SAMSUNG ELECTRONICS CO. LIMITED and SAMSUNG ELECTRONICS AUSTRALIA PTY LIMITED (ACN 002 915 648) v APPLE INC. and APPLE PTY LIMITED (ACN 002 510 054)
File number:
NSD 1792 of 2011
Judges:
DOWSETT, FOSTER AND YATES JJ
Date of judgment:
30 November 2011
Catchwords:
APPEAL – appeal from decision to grant interlocutory injunctions – leave to appeal required – injunction has effect of finally determining the main matter at issue – leave granted – principles to be applied on appeal in such a matter discussed
PATENTS – claim of infringement of two patents – assertion of invalidity of one of those patents – interlocutory injunctive relief sought – whether strength of the infringement case and the balance of convenience and justice sufficient to sustain the grant of interlocutory injunction – fast-moving product – injunction likely to determine the fate of the product
PRACTICE AND PROCEDURE – interlocutory injunctions – relevant principles discussed – Court must evaluate the strength of the probability of success for the applicant and to take that evaluation into account when assessing the balance of convenience and justice
[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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AGLC
Samsung Electronics Co Ltd v Apple Inc [2011] FCAFC 156
Case
[2011] FCAFC 156
Decision Date
CaseChat Overview and Summary
Samsung Electronics Co Ltd v Apple Inc is an appeal from the Federal Court of Australia, where Samsung sought leave to appeal the interlocutory injunctions granted to Apple regarding the alleged infringement of two patents. The primary judge, Bennett J, had ruled in Apple's favour, granting the injunctions, and Samsung sought to challenge this decision. The central legal issues for the court to determine were whether the strength of Apple's infringement case and the balance of convenience and justice were sufficient to sustain the grant of the interlocutory injunctions, particularly in the context of a fast-moving product where such an injunction could significantly impact the product's fate.
The court examined the principles governing interlocutory injunctions, emphasizing that the court must evaluate the strength of the probability of success for the applicant and consider this evaluation when assessing the balance of convenience and justice. The court found that Apple had made out a prima facie case for infringement of the Touch Screen Patent, although Samsung had established a prima facie case for the want of novelty of one of the claims. The court noted that the strength of Apple's infringement case, combined with the balance of convenience and justice, supported the grant of the interlocutory injunctions, as the injunctions were likely to determine the fate of the Galaxy Tab 10.1, a fast-moving product.
Ultimately, the appeal was allowed, and the interlocutory injunctions granted by Bennett J were discharged. In lieu of the injunctions, Samsung was required to maintain detailed accounts of all dealings related to the Galaxy Tab 10.1 in Australia. The respondents' claim for interlocutory relief was dismissed, and the respondents were ordered to pay Samsung's costs of the application and appeal. The proceeding was to be listed for directions before the docket judge as soon as practicable.
Orders
Orders of the court
1. The applicants have leave to appeal from the decision of Bennett J made on 13 October 2011 and the orders made by Bennett J on 14 October 2011.
2. The draft Notice of Appeal filed on 17 October 2011 at the same time as the applicants’ Application for Leave to Appeal herein stand as the appellants’ Notice of Appeal.
3. The appeal be allowed.
4. The interlocutory injunctions granted by Bennett J at paragraphs 4 and 5 of the orders made by her Honour on 14 October 2011 be immediately discharged.
5. In lieu of those orders, and upon the respondents to the appeal (the Apple parties) continuing the undertakings which they gave to the Court on 14 October 2011, until further or other order, the appellants keep accounts with respect to the Australian Galaxy Tab 10.1 referred to in the respondents’ Statement of Facts and Contentions for Interlocutory Relief dated 5 September 2011 (the Galaxy Tab 10.1), in which are recorded comprehensive details of:
(a) each Galaxy Tab 10.1 imported into Australia by the appellants or either of them for the purpose of promotion, sale or other supply;
(b) each Galaxy Tab 10.1 kept in Australia by or for the appellants or either of them for the purpose of promotion, sale or supply;
(c) each Galaxy Tab 10.1 sold or otherwise supplied in Australia or from Australia by the appellants or either of them; and
(d) all sales or other supply in Australia of associated material called “Apps” that are downloaded from the Samsung Applications Store to Galaxy Tab 10.1 devices in Australia or to Galaxy Tab 10.1 devices sold from Australia,
such accounts to be kept in such form as to distinguish between each of the dealings referred to in subparagraphs (a) to (d).
6. The respondents’ claim for interlocutory relief set out in Section B of the respondents’ Amended Application dated 5 September 2011 otherwise be dismissed.
7. The respondents pay the appellants’ costs of and incidental to the application for leave to appeal and the appeal.
8. As soon as practicable, the proceeding be listed for directions before the docket judge by arrangement with the docket judge.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
For present purposes, the dispute concerning the Heuristics Patent focuses primarily upon the construction of claim 1.THE JUDGMENT OF THE PRIMARY JUDGEWhether Apple established a Prima Facie Case At [40]–[57] her Honour dealt with the Touch Screen Patent, setting out the parties’ competing submissions as to construction of claim 6 and some of the evidence. At [58] her Honour concluded:58Apple’s construction is that claim 6 is not restricted to a claim whereby the first layer of conductive lines and the second layer of conductive lines are disposed on the first and second sides of the same optically transmissive member. Taking all of the above matters into account, Apple has made out a prima facie case for infringement on the basis that, if Apple’s construction is accepted, claim 6 is infringed by the [Galaxy Tab 10.1]. As to novelty, Samsung relied upon two pieces of prior art, described in the judgment as the “Leeper Article” and the “Mulligan Patent”. The first piece of prior art referred to is the document entitled 14.2: Integration of a Clear Capacitive Touch Screen with a 1/8-VGA FSTN-LCD to form an LCD-based TouchPad (the Leeper Article). The second piece of prior art is Australian Patent Application No. 2003291378 published by WIPO on or before 22 July 2004 but claiming priority as at 19 December 2002 (the Mulligan patent application). Her Honour set out the parties’ submissions concerning the Leeper Article, concluding at [74]–[75]:74The 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.75Samsung 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. Her Honour dealt similarly with the Mulligan patent application, concluding at [86]–[88]:86The parties are clearly at issue over the disclosures of the Mulligan Patent and the extent to which that patent can constitute part of the prior art base for the purpose of establishing want of novelty of claim 6 of the Touch Screen Patent. Again, cogent submissions have been advanced by each party in reliance on certain disclosures of the Mulligan Patent, in the context of that patent as a whole.87Again, there is no evidence from any skilled reader as to the disclosures of the Mulligan Patent. Samsung contends that no such evidence is necessary and that the disclosures are clearly present and are sufficient to equate to the essential integers of claim 6 of the Touch Screen Patent.88 The same conclusion as that reached for the Leeper Article applies.