Australian Government Seeks $60M Damages Over Invalid Patent

A court ruling has revealed that the Commonwealth of Australia (i.e. the Federal Government) is seeking to recover $60 million it considers has been ‘overpaid’ for the anti-clotting drug marketed by Sanofi (formerly Sanofi-Aventis) and Bristol-Meyers Squibb under the brand name PLAVIX: Commonwealth of Australia v Sanofi-Aventis [2015] FCA 384.

Sanofi was the owner of Australian Patent No. 597784, which includes claims directed to the compound having the international non-proprietary name clopidogrel.  As noted above, clopidogrel has anti-clotting activity, and is prescribed primarily to prevent heart attack and stroke in high-risk patients, such as those who have a history of these conditions.  The brand-name drug PLAVIX was immensely profitable – according to Wikipedia, it was the second best-selling drug in the world, grossing over US$9 billion in global sales in 2010.  (And, since this is the Internet, Wikipedia also reveals that clopidogrel may have beneficial uses in cats.)

In 2007, generic pharmaceutical manufacturer Apotex Pty Ltd, wanting to introduce its own clopidogrel product to the Australian market, commenced proceedings against Sanofi in the Federal Court of Australia seeking revocation of its patent.  Sanofi, in turn, accused Apotex of threatening infringement.

For the duration of the resulting proceedings, injunctions imposed by the court, along with undertakings that Apotex provided, prevented it from introducing a generic product, leaving patients, and the Australian Government, with no alternative to the premium-priced brand-name product PLAVIX.  Eventually, Sanofi’s patent was found to be invalid, implying that a cheaper generic version of the drug could have been made available all along. 

The notional difference in price between the brand-name product and a hypothetical generic alternative is the basis for the Government’s claim for $60 million in damages.

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Tags: Australia, Damages, Interlocutory injunction, Pharmaceuticals

Merck Injunction Gets Up Apotex’s Nose

Merck Sharp & Dohme Corp v Apotex Pty Ltd [2012] FCA 928 (31 August 2012)

Interlocutory injunctions – prima facie case – balance of convenience – permanent impact of generic competition upon market for pharmaceutical products

The Federal Court of Australia (Justice Jagot) has issued a preliminary injunction barring generic pharmaceutical manufacturer from marketing and selling nasal sprays containing the corticosteroid mometasone furoate (MF) for the treatment of allergic rhinitis.  The injunction will remain in place pending a final hearing to determine the validity of Merck’s Australian Patent No. 691880, entitled ‘use of mometasone furoate for treating airway passage and lung diseases’. 

Merck sells its own MF-based product in Australia under the brand name NASONEX, which enjoyed sales worth $24.6 million in 2011.  Apotex had commenced marketing, and proposed to commence sales in September 2012 of generic versions APO-MOMETASONE NASAL SPRAY, APOTEX-MOMETASONE NASAL SPRAY, CHEMMART MOMETASONE NASAL SPRAY, GENRX MOMETASONE NASAL SPRAY and TERRY WHITE CHEMISTS MOMETASONE NASAL SPRAY.

Apotex did not deny that its proposed activities would infringe Merck’s patent, but argued that the patent is invalid, and that the claimed invention was obvious at the relevant priority date.  The court was not persuaded that Apotex’s case for invalidity was sufficiently strong to deny Merck’s establishment of a prima facie case of infringement.  Furthermore, the court found that the balance of convenience in this case favoured granting the preliminary injunction sought by Merck.

The injunction means that generic competitors to the NASONEX product will most likely be kept off the market in Australia until at least the second half of 2013.

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Tags: Australia, Interlocutory injunction, Obviousness, Pharmaceuticals

Generic ABILIFY (Aripiprazole) Ban to be Reviewed

Generic Health Pty Ltd v Otsuka Pharmaceutical Co Ltd [2012] FCA 412 (23 April 2012)

Practice and procedure – interlocutory injunction – whether application for leave to appeal should be referred to a Full Court

Generic Health Pty Ltd will have the opportunity to appeal the decision of a single judge of the Federal Court of Australia granting a preliminary injunction preventing it from launching a generic version of the antipsychotic drug ABILIFY (see Australian Federal Court Blocks Generic ABILIFY (Aripiprazole)).

In general, any decision of a single judge of the Federal Court can be challenged by appeal to the Full Court – a panel of three judges.  In the case of a final ruling, i.e. after a full trial, any party to the proceedings automatically has the right to appeal.  However, a Full Court review of a preliminary judgement requires permission, i.e. ‘leave’ to appeal.

As a result, appealing a preliminary injunction is generally a two-step process – first the appellant must obtain leave to take the matter to a Full Bench of the court and then, if leave is granted, it is still necessary for the appeal proper to be heard.

In this case, Justice Katzmann has granted a request by Generic Health for its application for leave to be heard by a Full Bench of the court, and for the appeal itself to be heard either simultaneously, or immediately following the leave hearing.  Regular readers of this blog may recall that Justice Foster made a similar ruling in favour of Samsung last year (see Samsung Over First Hurdle in Bid To Overturn Apple Injunction).

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Tags: Appeal, Federal Court practice, Interlocutory injunction, Pharmaceuticals

CRESTOR Catch-Up

Apotex Pty Ltd v AstraZeneca AB [2011] FCA 1520 (14 December 2011)
Apotex Pty Ltd v AstraZeneca AB (No 2) [2012] FCA 142 (28 February 2012)
Watson Pharma Pty Ltd v AstraZeneca AB [2012] FCA 200 (9 March 2012)
Apotex Pty Ltd v AstraZeneca AB (No 3) [2012] FCA 265 (23 March 2012)

AstraZenenca’s cholesterol drug CRESTOR will remain without generic competition in the Australian market for the foreseeable future, following a series of interlocutory decisions in which injunction were granted against three rival pharmaceutical manufacturers.

Back in March we wrote about a number of ongoing cases between original manufacturer AstraZeneca AB, and generic pharmaceutical companies Apotex Pty Ltd, Watson Pharma Pty Ltd and Ascent Pharma Pty Ltd, over cholesterol drug rosuvastatin, marketed in Australian by AstraZeneca as CRESTOR.  (See Preliminary Injunction for CRESTOR—Not All ‘Tablets’ are Equal and Generics Unsuccessful in CRESTOR Injunction Challenges.)

In a series of three interlocutory decisions reported in our earlier articles, Federal Court judges Rares, Emmett and Jagot determined that all of the relevant factors supported the grant of injunctions barring the sale of generic versions of rosuvastatin pending a full hearing on the validity and infringement of three AstraZeneca patents:

1. the ‘051 patent’, or ‘dosage patent’ (no. 2000023051), which relates to the treatment of hypercholesterolemia using a daily oral dosage of 5-10 mg of rosuvastatin;
2. the ‘842 patent’ or ‘composition patent’ (no. 2000051842), which relates to a formulation (e.g. a tablet) in which rosuvastatin is present in combination with a specified inorganic salt (which serves to stabilise the active ingredient); and
3. the ‘165 patent’, or ‘generic patent’ (no. 2002214165), relating to the use of rosuvastatin for treatment of heterozygous familial hypercholesterolemia.

Apotex’s efforts to circumvent the injunction against it were not yet over.  At a further hearing held on 16-17 March 2012, Justice Jagot was asked to determine whether changes in the coating of its generic rosuvastatin product were be sufficient to avoid the reach of AstraZeneca’s patents.

However, Apotex’s last-ditch effort has been dismissed, maintaining the status quo and excluding generic competition to CRESTOR pending a final determination on the issues of infringement and validity of the patents.

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Tags: Australia, Interlocutory injunction, Pharmaceuticals

Patent Worth Paper It’s Written On, and Then Some!

Jonker v Platform Solutions Pty Ltd [2012] FCA 237 (15 March 2012)

Interlocutory injunction – strength of prima facie case of infringement – strength of prima facie case of invalidity – irreparable injury – balance of convenience

A Federal Court judge has granted a preliminary injunction against a Brisbane-based supplier of industrial work platforms and telehandlers after one of the company’s directors told a patent-holder to ‘just do what you want’ because ‘patents aren’t worth the paper they’re written on.’

In retrospect – and particularly in the year that Apple managed to keep Samsung’s Galaxy Tab 10.1 out of the Australian market for four months based on its patent rights – this seems like a brave challenge.  In the event, it has cost Mitchell Ely and his company Platform Solutions Pty Ltd a trip to the Federal Court, where they have been unsuccessful in defending against an application for an urgent interlocutory injunction brought by John Jonker and his company Jonker Plant Hire Pty Ltd.  The injunction will prevent Platform Solutions from commercially exploiting a mobile lighting apparatus said to infringe an innovation patent owned by Mr Jonker.

To a considerable extent, Ely was his own worst enemy in this case.  His response to initial contact from Jonker became the primary basis for the court’s finding that there was a sufficient probability of patent infringement to support an injunction.  There is a lesson in this about the dangers of making any form of reply to a threat of patent infringement proceedings without the benefit of legal advice.

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Tags: Australia, Interlocutory injunction

Australian Federal Court Blocks Generic ABILIFY (Aripiprazole)

Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd [2012] FCA 239 (16 March 2012)

Interlocutory injunction – prima facie case of infringement – strength of invalidity case – balance of convenience – Infringement – meaning of ‘exploit’ in Patents Act 1990 – interpretation of ‘Swiss-style’ claims – infringement of ‘method of treatment’ claims by supply of product – consideration of ‘Gillette defence’ and whether a discrete defence in Australian patent law

Even while the CRESTOR injunction saga continues (see Generics Unsuccessful in CRESTOR Injunction Challenges and Preliminary Injunction for CRESTOR—Not All ‘Tablets’ are Equal), the Federal Court of Australia has granted yet another preliminary injunction barring a generic product from the market pending a full trial on infringement and validity of relevant patents.  This time the drug in question is ‘atypical’ antipsychotic aripiprazole, marketed by Bristol-Meyers Squibb (BMS) as ABILIFY, under license from the patentee Otsuka Pharmaceutical Co., Ltd.

The recurring theme in these pharmaceutical cases is that the ‘balance of convenience’ will often favour the patentee and original drug manufacturer, as a result of the operation of the Australian Pharmaceutical Benefits Scheme (PBS).  Under the PBS, various approved drugs are subsidised by the government to improve availability and affordability.  In exchange for these subsidies (which undeniably increase levels of prescription, sale and use) the government exercises a degree of price control to ensure that taxpayers are not unduly burdened by the cost of patented drugs. 

One of the consequences of these price controls is that the entry of a generic product onto the market results in an immediate, and irreversible, 16% drop in the price that the government will pay for the drug.  A manufacturer can apply to charge a ‘brand price premium’, however if this is granted the additional cost is paid by the patient, not by the government, meaning that the generic product will be cheaper to the end user.

There are, however, some additional factors which set the ABILIFY case apart from the recent CRESTOR decisions – in particular the court’s discussion of the meaning of ‘exploit’ in the Patents Act 1990, its interpretation of ‘Swiss-style’ claims, and its consideration of the applicability of the so-called ‘Gillette defence’.

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Tags: Australia, Indirect infringement, Infringement, Interlocutory injunction, Pharmaceuticals

Generics Unsuccessful in CRESTOR Injunction Challenges

Apotex Pty Ltd v AstraZeneca AB (No 2) [2012] FCA 142 (28 February 2012)
Watson Pharma Pty Ltd v AstraZeneca AB [2012] FCA 200 (9 March 2012)

Interlocutory injunctions – prima facie case – balance of convenience – whether additional evidence provides grounds to vary previous findings

At least five Australian pharmaceutical manufacturers are now ready to launch generic versions of cholesterol-lowering drug CRESTOR, while being barred from doing so pending the outcome of litigation over three patents held by the original manufacturer, AstraZeneca AB.

Back in December, Apotex Pty Ltd was unsuccessful in opposing an application by AstraZeneca for a preliminary injunction barring the sale by Apotex of a generic version of CRESTOR (see Preliminary Injunction for CRESTOR—Not All ‘Tablets’ are Equal).  Apotex had decided to contest the application only at the last minute, in the hope of preventing the grant of a limited injunction until 31 January 2012 pending a full hearing between the parties on the application.  Instead, the court granted an indefinite injunction finding that, having heard a substantive case from both parties, it was not appropriate to presume that Apotex was entitled to a further opportunity to oppose the injunction.  ‘Put simply,’ said Justice Rares, ‘a party is entitled to one bite at that cherry.’

This did not prevent Apotex from appearing before Justice Emmett on 31 January and arguing its case once again, this time armed with the evidence which it had not yet fully prepared at the time of the earlier hearing.

Meanwhile, two other manufacturers – Watson Pharma Pty Ltd and Ascent Pharma Pty Ltd – have been gearing up to follow Apotex’s lead in launching their own generic rosuvastatin products (rosuvastatin is the active ingredient in CRESTOR), and also faced applications by AstraZeneca for preliminary injunctions.  These applications were heard by yet another judge – Justice Jagot – on 1 March 2012.

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Tags: Australia, Interlocutory injunction, Pharmaceuticals

Preliminary Injunction for CRESTOR—Not All ‘Tablets’ are Equal

Apotex Pty Ltd v AstraZeneca AB [2011] FCA 1520 (14 December 2011)

Interlocutory injunctions – prima facie case – balance of convenience – relevance of delay by patentee, complexity of proceedings, and parties’ conduct and obligations

In the first Federal Court decision to follow the ruling of the Full Court in Samsung v Apple (see Samsung v Apple – A Closer Look at the Appeal Decision) Justice Rares has granted a preliminary injunction to pharmaceutical company AstraZeneca, barring  Apotex from supplying a generic version of cholesterol drug CRESTOR (rosuvastatin) in Australia pending a final decision regarding the validity and infringement of three patents owned by AstraZeneca.

In reaching this decision, Justice Rares was bound by the ruling of the Full Court overturning the injunction originally granted to Apple against Samsung’s Galaxy Tab 10.1 tablet, which had been issued only two weeks earlier.  The Apple case confirmed that the correct approach to determining whether or not to grant a preliminary injunction is:

1. firstly, to assess whether the patentee has a sufficiently strong prima facie case upon which it may succeed at trial; and
2. if so, to weigh up the balance of convenience to the parties in the event that an injunction is, or is not, granted, to determine whether it is appropriate to do so in the circumstances.

Apple failed to defend its injunction because, while the merits and the question of convenience between itself and Samsung were fairly evenly balanced, this meant that Apple needed to demonstrate good prospects of success to justify imposing substantial prejudice on Samsung.  As Apple found to its detriment, it may be very difficult to establish ‘good’ prospects of success in a complex patent case, which might depend heavily on expert evidence to interpret patent claims, assess infringement issues, and evaluate inventiveness.

Not so AstraZeneca, however, which has been awarded an interlocutory injunction which will be effective until such time as the court orders otherwise – normally this will be after a final judgement on the merits of the case.

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Tags: Australia, Interlocutory injunction, Pharmaceuticals

Breaking: High Court Rejects Apple Appeal Bid

Samsung has had a win today in Australia, where the High Court has refused Apple's application for 'Special Leave' to appeal from last week's decision of the Full Federal Court overturing the grant of a preliminary injunction against the launch of the Galaxy Tab 10.1 (see Samsung v Apple – A Closer Look at the Appeal Decision).

Samsung will now be free to sell its tablet in Australia, at least pending a full trial and decision in Apple's primary infringement case in the Federal Court before Justice Annabelle Bennett.  Reportedly, we should see the galaxy Tab 10.1 in Australian stores before the end of next week, for those looking to pick up a last-minute Christmas present or two!

There is, at present, no date set down for the main infringement case to be heard.  However, Samsung's counter-suit against Apple's iPhone 4S, and other 3G devices, is scheduled to be heard during March and April next year (see Samsung Drops Injunction Demands, Grabs Reins in Apple Dispute).

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Tags: Appeal, Apple-v-Samsung, Interlocutory injunction, Smartphone wars

Could Samsung’s US ‘Win’ Influence Australia’s High Court?

In what could be a very timely decision for Samsung, Judge Lucy Koh in the United States District Court for the Northern District of California issued orders late on Friday, 2 December 2011, denying an interim injunction in the US patent infringement action which was initiated by Apple on 15 April 2011.

We have obtained a copy of the order, which is available for viewing in Google Docs, or for download as a PDF (2.7 Mb).

The order means that Samsung will be able to continue selling its Galaxy Tab 10.1, Galaxy S 4G, the Infuse 4G and the Droid Charge in the United States, until and unless Apple is ultimately successful at trial in establishing infringement by Samsung of at least one valid claim of the patents which it has asserted in the US proceedings. 

Significantly, despite denying a preliminary injunction at this stage, Judge Koh has indicated her provisional opinion that at least one of the four patents relied upon by Apple in the preliminary application is likely valid and infringed.  If that turns out to be so, then Samsung is potentially looking down the barrel of an expensive damages claim, unless it can settle its disputes with Apple in the meantime.

One ‘news’ item that has emerged from the publication of Judge Koh’s order – despite commercially-sensitive passages being substantially redacted – is the supposed revelation that, contrary to widely-held opinions, Apple is in fact willing to license at least some of its ‘smartphone/tablet’ related patents to its competitors, and has even negotiated with Samsung to do so.  (See, e.g., coverage by The Verge, Apple licensed iOS scrolling patent to Nokia and IBM, offered license to Samsung.)

The reason that this information should not come as any surprise is that (as we will discuss further below)  it was already revealed in Justice Bennett’s interlocutory decision in the Federal Court of Australia, again highlighted by a sea of surrounding redactions.

So, with Apple now denied a preliminary injunction in the US as well as in Australia (albeit on appeal), it seems that the stars may finally be aligning for Samsung.  However, it still faces the hurdle of a Special Leave hearing before the High Court of Australia this Friday (see High Court Grants Apple Further Galaxy Tab Reprieve).  So is it possible that the US decision could have any impact on the outcome here?

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Tags: Appeal, Apple-v-Samsung, Australia, Interlocutory injunction, US

High Court Grants Apple Further Galaxy Tab Reprieve

This morning at 9.30am, Justice Heydon heard arguments from Apple requesting an extended stay of the orders made on Wednesday by the Full Federal Court, overturning the injunction barring Samsung's Galaxy Tab 10.1 tablet computer from the Australian market.

The Federal Court granted a stay of its orders until 4pm today, to give Apple an opportunity to launch an application for Special Leave to appeal to the High Court.  While it would be impossible to schedule a hearing on such an application before the end of the week, the Federal Court determined that any further stay of the orders would be a matter for the High Court.

After hearing arguments from both sides, Justice Heydon granted Apple's request for a further stay, finding that the extension is necessary ‘to preserve the subject matter of a Special Leave application’, and ensuring that it will now be at least a further week before Samsung is able to bring stock of the Galaxy Tab 10.1 into Australia.

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Tags: Appeal, Apple-v-Samsung, Australia, Interlocutory injunction

Samsung v Apple – A Closer Look at the Appeal Decision

Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156 (30 November 2011)

Appeal from decision to grant interlocutory injunction – whether leave to appeal should be granted – principles to be applied when considering grant of interlocutory injunction – need to evaluate strength of the probability of success of applicant – need to take strength of probability into account when assessing the balance of convenience and justice – infringement – strength of prima facie case – invalidity – strength of prima facie case – balance of convenience – factors to be considered

On Wednesday we provided our initial thoughts on the decision of Justices Foster, Dowsett and Yates overturning the grant of an interlocutory injunction to Apple, barring the sale of Samsung’s Galaxy Tab 10.1 tablet in Australia.  For most readers the case will need no introduction.  Anybody needing to catch up can read back over the various articles we have posted since the dispute began.

Before looking at the decision in more depth, we have to say firstly that Patentology feels somewhat vindicated by the judgment of the Full Court.  Way back on 2 August 2011, when the Apple and Samsung juggernaut first rolled into Justice Bennett’s courtroom, we predicted that Apple would not be granted an interlocutory injunction (see It’s Apple vs Samsung Down-Under as Smartphone War Escalates).  From this, we suggested, further consequences would flow, such as an increased likelihood that Apple and Samsung would reach some form of global settlement of their ongoing disputes before the matter could make it to a full trial in Australia.

Justice Bennett put paid to that course of events, by holding a number of days of hearings and then, against all of our expectations, granting Apple its injunction.  This was, as the Full Court has now confirmed, an error on her part, meaning that – on this occasion at least – our original prediction was a correct evaluation of the relevant law.  An interlocutory injunction in a patent case – preventing sale of an allegedly infringing product prior to the patentee proving infringement – ought to be an extraordinary remedy only granted in exceptional cases. 

Yet the time taken to reach this point has clearly been to Apple’s benefit.  If Samsung now releases the Galaxy Tab 10.1 to the Australian market, it will be four months later than its original intended launch date, and less than three weeks before Christmas.  Apple’s early wins not only in Australia but elsewhere, such as Germany and the Netherlands, appeared to catch Samsung off-guard.  And while the sparring companies are starting to look more evenly-matched, Samsung has certainly had to come back from behind.  As matters have transpired, our prediction of a fairly orderly tit-for-tat leading to a truce was simply not to be.

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Tags: Appeal, Apple-v-Samsung, Interlocutory injunction

Breaking: Galaxy Tab Injunction Lifted, Orders Stayed Until Friday

[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. 

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Tags: Appeal, Apple-v-Samsung, Interlocutory injunction, News

Judges Grill Apple Lawyers in Galaxy Appeal

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.

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Tags: Appeal, Apple-v-Samsung, Australia, Interlocutory injunction

Date, Panel Set for Samsung Appeal Against Galaxy Injunction

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!

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Tags: Appeal, Apple-v-Samsung, Australia, Interlocutory injunction, Smartphone wars

FRAND Obligations to be Aired in Australian Court

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.

According to reports on ZDNet.com.au and ITNews.com.au (see Mobile telcos face Apple-Samsung scrutiny and Apple invokes French law in iPhone hearing) much of the discussion in court today centred around how the ‘FRAND licensing issue’ will play out.

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?

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Tags: Apple-v-Samsung, Australia, FRAND, Interlocutory injunction, Smartphone wars

Samsung Over First Hurdle in Bid To Overturn Apple Injunction

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).

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Tags: Appeal, Apple-v-Samsung, Australia, Interlocutory injunction, Smartphone wars

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 injunction – prima facie case of infringement – balance of convenience – relative weight of factors contributing to balance

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.

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Tags: Apple-v-Samsung, Australia, Interlocutory injunction, Smartphone wars

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.

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Tags: Apple-v-Samsung, Australia, Interlocutory injunction, Smartphone wars

Back in Court, Apple Blames Samsung for Failure to Reach a Deal

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.

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Tags: Apple-v-Samsung, Australia, Interlocutory injunction, Smartphone wars