The application, and details the patents in question, have been reported in the past days by both iTnews and ZDNet.
If Samsung’s application is successful, it could see the four patents, all of which relate to touch-screen functionality (including the famous ‘slide-to-unlock’ patent), declared null and void by the Federal Court.
In our opinion, however, Samsung’s prospects of success are at best even, and probably somewhat less than that. There are, as we shall explain, a number of hurdles which Samsung must leap in order to prevail, and should it fall at any one of them then its whole case will fail.
WHAT IS THIS APPLICATION ABOUT?The cause of Samsung’s request lies in a strategy adopted by Apple to obtain innovation patents as an interim form of enforceable protection, while waiting for its standard patent applications to progress through the examination, acceptance, opposition and grant stages of processing.
This is becoming a common strategy, because an innovation patent can be granted, examined and certified within months, cannot be opposed pre-certification, and provides exactly the same enforceable rights as a standard patent. And while an innovation patent can contain only five claims, and has term of no more than eight years, the patentee can subsequently ‘replace’ it with a standard patent, having a term of up to 20 years.
However, section 64, subsection (2), of the Patents Act 1990 prohibits the simultaneous grant of more than one patent for the same invention – a misdemeanour commonly known as ‘double patenting’. This means that an applicant seeking to obtain the grant of a standard patent having one or more claims in common with a previously granted innovation patent is required to surrender the earlier patent before the later one can proceed to grant.
Samsung’s complaint is essentially that the Commissioner of Patents should never have granted the standard patents to Apple in the first place, and that they should therefore be declared null and void.
PATENTS NOT INVALID UNDER PATENTS ACTWhile section 64 states that ‘a standard patent cannot be granted’ on the second application, nothing in the Patents Act provides any penalty in the event that the Patent Office fails to identify the earlier patents, and grants a second patent despite the prohibition.
In the Federal Court’s 2010 decision in Arbitron v Telecontrol Aktiengesellschaft  FCA 302, Arbitron had inadvertently obtained two patents which had claims in common. As part of its defence against infringement, Telecontrol sought to have the patents revoked under s138(3)(a), or alternatively to have the Register of Patents rectified under s192(1) to remove the patents, on the basis that they should not have been granted in the first place with the common claims.
However, the court found that neither of these provisions enable the ‘error’ of granting a second patent to be corrected, and that, in any case, the policy behind the prohibition on double patenting is primarily to avoid public confusion but that, aside from this, there are no significant undesirable consequences should it occur. Having two patents, rather than one, with exactly the same effective filing date, does not give the patentee any additional rights.
So while Apple was no doubt aware at the time of grant of the standard patents that it had not yet surrendered its innovation patents, it perhaps felt that the failure of the Patent Office to notice the problem, and insist on surrender before granting the new patents, was not something that it needed to be too concerned about.
Apple has since allowed the innovation patents to expire, due to non-payment of annual maintenance fees. So if Samsung is successful in its application, Apple will lose all of its rights in relation to the inventions claimed in the four standard patents.
BASIS FOR SAMSUNG’S APPLICATIONSamsung is also clearly aware that the Patents Act does not provide any mechanism to invalidate patents which were wrongly-granted under the double patenting prohibition. It has therefore adopted the alternative approach of applying for the patents to be declared null and void, on the basis that their grant was ultra vires, i.e. beyond the powers of the Commissioner of Patents, under the powers of review granted to the Federal Court under the Administrative Decisions (Judicial Review) Act 1977.
There are a series of things that Samsung must achieve in order to succeed in this application:
- it must show that the decisions by the Commissioner to grant a patent are among those which are subject to review under the Act;
- it must establish that it is a ‘person aggrieved’ by the decisions;
- it must establish at least one ground upon which the decisions may be overturned; and
- it must persuade the court to exercise a discretion in its favour.
Application of the ActThe first step should be relatively straightforward. With only a few exceptions (the Patents Act not being among them) the Administrative Decisions (Judicial Review) Act 1977 applies to decisions ‘of an administrative character’ made under any Australian ‘enactment’ (section 3, ‘Interpretation’).
A ‘Person Aggrieved’Under section 5 of the Administrative Decisions (Judicial Review) Act an application for review of a decision may only be made by ‘a person who is aggrieved’ by the decision. Samsung’s claim is that it is aggrieved because Apple has commenced infringement proceedings in the Federal Court based on the granted patents.
While this might seem like a significant grievance, it is not entirely clear that Samsung is aggrieved by the decisions to grant the patents. Certainly if the patents had not been granted, Apple could not use them to sue Samsung. But if the Patent Office had refused to grant the patents in the first place, Apple would simply have surrendered its innovation patents so that the standard patents could be granted.
So it might be said that Samsung’s grievance is not a direct result of the decisions, but rather is the result of a particular series of events, the end result of which would most likely not have been avoided had the Patent Office identified the double patenting problem in the first place.
In most cases, a person will be ‘aggrieved’ by a decision because they were directly and immediately adversely affected. It is possibly quite a different thing to assert grievance as a result of what someone has done with a patent following a decision to grant the patent some months, or years, earlier.
Grounds for ReviewThe grounds on which a decision may be reviewed are set out in subsection 5(1) of the Administrative Decisions (Judicial Review) Act. Samsung’s Statement of Claim suggests that it intends to rely upon paragraphs 5(1)(c) (that the Commissioner of Patents did not have jurisdiction to make the decision), 5(1)(d) (that the decision was not authorised under the Patents Act 1990) and 5(1)(j) (that the decision was otherwise contrary to law).
The first two of these grounds do not seem entirely appropriate. Clearly the Commissioner of Patents has jurisdiction to grant patents, under the authority of the Patents Act. Nonetheless, the Patents Act prohibits double patenting, so the grant of the standard patents was made contrary to this provision of the law.
Exercise of DiscretionSamsung’s biggest problem may lie with section 16 of the Administrative Decisions (Judicial Review) Act, subsection (1) of which states:
On an application for an order of review in respect of a decision, the Federal Court or the Federal Magistrates Court may, in its discretion, make all or any of the following orders:
(a) an order quashing or setting aside the decision, or a part of the decision, with effect from the date of the order or from such earlier or later date as the court specifies;
(b) an order referring the matter to which the decision relates to the person who made the decision for further consideration, subject to such directions as the court thinks fit;
(c) an order declaring the rights of the parties in respect of any matter to which the decision relates;
(d) an order directing any of the parties to do, or to refrain from doing, any act or thing the doing, or the refraining from the doing, of which the court considers necessary to do justice between the parties.
There are two points to note about this. Firstly, the power of the court to make any orders is entirely discretionary – it is not obliged to do anything at all, even if the decision under review was made contrary to the law.
Secondly, the orders which the court may make are not limited to those which Samsung is requesting, i.e. the complete nullification of Apple’s patents. It may make a lesser order, such as revoking only those claims which were duplicated from the innovation patents. Such an order may or may not provide Samsung with assistance in its defence of Apple’s infringement claims.
The complete loss of its patent rights is a very harsh outcome for Apple as result of what is, on the face of it, an error by the Patent Office. Samsung may argue that Apple had the opportunity – and perhaps an obligation – to surrender its innovation patents to avoid the unlawful grant of its standard patents. But the decision under review is not the one made by Apple when it elected not to do this. It is not the normal practice of the Patent Office to ask applicants to confirm that they do not have existing granted claims for the same invention before granting a patent. It is almost inevitable, therefore, that errors of this kind will occur from time-to-time.
Overall, it seems questionable whether the court will choose to exercise a discretion to the benefit of Samsung, which is adverse to Apple, and which does not appear to achieve any useful public policy objective.
CONCLUSIONOverall, Samsung is likely to succeed in establishing that the decisions to grant Apple’s patents are subject to review under the Administrative Decisions (Judicial Review) Act, and that the grants were indeed made contrary to subsection 64(2) of the Patents Act 1990.
While there is no doubt that Samsung is aggrieved, it is less certain that this is a result, in the relevant sense, of the ‘offending’ decisions of the Commissioner of Patents.
But Samsung’s greatest hurdle is likely to be persuading the court to exercise a discretion in its favour in these circumstances.
The case is set down for a directions hearing before Justice Bennett on 25 June 2012. On the face of it, the matter should require no more than a day or two of hearings, and would be best dealt with prior to commencement of the trials on the substantive issues of infringement and validity of the patents. Justice Bennett may therefore move to hear Samsung’s application on an expedited basis.
One possible circumstance which may prevent a quick resolution of the matter is if Samsung wants to argue that Apple’s conduct in failing to surrender its innovation patents is a relevant consideration in the exercise of discretion. In this case, it may seek discovery of documents relating to Apple’s decisions, which in turn may raise issues of professional privilege, since such documents are likely to include advice provided by Apple’s attorneys.
A seemingly quite straightforward matter may yet become as bogged down in claims and counterclaims as have so many other disputes between these parties.