Samsung Wins Patent Rematch Against Apple, Galaxy Tabs Back On Australian Shelves

Thursday, 01 December, 2011 16:33 Written by Scott Nyman 0 Comments

As many of our readers may be aware, Apple won a significant victory over competitor Samsung with the order of a preliminary injunction against the sale of Samsung’s Galaxy Tab 10.1 in Australia. As a refresher, Apple sued Samsung in the Federal Court of Australia – New South Wales District Registry (analogous to the U.S. District Courts) seeking to block the sales of the competing Galaxy tablet back in July due to alleged patent infringement. After hearings on the matter, the primary judge of the FCA-NSWDR issued an order granting the interlocutory relief, enjoining Samsung from selling the Galaxy Tab 10.1 in the land down under.

In a somewhat humorous manner, the Australian Court explains the background of the matter to the technologically lay person. Maybe I’m just nerdy, but I imagined this being spoken in a tone I would use to explain to my dog why she needs to “sit” before she can have a “treat.” Enjoy:

Apple markets in Australia a tablet computer known as the “iPad”. The iPad uses an operating system known as “iOS”. Apple alleges that Samsung proposes to market in Australia a tablet computer known as the “Galaxy Tab 10.1” (the Galaxy Tab 10.1) which uses an operating system known as “Android”. The Android operating system is available for use by many other manufacturers of computing and similar equipment. The iOS is available for use only with Apple products. Apple alleges that the importation, sale and promotion of the Galaxy Tab 10.1 will infringe claims in 13 of its patents. It also alleges breach or anticipated breach of the Australian Consumer Law and passing off. Samsung denies these allegations and has cross-claimed, seeking revocation of certain patents held by Apple and alleging infringement by Apple of certain patents held by Samsung.

Yesterday, the Federal Court of Australia – Full Court (analogous to U.S. Circuit Courts) reversed the injunction, politely slamming the District Judge by stating, in part:

Her Honour was obliged to make … an assessment for the purpose of deciding whether Apple had made out a prima facie case of sufficient strength to justify the grant of an interlocutory injunction to restrain infringement of its patents. In this case, given that the grant or refusal of interlocutory injunctive relief was going to have the practical consequence of deciding Apple’s claims for final injunctions and thus deciding the commercial fate of the Galaxy Tab 10.1, Apple was required to demonstrate a relatively strong case.

In addition to deciding whether Apple had made out such a prima facie case, her Honour was also required to assess the strength of that case so that she could take into account her views on that matter in her assessment of the balance of convenience and justice.

The primary judge did not undertake either of these evaluative tasks. Her Honour’s failure to do so constituted important errors which led her to grant interlocutory injunctive relief in circumstances where, for reasons which we will explain, she should not have done so. In our view, her decision was clearly wrong and should be set aside. The discretion falls to be re-exercised by this Court.

Zing!

The repeal of the injunction is effective immediately. Bottles of champagne have been popping in Samsung’s legal department since last night.

How do you Dilute a Trademark Part II

Saturday, 29 October, 2011 11:54 Written by Rene Dial 0 Comments

By Rene Dial

Last week I talked about trademark dilution and opened up the discussion of “blurring.” No it is not the newest Marvel super-hero movie it is actually a trademark term. Blurring happens when a name has associations other than the product the trademark was intended for. For example if I asked you for an apple 20 years ago there would be no doubt in your mind I was talking about the fruit. Today if I tell you I want an apple it would be hard to ascertain whether I was asking for the fruit or a computer. If Fruit Inc.’s trademark was “Apple” then the computer company is blurring your association with the fruit’s trademark and diluting the mark even though the goods are totally unrelated.

15 U.S.C. 1125 (c) (2) (B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

The Trademark Dilution Revision Act of 2006 is intended to protect a famous mark from the type of blurring I discussed above. The big question here is how the courts are going to interpret distinctiveness and the definition of a famous mark. We know what the courts have held previously when addressing these questions however, are those interpretations going to fit into the TDRA of 2006 and protect truly famous marks from dilution.

Next week I will address dilution by tarnishment.

Have a great weekend!

Slide to Unlock Patent Granted to Apple

Wednesday, 26 October, 2011 09:18 Written by Aaron Thalwitzer 1 Comment

That sound you just heard was the jaws and share prices of iPhone competitors dropping. Yesterday, the USPTO granted a patent to Apple for the now-ubiquitous “Slide to Unlock” feature which many smartphones have nowadays. Steve Jobs implied that the feature was designed and implemented to prevent what amounts to butt-dialing (of which, BTW, I am a repeat victim, having a name Aaron with two As). Apple filed back in 2005, so it took over 6 years to be granted.

Here’s the abstract for patent #8,046,721:

A device with a touch-sensitive display may be unlocked via gestures performed on the touch-sensitive display. The device is unlocked if contact with the display corresponds to a predefined gesture for unlocking the device. The device displays one or more unlock images with respect to which the predefined gesture is to be performed in order to unlock the device. The performance of the predefined gesture with respect to the unlock image may include moving the unlock image to a predefined location and/or moving the unlock image along a predefined path. The device may also display visual cues of the predefined gesture on the touch screen to remind a user of the gesture.

Is this prior art? In the Netherlands it is. A Dutch court recently invalidated the patent based upon the 2004-2005 “Neonode N1m, with a similar feature/device. (video here, see around the 4:00 minute mark).

I would bet dollars to donuts that litigation is imminent and will commence basically as soon as everyone gets their ducks in a row. Apple won a nifty prize, one which could allow it to maintain a name brand type of product to distinguish itself from and cast a generic light upon its competitors. As has been well stated elsewhere, Windows 8 is a potential infringer, as is every Android device. Cry havoc and let slip the dogs of war! Julius Caesar Act 3, scene 1, 273.

Google’s IBM Patent “Trove”: Not So Trovacious?

Monday, 10 October, 2011 06:01 Written by Aaron Thalwitzer 0 Comments

We’ve talked about the patents Google bought from IBM, but we’ve been guessing at to the value and usefulness of those patents. An analysis by IPVision, which makes patent-analyzing software, suggests that the patents won’t be much of a sword or a shield in the IP cold war against Apple and Microsoft regarding its Android OS. The key to defensive value in patents is bundling groups of patents together to cover as many facets of a device as possible. With the rise in mobile computing litigation, patent poor companies like Google have been increasingly desperate to assert themselves. IPVision doesn’t think that the IBM patents will help much – but that doesn’t mean there aren’t other uses for that IP. Could it be that maybe, just maybe, Google wants to innovate and needed some IP rights to achieve its goal?

All that IP litigation has not been without results. Apple has blocked sale of Samsung devices in much of Europe, and Microsoft has won millions in licensing fees (including from Samsung), just to use Google’s quote unquote free Android OS.

Google’s patent portfolio is growing, but is still leagues behind bluebloods like Microsoft or Apple. Google certainly has the money to ramp up R & D, which I don’t even need to google to find out, but developing technology and protecting takes time, and a degree of luck.

According to Technologyreview.com:

At first glance, the patents Google bought from IBM look good. The U.S. patent office maintains a set of subject categories used to sort patents, and most of those acquired from IBM spread across the “700 series,” where new software ideas and techniques are to be found.

Google’s prior patent portfolio is still mostly related its breach and butter business: database and information retrieval techniques. Buying the IBM patents was supposed to extend Google’s reach, but probably even more so to protect it from lawsuits. The IBM patents, according to Hoo-Min Toong, cofounder of IPVision, seem to be “one-off patents” that mostly aren’t related to one another, and are therefore much less valuable. Instead of a wall, Google may have bought bricks without mortar. Toong says that many of Apple and Microsoft’s patents built off of the IBM patents, but that it would take a lot of doing for Google to assert that they infringed on its IBM trove.

As I discussed last week, there are other options in the mobile computing patent world. Google could look to buy patents from declining companies like Nokia or RIM, but the key remains looking to what’s next. Google may be on the defensive now, but in ten years, they could be a has been like Yahoo, if they don’t innovate and adapt.

Tactical IP mourns the loss of Steve Jobs

Thursday, 06 October, 2011 18:50 Written by Scott Nyman 0 Comments

Scott Nyman

Last night, I opened my computer to check the news as a part of my pre-sleeping ritual. I had planned to check the market to see what stocks to snag, or reading an article or two from Ars Technica, my go-to techie site. Instead, as if a headline over the entire internet, the first thing I read is that Steve Jobs had lost his battle against pancreatic cancer. The world mourns a great innovator.

I’ll save you the biography of Jobs and his career (and this isn’t going to be one of those speeches where I sneakily go ahead an give a biography anyways). Instead, I will just reflect on some of the techie gifts we’ve seen from Jobs and crew over the years, through patents.