[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.
The Attorney General of Canada and The Commissioner of Patents v Amazon.com  FCA 328 (24 November 2011)
The 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.
Today 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.
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:
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
The Royal Children’s Hospital v Robert Alexander 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
In 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  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.
On 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.
Apple 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.
Laurence Clifford Scott v Icon Plastics Pty Ltd 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
A 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.
Validity – ‘external’ fair basis – whether claims entitled to priority date of original US application – whether claims are novel
Generic 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.
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.
We 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.
Updated: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.
FEDERAL COURT ‘FORM GUIDE’
With the spring racing carnival in full swing, we think that a guide to the ‘form’ of the judges may be in order!
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.
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.
THE ‘FRAND LICENSING ISSUE’
So what is the ‘FRAND licensing issue’, and why is it likely to occupy so much of the court’s attention?
Jumbo Interactive Ltd & New South Wales Lotteries Corp v Elot, Inc. 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 1990 – whether claims relate to a ‘manner of manufacture’
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  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 APO 10, Iowa Lottery APO 25, Research Affiliates, LLC APO 31 and Network Solutions, LLC APO 65. The real authorities on manner of manufacture – the High Court in National Research and Development Corporation v Commissioner of Patents (‘NRDC’) HCA 67, and the Full Federal Court decisions in CCOM Pty Ltd v Jiejing FCA 1168 and Grant vCommissioner of Patents 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