Tablet Wars in Australia: Apple and Samsung, the story so far…


The patent litigation between Apple and Samsung in the Australian Federal Court has received much attention in the print and television media. As is widely known, Apple sought – and obtained – an interim (interlocutory) injunction against Samsung for anticipated infringement of two patents, thereby preventing Samsung from offering for sale in Australia its Galaxy Tab 10.1. The timing of the proceeding was important in the sense of the imminent ‘Christmas buying season’.

That decision of Justice Annabelle Bennett, handed down on 13 October ([2011] FCA 1164), has been appealed by Samsung, and is due to be heard by the Full Federal Court (Justices Foster, Dowsett and Yates) on 25 November.

In the meanwhile Samsung has very recently sued Apple for infringement of certain patents said to be occurring through sales in Australia of the latest Apple i-Phone 4S handset.

The case law that applies to the granting of interim injunctions requires two elements to be made out: a prima facie case of infringement, and (an essentially economic) ‘balance of convenience’ consideration. We are not concerned here, though, with the balance of convenience limb.

It is convenient to focus on the Touch Screen Patent that deals with multiple screen-touch operation (particularly claim 6 of Standard Patent No. 2005246219). The Judge found that Apple had made out a prima facie case for infringement. The ‘prima facie’ standard, according to the adopted case law, is a relatively low hurdle: merely a probability that at a final hearing the patentee will be entitled to relief (i.e., an injunction, and monetary compensation). Put another way, Apple did not have to show that it is more probable than not that there would be infringement, which is the standard that applies at trial.

The Judge then considered whether the claim in question lacked novelty (and would thus be invalid), which Her Honour duly found, again on the ‘prima facie’ test. This finding gives rise to the ‘invalidity defence’.

At this point there exists a situation of (i) some likelihood of infringement, and (ii) some likelihood of invalidity.

Her Honour, in reviewing the precedent cases, adopted the approach in Interpharma, a decision of a single judge of the same Court from 2008, but not the most recent decision on the point as it happens. Applying Interpharma, Her Honour determined that Apple was entitled to the benefit of a rebuttable presumption that the ‘invalidity defence’ would not apply on the basis that the Patent Office had already considered validity and granted the patent. (But of course, the Patent Office was not considering the same prior art relied upon by Samsung in the Court!) The judge went on to decide that Samsung would thus need to prove a “sufficiently strong” case on invalidity for the defence to be available – which would mean no injunction.

There were points of dispute between the parties going to the correct construction/interpretation of claim 6, and as to the level of disclosure of the prior art documents (Leeper and Mulligan). Her Honour saw cogent arguments both ways, and declared a ‘tie’, meaning Samsung hadn’t jumped the ‘sufficiently strong’ hurdle. Given that the balance of convenience limb was answered in favour of Apple, it followed that the injunction should be granted.

The invalidity enquiry went only to the question of novelty (“anticipation”). This was found on the basis only of written expert evidence; no oral testimony took place during the hearing, which is not unusual for proceedings of this type It is of interest that the Court didn’t go further to consider the likelihood of invalidity for lack of inventive step. No surprise there, I suppose, in that to do so the Court would need to be apprised of the common general knowledge in Australia at the priority date, and there would undoubtedly be arguments as to whether Leeper and Mulligan would even be available as prior art under the somewhat notorious ‘relevancy filter’ of section 7(3) of the Patents Act.

Depending, of course, on what the Appeal Court decides, the seeking of interim injunctions has a flavour of being relatively low threshold, at least when it comes to the infringement limb. We will be watching with interest…

Author: Robert Miller, Principal

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