06 July 2012

UK Decision in HTC v Apple Will Not Influence Cases in Australia

England and WalesOn 4 July 2012, the England and Wales High Court (Patents Court) delivered a judgement in HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat), finding that five HTC devices – all running Android 2.3 (Gingerbread) – do not infringe any valid claims of four Apple patents.

This decision is the ultimate outcome of an an action brought by HTC, seeking revocation of three Apple patents.  In response, Apple counterclaimed for infringement of the three patents, and added a fourth – which HTC duly alleged was also invalid.

Overall, the court made the following findings:
  1. HTC’s Gingerbread devices do not infringe any claims of European Patent no. EP2098948, entitled ‘touch event model’;
  2. claims 1 and 2 of the ‘touch event model’ patent are invalid – claim 1 for obviousness, and both claims for being directed to unpatentable subject matter under the European ‘computer programs’ exclusion;
  3. the Gingerbread devices infringe claims 1, 6 and 18 of European Patent no. EP1964022, entitled ‘unlocking a device by performing gestures on an unlock image’ (a.k.a. ‘slide-to-unlock’);
  4. however, the claims of the ‘slide-to-unlock’ patent are invalid in view of various items of prior art, most dramatically the Swedish Neonode N1, originally launched in July 2004, in view of which the court found all Apple’s claims to be obvious (you can watch the N1 in action in this YouTube video – the ‘unlock’ feature is demonstrated at around 4:14);
  5. European Patent no. EP2059868, entitled ‘portable electronic device for photo management’, was found to be valid, but not infringed by the HTC Gingerbread devices; and
  6. European Patent no. EP1168859, entitled ‘portable radio communication apparatus using different alphabets’, was found wholly invalid for obviousness, though had it been valid the Gingerbread devices would have infringed.
A number of these European/UK patents have Australian counterparts, some of which have been asserted by Apple in its ongoing litigation against Samsung.

Florian Mueller, in a posting on his FOSS Patents blog, has suggested that the UK ruling ‘will have some relevance … in Australia’.  We disagree.  There is no reason whatsoever to think that the Australian courts will be influenced in any way by the outcome of a case involving a different party, different accused products, and which was decided under different laws.  If anything, quite the opposite is true – an Australian court may well be obliged to reject any attempt by either party to point to this UK decision as having some level of persuasive value.


For three of these four patents Apple has multiple related applications and/or patents in Australia.  These include standard patents and applications, and innovation patents, as follows:
  1. Touch event model: 2011265335 (standard, pending), 2011205170 (standard, pending), 2011101157 (innovation, certified), 2011101156 (innovation, certified), 2011101155 (innovation, certified), 2011101154 (innovation, certified);
  2. Slide-to-unlock: 2006330724 (standard, granted), 2010200661 (standard, pending), 2009100820 (innovation, certified), 2008100419 (innovation, certified); and
  3. Photo management: 2007283771 (standard, granted), 2009212904 (standard, granted), 2008100372 (innovation, certified), 2008100176 (innovation, certified).
The ‘different alphabets’ patent originally belonged to Mitsubishi, which did not elect to file in Australia.

None of the above-listed ‘touch event model’ patents appear to have been mentioned in coverage of the Australian litigation, and it is therefore not apparent that Apple is relying on these patents in Australia. 

However, the slide-to-unlock and photo management patents are included among those being asserted by Apple in Australia, and are two of the four patents which Samsung is additionally seeking to knock out on technical grounds (see Samsung Seeks Technical Knock-Out of Apple Patents).


Assuming that the ‘touch event model’ patent is not in-play in the Australian litigation, the UK High Court decision could influence the thinking of the Australian Federal Court (i.e. Justice Bennett) only in relation to the ‘slide-to-unlock’ and ‘photo management’ patents.  There are, however, a number of reasons why the UK decision is unlikely to be influential, and indeed may be rejected as providing any relevant guidance at all.

With regard to infringement, even assuming the asserted claims were identical in Australia and the UK, the Australian court will most likely insist upon performing its own construction (i.e. interpretation) of the claims, based upon expert evidence relevant to the state of knowledge in Australia.  It cannot be assumed to be a foregone conclusion that this will result in the same outcome as in the UK.

More importantly, however, the accused products in Australia are different.  For a start, they are made by Samsung, not HTC.  And they are based on a different version of the Android operating system, e.g. the Galaxy Tab 10.1 was launched with Android 3.2 (Honeycomb) installed, with customisations to incorporate Samsung’s own Touchwiz user interface layer.  Apple will need to start from scratch in Australia to establish infringement by the Samsung products.  The court will not presume – without proof – that any conclusions reached by the UK High Court are automatically applicable to Samsung’s Australian products.

As for the invalidity findings in the UK, most of these are based on a lack of inventive step (i.e. obviousness), and are not at all applicable in Australia.

For Apple’s standard patents in Australia, an inventive step requirement exists, but it is not the same as under the UK (i.e. European) law.  This is not mere speculation or opinion: it is a matter on which there is High Court authority in Australia.  In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 the majority discussed in some detail (at [42]-[49]) the ‘divergence between Australian and United Kingdom law’ in relation to inventive step.  Choice excerpts include:

46. The divergence in the case law … has since been widened by changes in statute law. It is unnecessary to consider further the changes in Australia brought about by the 1990 Act. They were discussed to some extent in [Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21]. In the United Kingdom, the 1977 UK Act caused, as Professor Cornish has put it, the “largest culture shock” received by the British patent system in its history.

48. The result [of the enactment of the 1977 UK Patents Act] has been to mandate what was foreseen as the “Europeanisation” of British law. This may bring a requirement, in broad terms, of a sufficiency or level of invention to support a patent grant, something more than the “scintilla” spoken of in this Court and earlier British authorities. The distinction may be reflected in the posing by Hoffmann LJ of the issue whether the patent in suit “discloses something sufficiently inventive to deserve the grant of a monopoly”. This raises the barrier for patentees…

In other words, it is much harder to invalidate a patent for lack of inventive step in Australia than in the UK.

In any event, many of the patents being asserted by Apple are innovation patents, for which the even less stringent test of ‘innovative step’ applies.  As the Federal Court stated in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at paragraph [53] (upheld on appeal to the Full Court):

Obviousness does not come into the issue. The idea behind [innovative step] seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious. Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.

If any of the ‘touch event model’ innovation patents have been asserted by Apple in Australia, then this reasoning would also apply.

Finally, findings of invalidity under the European ‘computer programs’ exception will not apply in Australia, where there is no corresponding provision in the patent law.


No doubt the matter is far from over in the UK, since it seems almost certain that Apple will appeal the High Court’s ruling, and that HTC will then counter-appeal.

By the time Justice Bennett is ready to rule in the Australian trial between Apple and Samsung, there may well be a further decision from a higher court in the UK.

Regardless of this, however, the provisions of the UK law applied by the High Court in the HTC case, particularly in relation to validity, are simply not relevant in Australia, a fact which has been made abundantly clear by this country’s highest court in a precedent which the Federal Court is obliged to follow.

While the UK decision is a blow to Apple and a nice win for HTC (at least for now), it should not bring Samsung any comfort in its Australia litigation.


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