennett, Gilmour and Yates has considered the interpretation of the term ‘device’ appearing in the claims of Australian innovation patent no. 2006100113, owned by the Australian Mud Company Pty Ltd.  In particular, the court was required to consider whether the term necessarily referred to a single unitary article, or would also encompass an apparatus having equivalent functionality yet implemented in two or more parts.

The court considered the application of the principle of ‘purposive construction’, derived originally from the words of Lord Diplock in the UK case of Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.  Catnic was decided under the 1977 UK Patents Act which, considering the intended harmonisation with other member states of the European Patent Convention (EPC), requires a different – and more ‘expansive’ – approach to claim construction than was historically the case.  Nonetheless, Catnic (and its UK progeny Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) have previously received some degree of approval in the Australian courts.

This decision confirms, however, that the application of ‘purposive construction’ in Australia does not permit any deviation in scope from the patent monopoly defined by the patentee in the specific terminology adopted in the claims, and in particular that it is not permissible to import broader ‘inventive ideas’ from the specification.

Rather, it remains the case in Australia that the words chosen by the patentee to define the monopoly are determinative of the scope of the patent, even though those words must be interpreted with an eye to the purpose to which they have been applied in the specification and claims.  Terms should not be interpreted in an excessively pedantic or literal manner, but nor may they be ‘stretched beyond their textual limits.’

Divided Senate Committee Urges Rejection of Gene Patents Bill

On 21 September 2011, the Senate Legal and Constitutional Affairs Committee inquiring into the Patent Amendment (Human Genes and Biological Materials) Bill 2010 finally issued its twice-delayed report ( for further background see, e.g., Gene Patent Bill Update – Senate Inquiry Extended… Again and Update on the Australian Senate Gene Patent Inquiry).

The Committee’s final report contains one recommendation:

The Committee recommends that the Senate should not pass the Bill.

Since this almost certainly sounds the death-knell for the present effort to outlaw by legislation patent claims directed to isolated genes, and other biological materials, there are no doubt many in the genetics, biotechnology, biologics and pharmaceuticals industries – to name but a few of the contributors of opposing submissions to the Committee – breathing a sigh of relief that this episode is over.

However, as we reported previously, one reason for the delay in reporting was rumoured to be an irreconcilable split in the views of the Committee.  In fact, the final report includes – in addition to the 60-odd pages of the majority report – a further 50 pages or so comprising a detailed dissenting report by Senators Heffernan, Xenophon and Siewert.  This comes as no surprise to Patentology, since we previously predicted that these three Committee members were most likely immovable in their desire to recommend that the Bill be adopted by the Senate.  They were the backers of the Bill in the first place, were clearly hostile (in varying degrees) to opponents of the Bill who appeared at the public hearings, and quite plainly were never going to be persuaded to any alternative point-of-view.

Equally unsurprising, therefore, is the dissenting recommendation that the Senate should pass the Bill, with the amendments put forward by Senator Heffernan at the public hearings (details of which may be found in the post Update on the Australian Senate Gene Patent Inquiry).

11 September 2011

US Patent Reform Passes, Simplifying Life for Foreign Applicants


Although Patentology is currently taking a well-earned vacation, we cannot allow the enactment of the US patent reform legislation to pass without comment.

We have reported previously on the concerted effort this year by proponents of patent reform within the current US congress to bring about changes that had failed to gain sufficient support over a number of years (see Could the US Really Move to 'First-to-File'?).  It would be fair to say that the reforms do not enjoy universal support in the US, with many practitioners and other interested parties holding the opinion that the revised laws will benefit large corporations at the expense of individual inventors and small companies.

Whether or not this is so, on 8 September 2011 the US Senate passed the so-called America Invents Act, in the form previously passed by the House of Representatives (HR 1249), ensuring that it will become law once signed by President Obama.  This is expected to occur within days.

And whatever the impact for US-based applicants, the reforms will certainly make life simpler for many foreign applicants (even if ‘harmonisation’ is a dirty word to many in the US).

To readers who require a more in-depth review of the various changes about to take place in US patent law and practice, we commend a comprehensive article by our associate Gary Federochko of the US firm Banner & Witcoff.  Here we will just briefly comment on the changed most pertinent to foreign applicants for US patents.

04 September 2011

Media Interest Suggests That We Need to Talk About Patents

We have found the past few weeks to be most interesting and instructive.  In particular, we have been caught up in a wave of media attention in the patent system, triggered by various events involving the companies behind products and services that many people use every day.  Suddenly, people (and journalists) for whom the patent system is generally of little consequence have found themselves – in some small way – directly affected by it, in terms of the products they are able to buy, or the price that they might expect to pay.

As a result we have found ourselves quoted in the Australian print and online media on a number of occasions.  We have received emailed questions from journalists.  We have been re-quoted in foreign media (our comments to the Australian press, on one occasion, translated into Spanish).

Most surreal was one morning when, just as we were leaving for work, the phone rang at home.  A very popular Melbourne breakfast radio program (Red Symons, at ABC 774 Melbourne, for those ‘locals’ who know it) was wondering if we might have a few minutes to talk about the story in the news that day regarding Samsung’s citation of 2001: A Space Odyssey in its US dispute with Apple (see Did Stanley Kubrick Invent the iPad2?). 

Since when does anyone want to listen to a patent attorney over their morning coffee?