Mobile Patent Disputes Creating a New Class of ‘Celebrity Judge’

Question: What do Lucy Koh, William Alsup, Richard Posner, Annabelle Bennett and Colin Birss have in common?  Answer: They have all been receiving far more press coverage than they probably would ever have imagined when they chose a career in law!

In case you are not familiar with these names (although most readers of this blog would most likely have heard of at least one of them):

1. Judge Lucy H Koh is the judge of the US District Court for the Northern District of California, San Jose, who is presiding over the patent dispute between Apple and Samsung in that court, and who recently issued preliminary injunctions against Samsung’s Galaxy Nexus and Galaxy Tab 10.1 devices;
2. Judge William Alsup is the judge of the US District Court for the Northern District of California, San Francisco, who presided over the case brought by Oracle against Google, finding that Google’s Android operating system does not infringe Oracle’s Java patents and copyrights;
3. Judge Richard Posner is an appellate judge in the 7th Circuit who volunteered to step down into the US District Court for the Northern District of Illinois to hear patent infringement cases brought by Motorola and Apple against one another, only to toss the entire dispute out on the basis that neither party had any viable claim for damages against the other;
4. Justice Annabelle Bennett is the Australian Federal Court judge who last year issued a preliminary injunction delaying the launch of Samsung’s Galaxy Tab 10.1 tablet for five months, until her decision was overturned on appeal; and
5. Judge Colin Birss is the UK Patents Court judge who this week ruled that Samsung’s Galaxy Tab 10.1 does not infringe registered design rights owned by Apple relating to the iPad.

Of course, it is the role of a judge to hear cases and issue decisions in all matters, great and small, which may come before them.  But such is the level of interest and media attention to the global disputes currently playing out between tech giants, there has been virtually nothing of even minor note to have played out in these judges’ courtrooms that has not been widely reported.  With journalists stationed in the galleries listening to days of – mostly tedious – technical and legal testimony and argument, it is hardly surprising that anything remotely interesting, entertaining or quotable should be quickly disseminated, especially with most judges permitting (or at least tolerating) live tweeting from their courtrooms.

 Read full article ► 

Tags: Apple-v-Samsung, Motorola, Oracle v Google, Smartphone wars

Hate Bad Patents? You Could Try Being More Observant!

It is widely believed that there are a lot of ‘bad patents’ around – ones that the examiner should have rejected, if only the search had turned up the most relevant prior art.

There is certainly some truth to this belief.  Examiners in all patent offices are only human, they have limited time to examine each application which comes before them, and the searching tools available to them are imperfect.  Indeed, there is no such thing as a perfect search, because the world’s stores of public knowledge are just not fully available in a readily searchable form.

In this context, crowdsourcing of patent searching makes a great deal of sense.  Patent laws and regulations are increasingly making provision for ‘third parties’ (i.e. people who are neither the applicant, nor the examiner) to submit information that may be pertinent to the validity of claims in filed patent applications.  For example, under provisions of the America Invents Act, an expanded third party submission program will commence on 16 September 2012.

The latest passenger on the bandwagon is the World Intellectual Property Organisation (WIPO), which from 2 July 2012 is accepting ‘third party observations’ on pending international applications (IAs) filed under the Patent Cooperation Treaty (PCT).

 Read full article ► 

Tags: Examination, Novelty, Obviousness, PCT, Prior art, WIPO

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

On 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.

 Read full article ► 

Tags: Android, Apple-v-Samsung, Australia, Innovation patent, Obviousness, UK

IP Australia Has Lost Perspective On ‘Business Method’ Claims

We recently reported the Australian Patent Office decision in Celgene Corporation [2012] APO 71, relating to a system for dispensing drugs with significant safety issues (such as thalidomide).  In doing so, we indicated that we agreed with the outcome (i.e. that the system as claimed was not a patent-eligible ‘manner of manufacture’), but not with the Hearing Officer’s reasoning.

In this article, we go into further detail about where we think the Hearing Officer – and indeed the Patent Office generally – has been led astray, as well as why we think the Celgene claims are not patentable.

It seems that the Patent Office has now built up such a body of its own decisions on the patentability of ‘business methods’ (a term which now appears to apply to a range of computer-implemented inventions which do not necessarily have to relate to financial data processing) that it is in clear danger of losing sight of the basic principles underlying the ‘manner of manufacture’ test.

As we shall explain, the Celgene claims can be shown to be unpatentable based upon some very simple and long-standing principles.  However, by arriving at a conclusion via a circuitous route involving previous Patent Office decisions, the Hearing Officer produces a line of reasoning that just does not add up.  If we remove the specifics relating to the information content in Celgene’s system, leaving only a generic statement relating to structure and function, then paragraph [15] of the recent Celgene decision says something absurd:

The system in claim 1 can be a computer system. While a computer system is a tangible article, in the present case that computer is characterised solely by the processing that it carries out. As a consequence, the essence of the claimed system is the processing of information about X, and the generation of a Y. The purpose of the processing is Z. While this is clearly a sensible thing to do, the way in which it is achieved by the system does not lie in the useful arts, or the field of economic endeavour.

The logical conclusion of this reasoning is that no computer-implemented invention would be patentable. Not only is this not the current state of the law in Australia, it is not even consistent with IP Australia’s current public position on ‘software patents’.

 Read full article ► 

Tags: Australia, Business processes, Computer programs, Patentable subject matter

Celgene Tries – and Fails – Again With Drug Safety Business Method

Celgene Corporation [2012] APO 71 (25 June 2012)

Manner of Manufacture – whether a system for dispensing a drug which provides a ‘prescription approval’ is patent-eligible

Back in January, we reported a decision of the Australian Patent Office in which patent claims from Celgene corporation, relating to a method of dispensing drugs with significant safety issues (such as thalidomide), were rejected as being directed to an unpatentable ‘business method’ (see Evergreening by Business Method? Patent Office Says ‘No’!).

Celgene has appealed that decision to the Federal Court of Australia (case no. VID102/2012), but in the meantime a further divisional innovation patent, no. 2011101702, directed to substantially the same invention has been undergoing examination.

Unsurprisingly, the claims of the divisional application were also rejected.  An adverse examination report was issued on 16 April 2012.  Celgene provided minor amendments addressing clarity objections in the examination report, and asked that a formal, appealable, decision be issued if the examiner was not persuaded to certify the patent.

Again, unsurprisingly, the examiner was not persuaded to certify the patent, and a written decision, maintaining rejections on grounds of lack of manner of manufacture (i.e. the the claims are not directed to patent-eligible subject matter), lack of novelty, and lack of inventive step, has now been issued by the same Hearing Officer who decided the fate of the parent patent back in January.

 Read full article ► 

Tags: Australia, Innovation patent, Patentable subject matter, Pharmaceuticals