Samsung banks on Apple patent mistake

Summary:Samsung is seeking to invalidate several patents held by US tech giant Apple in Australia, taking the Australian Commissioner of Patents to court.

Samsung is seeking to invalidate several patents held by US tech giant Apple in Australia, taking the Australian Commissioner of Patents to court.

Samsung filed its case against the commissioner at the end of May, according to documents sighted by ZDNet Australia, seeking for the Federal Court to invalidate four patents granted to Apple between 2009 and 2010. Samsung has alleged that the four patents were granted "ultra vires", or beyond the powers held by the commissioner of patents. Samsung alleges in its application that it is "aggrieved by the patents", because a case launched by Apple in 2011 against the Samsung Galaxy Tab 10.1 was based on set patents that included those four.

Samsung claims that all four patents were of inventions for which Apple had already been granted innovation patents between 2005 and 2008, and thus, Apple shouldn't have been eligible to be granted the second patents. Companies can apply for innovation patents while they are waiting for standard patents to be approved, as they are quicker to apply for, but they can't hold both at the same time. The case was first noticed by ITNews.

The four patents Samsung is seeking to invalidate are:

  • Australian Patent Application No. 2009200366: "list scrolling and document translation, scaling and rotation on a touch screen display"
  • Australian Patent Application No. 2008201540: "list scrolling and document translation, scaling and rotation on a touch-screen display"
  • Australian Patent Application No. 2006330724: "unlocking a device by performing gestures on an unlock image"
  • Australian Patent Application No. 2007283771: "portable electronic device for photo management"

The first directions hearing for the case will be before Justice Annabelle Bennett on 25 June 2012. Bennett has already overseen much of the patent battle between Apple and Samsung. She initially ordered a block on the sale of the Samsung Galaxy Tab 10.1 in Australia, although this was later overturned by the full court.

Watermark senior associate and patent blogger Mark Summerfield told ZDNet Australia that the Australian Commissioner of Patents should have realised that when Apple had sought the patents in question, it already had innovation patents on those inventions and, therefore, should have told Apple to surrender the innovation patents, before granting the new patents. Since Apple has let the innovation patents expire, should Samsung be successful in invalidating its currently held patents, Apple would lose the patents on those four inventions. This will mean that there will be four less patents for Apple to use in its legal battle against Samsung.

"It's not that [what] Apple was doing was wrong, it's just that the patent office didn't notice what had happened," he said.

"That would be a very harsh outcome for Apple, [but] on the other hand, this is a fairly common strategy these days."

He said Bennett will have to consider whether a mistake of the commissioner is something that should cause Apple to lose its rights completely.

"Apple probably felt it was okay for them to do that, because the commissioner didn't raise it with them."

The full hearing for Apple's case against Samsung is set to run between 23 July and 12 October 2012, but Summerfield said that Samsung's case against the Commissioner of Patents will be purely administrative and should be resolved before the other case is heard.

"It would be sensible to resolve this issue first. There's actually no point in [going through the full case] if the patents are null and void, anyway," he said. "It shouldn't require more than a day or two of hearings."

Topics: Apple, Mobility, Samsung

About

Armed with a degree in Computer Science and a Masters in Journalism, Josh keeps a close eye on the telecommunications industry, the National Broadband Network, and all the goings on in government IT.

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