09 February 2012

Apple’s Strategic Plans for Australian Litigation

Weapons stockpileLast Friday, 3 February 2012, Apple and Samsung returned to Justice Annabelle Bennett’s Federal Courtroom in Sydney to resume hostilities for the new year.

While the main purpose of the most recent hearing was to set a timetable for a full trial on both parties various claims against the other, Apple has taken the opportunity to add new allegations of infringement to its case against Samsung, bringing the total number of patents asserted by the company in the Australian litigation to 22.

Computerworld’s Chloe Herrick has reported that Samsung’s legal team insisted at a second court appearance on Wednesday, 8 February 2012, that they would require most of this year to prepare their case, pointing out that there has probably never been a larger patent infringement case in Australia, and that at least 10 of the patents now asserted by Apple have not been raised by the company in any other country. 

Justice Bennett has set down a further date for timetabling of Apple’s case against Samsung on 9 March 2012.

Meanwhile, it appears that a schedule for Samsung’s countersuit against Apple – a case involving the assertion of patents essential to the implementation of 3G mobile communications standards – is closer to finalisation, with an initial part of the trial likely to be held in July, and the remainder of the case to be heard in September.

APPLE’S AUSTRALIAN ASSAULT

As Samsung’s lawyers have argued, the scale of Apple’s patent infringement claims is unprecedented in Australia.  A case involving the alleged infringement, and challenges to the validity, of 22 patents is a massive exercise for both parties, and for the court.

With the benefit of hindsight, however, it is clear that Apple has been building up its Australian patent arsenal for a number of years.  It might therefore have been possible to anticipate that Apple would pick this country as one of its chosen venues for an assault on Android and – as it turns out – Samsung, should anyone have been looking for the signs.

AUSTRALIAN PATENT BUILD-UP

In reporting the Australian patent grant statistics for 2011 last week (see Microsoft Once Again Heads Australian Patent Recipient List), we noted a significant rise in the number of patents granted to Apple, bringing it into the top 20 recipients in Australia for the first time.

However, the data becomes even more interesting if we look specifically at the patents granted to Apple over the past ten years.

The chart below shows the number of Australian patents issued to Apple each year for the past decade.  The red bars represent the total number of standard patents granted, while the green bars are the total number of innovation patents.  As we have previously explained, merely to obtain an innovation patent means very little unless it is also examined and certified, a voluntary process which then enables the patent to be enforced.  The purple bars thus indicate the number of innovation patents which have subsequently been certified.  It is therefore apparent that Apple requests examination of almost all of its innovation patents, suggesting that it wants these patents to be available for enforcement when required.  (The lower proportion of certifications in 2011 may simply be because the process typically takes a few months to complete, and there has not yet been sufficient time for all of these recent innovation patents to be examined and certified.)

Apple's Australian Patent Stockpile

Prior to 2007, Apple’s level of patenting activity in Australia was low, with no more than a handful of standard patents being issued to the company each year.  During this earlier period, Apple was making no use at all of the innovation patent system.

However, from 2007 onwards – roughly coinciding with the development and marketing of the iPhone and iPad – Apple has been aggressively building its Australian patent portfolio.  Each year during this period it has filed, and requested certification of, a number of innovation patents – peaking at 41 filed and 40 certified in 2008.  The growth in standard patent grants appears almost exponential at first glance, and considering the typical delays in examination of standard patent applications, this enhanced filing strategy would also have commenced in around the 2006-2007 time period, leading to the 57 standard patents issued to Apple in 2011.

By the time Apple instituted infringement proceedings against Samsung on 28 July last year, it was clearly armed to the teeth with iPhone- and iPad-related patents, with yet more ammunition still in the Patent Office pipeline.

Of course this was not coincidence.  As the data show, Apple had been working for a number of years to ensure that it was in just this position.

WHY AUSTRALIA?

Although the Australian courts have rarely provided a venue for international patent disputes – and certainly none of the scale and profile of Apple v Samsung – the jurisdiction does provide a number of potential advantages to a patentee.

Firstly, the Australian patent law and the associated judicial system are relatively patentee-friendly.  The current law sets a fairly low standard of inventiveness, by comparison with other comparable jurisdictions, making it more difficult for an accused infringer to invalidate a patent.  Furthermore, patent matters are heard only in the Federal Court of Australia (or, if leave to appeal is granted, in the High Court).  As a result, the judges involved are generally experienced in hearing patent cases.

Australia’s innovation patent system is also a powerful tool in the hands of a strategic patentee.  While it is similar in some respects to the ‘utility model’ rights available in some other jurisdictions, it generally has fewer restrictions.  Innovation patents can cover almost any subject matter for which standard patents may be granted – including processes, and computer-implemented inventions.  And once certified, an innovation patent provides the holder with exactly the same rights as a standard patent, including the ability to obtain injunctions and awards of financial compensation against infringers, yet the innovative step standard is significantly lower than the usual inventive step requirement for standard patents, making an innovation patent much more difficult to invalidate.  While innovation patents have only an eight year maximum term, and can include no more than five claims, these limitations are hardly relevant for the kind of technology at issue between Apple and Samsung.

CONCLUSION

Overall, it seems reasonable to assume that Apple has been planning its current Australian assault for some years.  Whether it expected that it would ever actually ‘pull the trigger’ on its arsenal of patents, and whether it knew from the outset that the target would be Samsung, is less apparent. 

What seems certain is that Apple saw the battle for mobile supremacy – or survival – coming, and was determined to be well-prepared.  And Australia must always have been on its list of prospective venues if, and when, the time for a showdown arrived.

2 comments:

Dylan Xavier said...

The question Mark is what has Samsung being doing across the same period and the period before. Also does Samsung have any strategic patents to challenge Apple that can bring Apple to the bargaining table? Samsung just needs 1 patent to block an iDevice to bring Apple to the bargaining table.


looking forward to more quality writing from you this year :)

Patentology (Mark Summerfield) said...

As far as I can see, it has been very much 'business as usual' for Samsung, at least insofar as its Australian patent strategy is concerned.

It is difficult to assess precisely where Samsung stands in relation to relevant mobile device technology, because its buisiness is far more diverse than Apple's.  Over the period from 2002 to the end of 2011, Samsung received 623 Australian patents which are still in force.  Many of these relate to communications technologies, some of which would be relevant (but potentially FRAND-encumbered).  However there are also patents relating to technologies such as video coding, which may or may not be pertinent to smartphones.  There are also unrelated patents, such as those relating to vacuum cleaners and other appliances.

But there is no indication of any particular strategy in Samsung's patent filings.  Korean companies are not yet as sophisticated in their IP management as the best US or European organisations.  They tend to do research, and file applications on the inventive outcomes relatively indiscriminately, in the hope that the portfolio will therefore end up containing patents that are useful for either offensive or defensive purposes.

Notably, Samsung is not using the Australian innovation patent system at all.  Apple, on the other hand, appears to be the single largest user.  Since 2007 it has obtained 94 innovation patents, or 2% of the total of 4668 filed during this period which are still in force.  Of these, 83 are now certified (with some from last year probably still to come).  This means that Apple's certification rate is at least 88%, compared with less than 25% on average (only 1003 of those 4668 total innovation patents are certified).  Apple holds 8.3% of all the certified innovation patents obtained between 2007 and 2012!

There is clearly method behind Apple's strategy.  Samsung, I suspect, has been rifling through its portfolio after the fact, desperately hoping to find something that it can use effectively against Apple.  Clearly its 3G standards-related patents are relevant, since Apple cannot avoid using this technology, but there is then the whole question about the impact of FRAND obligations.  It remains to be seen whether Samsung can find anything else in the cupboard!

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