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.

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