Apple Inc. v Samsung Electronics Co. Limited - [2011] FCA 1164

FEDERAL COURT OF AUSTRALIA
Apple Inc. v Samsung Electronics Co. Limited [2011] FCA 1164
SUMMARY
BENNETT J
13 OCTOBER 2011
SYDNEY

SUMMARY

In accordance with the practice of the Federal Court in some cases of public interest, importance or complexity, the following summary has been prepared to accompany the publication of the Court’s reasons for judgment. This summary is intended to assist in understanding the outcome of this proceeding and is by no means a complete statement of the conclusions reached by the Court. The only authoritative statement of the Court’s reasons is that contained in the published reasons for judgment which will be available on the internet at together with this summary.
The respondents (Samsung) intend to launch in Australia a version of a tablet device known as the Galaxy Tab 10.1 (the Australian Galaxy Tab 10.1). The applicants (Apple) have brought proceedings alleging that the Australian Galaxy Tab 10.1 infringes certain claims in 13 of Apple’s patents, will contravene certain provisions of the Australian Consumer Law and will involve passing off of Apple’s iPad 2. Samsung denies these allegations. It has filed a cross-claim seeking to revoke certain of the patent claims relied upon by Apple and alleging that Apple has infringed certain patents held by Samsung.
When the matter is heard on a final basis, the decision to grant or refuse to grant a permanent injunction restraining the sale of the Australian Galaxy Tab 10.1 will depend on a determination of Apple and Samsung’s competing claims.
Apple seeks an interlocutory injunction restraining Samsung from releasing the Australian Galaxy Tab 10.1 until Apple’s claims and Samsung’s cross-claim are heard on a final basis (the interim injunction). Samsung argues that the interim injunction should not be granted.
The primary issue with which this judgment is concerned is whether to grant the interim injunction. Both parties expressly asked me not to come to a final decision in this judgment, in part because of a desire to file further evidence. I have not done so.
As is commonly the case in applications for an interlocutory injunction, Apple did not seek to rely on all of the claims it has made against Samsung. This does not prejudice Apple’s right to rely on these claims at a final hearing.
In support of its claim for the interim injunction, Apple initially sought to rely on the alleged infringement of five patents. Apple no longer seeks to rely on one of these patents. Samsung has undertaken not to include the features of two of these patents in the Australian Galaxy Tab 10.1 until a final judgment is delivered or a further order of the Court is made. Accordingly, Apple’s claim for the interim injunction relates to the alleged infringement of three claims of two patents:
·Claim 6 of Australian Standard Patent No 2005246219, entitled “Multipoint touchscreen” (the Touch Screen Patent); and
·Claims 1 and 55 of Australian Standard Patent No 2007286532, entitled “Touch screen device,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2011] FCA 1164
Decision Date: 13 October 2011

CaseChat Overview and Summary

Apple Inc. sought an interlocutory injunction to restrain Samsung Electronics Co. Limited from launching their Galaxy Tab 10.1 in Australia, claiming infringement of two patents. The dispute was heard in the Federal Court of Australia. The central legal issues revolved around whether Apple had established a prima facie case for patent infringement, the relevance of Samsung’s cross-claim for invalidity in assessing this prima facie case, and the balance of convenience in granting an interlocutory injunction.

The court examined whether Apple had established a prima facie case for patent infringement on both the Heuristics Patent and the Touch Screen Patent. Despite Samsung’s argument for invalidity based on prior disclosures, the court found that Apple had established a prima facie case for infringement on both patents. The court also considered the balance of convenience, finding that the detriment to Apple from refusing an injunction marginally outweighed the injury to Samsung if an injunction were granted. The court concluded that Apple had demonstrated a prima facie case for an entitlement to relief and that the balance of convenience favoured granting the injunction.

Apple’s application for an interlocutory injunction was successful. The court found that Apple had established a prima facie case for patent infringement and that the balance of convenience favoured granting the injunction to restrain the launch of the Galaxy Tab 10.1. The court ordered that the reasons for judgment remain confidential until further order and requested the parties to submit proposed orders by a specified date. The matter was stood over for the entry of orders in accordance with Rule 39.32 of the Federal Court Rules 2011.

Orders

Orders of the court

1. The reasons for judgment are to remain confidential, in accordance with the existing confidentiality regime in these proceedings, until further order.

2. The parties are to email proposed orders and any proposed redactions of the reasons for judgment to the Associate to Bennett J by 9 a.m. on 14 October 2011.

3. The matter be stood over to 11 a.m. on 14 October 2011.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

BENNETT J

Accordingly, in my view, the balance of convenience tilts in Apple’s favour. That is, Apple’s inconvenience or injury from the refusal of an injunction of the Australian Galaxy Tab 10.1 marginally outweighs the inconvenience or injury Samsung would suffer if an injunction were granted.CONCLUSION Apple has established a prima facie case for an entitlement to relief on the Heuristics Patent. Even though Samsung has established a prima facie case for the invalidity of the Touch Screen Patent, Apple has also established a prima facie case for an entitlement to relief on the Touch Screen Patent. The balance of convenience tilts in Apple’s favour. I am satisfied, within the test in O’Neill, that it is appropriate to restrain the launch of the Australian Galaxy Tab 10.1. I will hear from the parties as to the appropriate orders to be made.

Ratio Decidendi

Legal Principle Established

Established by: BENNETT J

Samsung points to the statement in the Leeper Article that ‘the controller is capable of computing finger pressure as an increase in the finger contact area (thereby adding capacitance to more traces), as well as detecting the presence of multiple fingers’. Samsung also relies upon the statement that ‘each trace possesses a capacitance to free space that can be measured by the controlling circuitry’. Samsung points out that this is not limited to any particular location and so the function of measuring capacitance, as measured by the controlling circuitry, is not limited to multiple fingers on one spot. The Leeper Article states that ‘the presence of a finger changes the capacitance of the nearest traces by about 10%’. Samsung says that there is an unqualified disclosure of the detection of the presence of multiple fingers, which is not necessarily limited to multiple fingers causing a finger pressure increase as submitted by Apple. Rather, Samsung says, the Leeper Article describes a system where the controlling circuitry can measure capacitance traces from each trace and the capacitance of the nearest trace is changed by about 10% by the presence of a finger. It follows, according to Samsung that, read in context, the detection of the presence of multiple fingers embraces both those fingers at a distinct location and where they are confined to a single location.Consideration The evidence available to understand the disclosures of claim 6 and the Leeper Article is not complete. From Mr Phares’ affidavit, it is not clear whether the person of ordinary skill would necessarily read claim 6 as requiring mutual capacitance. There is no evidence from Mr Phares or any skilled reader as to the disclosures of the Leeper Article. The competing submissions of the parties suggest that they do not agree on the disclosures. If Apple is correct, the Leeper Article does not constitute an anticipation of claim 6. If Samsung is correct, claim 6 is invalid for want of novelty. Both parties have advanced cogent submissions in support of their respective positions. Samsung has established a prima facie case for the want of novelty of claim 6 of the Touch Screen Patent. However, within the analysis referred to at [32]-[36] above, Samsung’s case on invalidity by reason of the disclosures in the Leeper Article does not alter the conclusion that Apple has a prima facie case for relief for infringement of claim 6 within the test in O’Neill. The Mulligan Patent The parties agree that the Mulligan Patent is to be understood as a “whole of contents document” as part of the “prior art base” within the meaning of paragraph (b)(ii) in Schedule 1 of the Act. That part of the definition states that “prior art base” means:in relation to deciding whether an invention is or is not novel:(ii)information contained in a published specification filed in respect of a complete application where:(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and(B)the specification was published after the priority date of the claim under consideration; and(C)the information was contained in the specification on its filing date and when it was published.