The Australian Battle

Apple’s Claim for Interlocutory Injunction

Apple kicked off its campaign of lawsuits against Samsung in Australia on 28 th July

2011 by filing an application for interim injunction seeking to restrain Samsung from

launching its Galaxy Tab 10.1 in Australia1. Apple initially relied on certain claims of 10 of its

patents against Samsung but for the purpose of an interim injunction it selected five out of

these patents. This claim was further reduced to three claims of two patents when

Samsung gave an undertaking in the court that it would not incorporate the features of

two of these patents and the claim of one patent was withdrawn by Apple itself. Apple’s

claim for interim injunction was now reduced to 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,

method, and graphical user interface for determining commands by applying heuristics”

(the Heuristics Patent)

Overview of the Patents Involved

1. Multipoint Touchscreen or the Touch Screen Patent (Australian Standard Patent

No 20052462192)

1http://koreauniversitylawreview.korea.ac.kr/xe/? module=file&act=procFileDownload&file_srl=1168&sid=5632b705a624f19907de8d5b4ab384e7

2 http://pericles.ipaustralia.gov.au/ols/auspat/pdfSource.do;jsessionid=ss84WQfY14tL2pB6yWv4KxzyG1gZTqsbXMFhTyLs4zRMwmPPDcyq!544804095?fileQuery=%2583%257F%2593%2590h%258D%259D%259A%25A2%2599Q%2591%2594%2597%2590%2599%258C%2598%2590hl%2580%255D%255B%255B%2560%255D_a%255D%255Cdm%255D%255D%255B%255Bd%255B%255D%255CdY%259B%258F%2591Q%2591%259A%25A3h%259F%2593%2590#xml=http://pericles.ipaustralia.gov.au/ols/auspat/pdfHilite.do?fileQuery=%2583%257F%2593%2590h%258D%259D%259A%25A2%2599Q%2591%2594%2597%2590%2599%258C%2598%2590hl%2580%255D%255B%255B%2560%255D_a%255D%255Cdm%255D%255D%255B%255Bd%255B%255D%255CdY%259B%258F%2591Q%2591%259A%25A3h%259F%2593%2590&queryEl=2005246219

A touchscreen is an input device normally layered on the top of an electronic visual

display of an information processing system. A user can give input or control the

information processing system through simple or multi-touch gestures by touching the

screen with a special stylus/pen and-or one or more fingers. IBM Simons was the first

popular smartphone to incorporate the touch screen system. The problem faced by the

manufacturers was that the touch screen devices were unable to detect multiple

touches on the panel. This patent covered the method by which the devices were able

to detect multiple touches on the screen.

Apple’s Claim of Infringement

Apple relies on claim 6 of the Multitouch Patent for infringement. The claim states

as

A touch panel having a transparent capacitive sensing medium configured to detect multiple touches or near touches that occur at a same time and at distinct locations in a plane of the touch panel and to produce distinct signals representative of a location of the touches on the plane of the touch panel for each of the multiple touches, the transparent capacitive sensing medium comprising:

a first layer having a plurality of lines that are electrically isolated from one another and formed from a transparent conductive material; and

a second layer spatially separated from the first layer and having a plurality of lines that are electrically isolated from one another and formed from a transparent conductive material, the second conductive lines being positioned transverse to the first conductive lines, the intersection of transverse lines being positioned at different locations in the plane of the touch panel, each of the conductive lines being operatively coupled to capacitive monitoring circuitry,

wherein the first layer and the second layer are disposed on two sides of an optically transmissive member.

The parties were in dispute over the construction of the phrase “Disposed on both sides

of same transmissive member”. Apple submits that there is no technical meaning of the

word and points out to it’s definition in the Macquarie Dictionary (3rd ed, Macquarie,

2003), means ‘to put in a particular or the proper order or arrangement”. Apple thus

contends that the word disposed simply means placement. According to Apple the

construction of claim should not be restricted to the layers being placed on side of the

same optically transmissive member. Apple further submits that the specifications of the

claim 6 require that the layers be placed on sides of two different optically transmissive

members that is to say that the optically transmissive member consists of more than one

member. Apple points out that the two layers of the Australian Galaxy Tab 10.1, are both

optically active and together form an optically transmissive member.

Samsung’s Defense

Samsung on the other hand contends that it has not infringed the multitouch patent as

asserted by Apple. Samsung contends that its Galaxy Tab 10.1 does not has a structure

which is covered by the claim 6. Samsung asserts that to meet the requirements of the

claim the conductive layers have to be present on both sides of the same optically

transmissive member and the claim does not encompass a structure wherein the layers are

coated on two sides of different optically transmissive member. In addition to this Samsung

also had a second line of defense against Apple’s claim of infringement of the touch screen

patent. Samsung claimed that the patent was invalid due to the want of novelty. In the

view of the Korean Company there was sufficient material available in the prior art to

declare this invention obvious. Specifically Samsung points out to the Integration of a Clear

Capacitive Touch Screen with a 1/8-VGA FSTN-LCD to form and LCD-based Touch-Pad” by

AK Leeper (the Leeper Article). Samsung also relies on an international patent, WO

2004/061808, the inventors of which are Mulligan et al (the Mulligan Patent). On the other

hand Apple denies the same by saying that their invention in novel and the prior art

pointed out by Samsung does not has all the ingredients of Apple’s patent.

The Heuristic Patent

In addition to the multitouch patent Apple also relied on claim 1 and 55 of the Heuristic

Patent for the purpose of obtaining the interim injunction. The method covered in this

patent is the one by which a device having a touch sensitive display determines the

command entered by the user and produces the results accordingly. Generally the

computer systems are designed to take in an accurate command and to execute it

accordingly. The heuristic method for interpreting the command was not incorporated nor

was required to be used until the invention of the devices with touch sensitive displays.

In devices other than the one having the touch screen the user can input the exact

command using the computer mouse or keyboard and get the desired result. However the

problem arises while using a touch sensitive computer system where the commands

entered are often not accurate and the system needs to interpret the command by itself

and produce the desired result. For example while scrolling a user will almost never scroll

through the screen in a perfectly horizontal way and up to a precise height, therefore the

device will have to be one which is capable of applying different heuristics to determine

the command and produce the desired result for the users.

Apple’s Claim of Infringement

Apple relies on claim 1 and 55 of the Heuristic Patent for the purpose of obtaining

the temporary injunction. The claims are as follows

Claim 1 of the Heuristics Patent is:

A computer-implemented method, comprising:

at a computing device with a touch screen display,

detecting one or more finger contacts with the touch screen display,

applying one or more heuristics to the one or more finger contacts to

determine a command for the device; and

processing the command;

wherein the one or more heuristics perform the functions of:

determining that the one or more finger contacts correspond to a one-dimensional vertical screen scrolling command rather than a two-dimensional screen translation command, based on an angle of movement of the one or more finger contacts with respect to the touch screen display; and

determining that the one or more finger contacts correspond to a two-dimensional screen translation command rather than a one-dimensional screen translation command, based on an angle of movement of the one or more finger contacts with respect to the touch screen display.

Claim 55 is:

A computer-implemented method of any one of claims 1 to 26, wherein

the one or more finger contacts correspond to a finger gesture with an initial movement and a subsequent movement, and wherein

the function of determining that the one or more finger contacts correspond to a one-dimensional vertical screen scrolling command rather than a two-dimensional screen translation command includes identifying the entire finger gesture as the one-dimensional vertical screen scrolling command and basing the determination on the angle of movement of the initial movement of the finger gesture, and wherein

the function of determining that the one or more finger contacts correspond to a two-dimensional screen translation command rather than a one-dimensional vertical screen scrolling command includes identifying the entire finger gesture as the two-dimensional screen translation command and basing the determination on the angle of movement of the initial movement of the finger gesture

The parties are in dispute over the “based on the angle of movement of the fingers”

integer. Apple contends that the angle of movement is not a substantial part of the claim

and the way the device understands and interprets the commands is not necessarily linked

with the angle of movement. Apple claims that the invention covered in this claim is simple

the way by which a computer device having a touch screen display responds to the finger

gestures and does not necessarily deal with the way the underlying software works. Apple

says that the invention is to a method in which a heuristic performs the function of

determining whether the finger contacts correspond to a vertical scrolling command or a

two-dimensional translation command and that the Heuristics Patent is not concerned

with the way in which the heuristic does so.

On Apple’s construction, the heuristic’s response is to the sliding movement of a finger

on the screen at an angle which will determine the location of the finger, T2, being a

second touch point at a predetermined time interval after T1, the first touch point. The

angle of the movement from T1 to T2 on the touch screen is the determining factor which

is used by the heuristic to formulate a command for the device. That is, claim 1 is

concerned with a computer-implemented method in which the heuristic interprets a user’s

intention to perform a vertical scroll or a two-dimensional translation, whereby the

intention is expressed by a predominantly vertical or diagonal angular finger movement on

the touch screen. Apple says that the heuristic does not calculate an angle but interprets

the user’s intention to perform a vertical scroll command or a translation command based

on the angle of the user’s finger movement on the touch screen.

Samsung’s Defense

Samsung on the other hand insists that the angle of movement intiger is an integral

part of ths heuristic patent and cannot be ignored for the purpose of construction.

Samsung argues that the Heuristics in this method performs its function of interpreting the

imprecise input by determining the angle of movements of the finger gestures. Contrary to

Apple’s construction Samsung argues that it is clear “beyond arguments” that the angle of

movement is the determining factor used by the Heuristic in Apple’s devices and the same

is covered under this patent.

Samsung says that there is no infringement by the Australian Galaxy Tab 10.1 on

the basis that the determination in the Australian Galaxy Tab 10.1 is not implemented

based on an angle of movement of the one or more finger contacts. Samsung contends

that the scrolling method of the Australian Galaxy Tab 10.1 does not measure angles or use

angles in its determination of whether the user’s command is a one-dimensional scrolling

command or a two-dimensional translation command. Rather, Samsung’s scrolling method

compares the positions of the user’s contact points on the touch panel relative to two

channels on the touch panel.

Summarily Samsung’s defence to infringement is that the Samsung method sets up

two channels and determines one-dimensional or two-dimensional outcomes by presence

or absence within the chan

Summary of Patent Contentions

Apple’s original lawsuit consisted of different claims of about ten patents. However for

the purpose of obtaining temporary injunction on the sale of Galaxy Tab 10.1 Apple choose

five out of these patents. These five patents were further reduced to two when Apple

decided not to include the claims of two more patents for the purpose of obtaining

injunction and Samsung gave the undertaking in the court that it would not include the

features of a third patent in the Galaxy Tab 10.1

The patents at issue for the purpose of temporary injunction were now reduced to two.

The Multitouch Patent entitled “………………………….” And the Heuristic Patent entitled

“………………………..”. As far as the Multitouch Patent in concerned both the parties were in

dispute over the construction of the term “Disposed on the same side of an optically

transmissive member”. Apple insisted that the term has no technical meaning and refers

only to the arranged of the layers. According to the makers of the iPhone the construction

of the claim was not limited to a situation where the conductive layers were present on

both sides of the “same” optically transmissive member. Apple furthered its stance by

saying that the claim does not prohibit presence of two optically transmissive glass

members and goes on to say that there can also an an additional layers between the sides

of the optically transmissive member and the conductive layers.

Samsung on the other hand argued that the claim 6 of the touch screen patent is

limited to a situation where the conductive layers are present on the sides of the same

optically transmissive member and if there are more then one optically transmissive

members then there is no case of infringement. In case Apple’s construction were

accepted Samsung also took the defense that the asserted patent is invalid in the light of

the prior art available on record. Specifically Samsungs relies on Integration of a Clear

Capacitive Touch Screen with a 1/8-VGA FSTN-LCD to form and LCD-based Touch-Pad” by

AK Leeper (the Leeper Article) and an international patent, WO 2004/061808, the

inventors of which are Mulligan et al (the Mulligan Patent).

As far as the Heuristic Patent is concerned the issue was on the term “Angle of

Movement”. Apple’s contention was that term angle of movement only refers to the way

the Heuristic interpret the imprecise input by the user. Apple argues that the method

covered in the patent is the means by which a Heuristic interprets the command and does

not exactly cover the way in which the underline software works.

Samsung on the other hand contends that the anlge of movement integer is an integral

part of Apple’s Patent. Samsung say that it is clear beyond argument that the heuristics

perform its function by determining the angle of movement of fingers with respect to the

touch screen display. Samsung claims that its devices do not infringe the heuristic patent

because Samsung’s Galaxy Tab 10.1 does not use the angle of movement to determine the

command. Samsung’s device differentiates between vertical scroll command and the two

dimensional screen translation command by determining the presence or absence of finger

gestures between two pre-determined points/channels on the touch screen.

Analysis of the Case

As Apple was seeking an interim injunction so the court had to keep two basic

requirements of an interim injunction in mind while making an order. These requirements

were firstly the existence of a prima facie case in favor of the applicant and secondly the

balance of convenience. As far as the matter of prima facie case is concerned the applicant

has to prove that there is a likelihood of it being successful at the trial. The applicant needs

not be establish the fact that the chances of it being successful are more than the chances

of its failure.

As the question of the validity of the Multitouch Patent was raised by Samsung so the

court had to decide about the relevance and strength of this claim of invalidity for the

purpose of ascertaining Apple’s prima facie case. Samsung was of the view that mare grant

of a patent is not sufficient proof for the establishment of a prima facie case when it comes

patent infringement. Samsung coated the following authority of Australian High Court

[Whether the plaintiff has made out a prima facie entitlement to relief] in the present case is not complicated by the special considerations which generally arise in a patent action where there is a substantial issue to be tried as to the validity of the patent. In such an action the plaintiff's prima facie case must be a strong one so far as the question of validity is concerned, for he asserts a monopoly and must give more proof of the right he claims than is afforded by the mere granting of the patent… The general practice in that kind of case has long been to refuse an interlocutory injunction unless either the patent has already been judicially held to be valid or it has stood unchallenged for a long period… Even if the patent is an old one — which for this purpose is generally taken to mean more than six years old — it has been said that an interlocutory injunction will generally be refused provided that the defendant shows by evidence "some ground" for supposing that he has a chance of successfully disputing the validity of the patent at the trial… This should be read, however, with Sir George Jessel's statement in Dudgeon v Thomson (1874) 30 LT 244which divides into three classes the cases in which an injunction may be granted before the hearing in such a case. They are: (1) cases where the patent is an old one and the patentee has been in long and undisturbed enjoyment of it; (2) cases where its validity has been established elsewhere and the court sees no reason to doubt the propriety of the result; and (3) cases where the conduct of the defendant is such as to enable the court to say that, as against the defendant himself, there is no reason to doubt the validity of the patent

Summarily Samsung’s contention was that as the question was raised on the validity of

the Multitouch Patent held by Apple, Apple had to show more proof of it being valid and

had to show proof the this patent will sustain the validity test at the trial level and that

merely the fact that the makers of iPhone have been granted this patent will not be

sufficient to constitute a prima facie case in Apple’s favor. Apple however rebutted by

giving reference to a number of citations that the principles pointed out in this case as

pointed out by Apple were under the old patent law where the requirements of obtaining

a patent were not as strict as they are now a days. Similarly Apple contends that, if a

patentee is able to show that there is a prima facie case of patent infringement, then the

existence of a triable question on validity is unlikely to displace that prima facie case.

The second inquiry that the court had to make was about the balance of convenience.

The court had to determine whether the inconvenience or injury that Apple would be likely

to suffer if an injunction were not granted outweighs or is outweighed by the

inconvenience or injury that Samsung would suffer if the injunction were granted. The

court had to consider every factor that could possible serve as a indicative of balance of

convenience. These factors could include for example the fact that at the time Apple was

seeking the injunction it had the tablet market virtually to itself. Secondly the apparent

reason for Samsung to launch the Australian Galaxy Tab was to complete with Apple in the

tablet market and to provide the consumers with an alternative to Apple’s tablet in the

form of an Android based tablet. Similarly the court had to determine whether awarding

damages would be an adequate remedy for either party. Similarly as the life cycle of the

tablet devices is very short so is the injunctive relief an equivalent to grant of a final relief?

The strength of Apple’s prima facie case was also amongst the factors for the

determination of balance of convenience.

The Decision

On October 13, 2011 the court granted an injunction in favor of Apple restraining

Samsung from the launch of its Galaxy Tablet 10.1. Throughout the case the principles

settled in O’Neill served as the bench mark for the court for the purpose of determining

Apple’s right to claim an interlocutory injunction. The O’Neill sets out two parameters.

Firstly the applicant needs to establish a prima facie case in its favor. For this the applicant

has to show that there exists a likelihood of it being successful at the trial stage. For this

the applicant does not necessarily has to show that the chances of it being successful at

the trial stage are greater than the chances of its opponent being successful. The second

thing that the applicant has to show is that the inconvenience it will suffer in case an

injunction were refused outweighs the inconvenience that the respondent will suffer in

case an injunction is granted.

The court was of the view that Apple had established a prima facie case for an

entitlement to relief on the Heuristics Patent, even though Samsung had also established a

prima facie case of the invalidity of the Touch Screen Patent. Similarly Apple had also

established a prima facie case of entitlement to relief on the Touch Screen Patent. The

balance of convenience also tilted in Apple’s favor in the view of the court. Hence a

decision was made in favor of Apple restraining the release of its competitors device

Galaxy Tab 10.1 in Australian markets till the final disposal of the case.

Time for Samsung to “Turn The Tables”

Samsung filed appeal from the decision of the court granting injunction to

Apple. The first hurdle Samsung faced was to get its leave for appeal approved. It

is a well settled principle in Australian case law that in order a leave for appeal be

approved the applicant has to satisfy the court on two grounds

1. Whether, in all the circumstances of the case, the decision is attended by

sufficient doubt to warrant its being reconsidered by the Full Court; and

2. Whether substantial injustice would result if leave were refused supposing

the decision to be wrong.

In this case the effect of the injunction was of finality, as the life cycle of the tablet

computers is very short and the effect of granting injunction was equal to finally

disposing of the matter in favor of Apple. Samsung thus had a very bright chance of

getting its leave to appeal allowed.

At the first stage Samsung had to show to the court that the decision of the primary

court was attended by sufficient doubt. At this stage Samsung could argue that its

cross claim relating to invalidity of the Touch Screen Patent was not given proper

weight age. Similarly Samsung’s argument that its devices do not infringe the heuristic

patent was not given proper consideration. The second factor that the court had to

ascertain was that a substantial injustice would result if the leave to appeal was

refused considering the decision of the primary court to be wrong. The stakes in the

case were pretty high. Again the factor in favour of Samsung was that the life cycle of

the tablet computers have a very short. Apple had the tablet computer market

virtually to itself at that time. Therefore there was no doubt that if the decision of the

primary judge was considered to be wrong, a substantial injustice would be the result

in case leave to appeal were not granted.

Samsung successfully crossed the first hurdle as it’s leave to appeal got accepted.

Samsung filed the appeal on multiple grounds including for example the primary judge

erred in holding that Apple established a prima facie case of infringement on both

asserted patents, the primary judge erred in holding that the balance of convenience

lies in favor of Apple, the primary judge erred by concluding that the refusal of

Samsung to accept an early final hearing was a factor to be weighed while deterring

the balance of convenience, that the refusal of an interlocutory injunction would

deprive Apple of its statutory right and this factor over weights the factor that the

effect of injunction is of finality in this case and many other similar grounds. In

response to this notice of appeal, Apple file notice of contention. In this notice of

contention Apple denied all the ground of appeal taken by Samsung.

The Appeal

In analyzing the appeal the court first considered the purpose of granting the

interlocutory injunction and found out that it was a well satteled principle in

Australian law that it was the duity of the court to ensure that the grant of injunction

does not frustrate the legal process itself. The primary judge had to look to keep two

factors in mind firstly that weather to grant an injunction or not and secondly whether

the grant of injunction will frustrate the process of the court itself or not. As both

parties agreed that the effect of injunction was equivalent to finaly disposing off the

case, so the grant of injunction will almost frustrate the process of the court as far as

Samsung’s case was concerned.

Samsung contented that the primary judge made mistakes in applying certain

principles of law which were necessary to be applied with deciding the fate of an

application for interlocutory relief. For example Samsung said the primary judge was

not only obliged to analyze the competing patent contentions of the parties, but Her

Honour was also under obligation to assess the strength of Apple’s prima facie case (if

any) to warrant the grant of interlocutory relief. Similarly Her Honour did not assess

the strength of Samsung’s prima facie case on invalidity of claim 6 of the Touch Screen

Patent and did not compare it against the strength of Apple’s case of infringement.

Samsung similarly argued that the primary judge did not clearly decide upon the

construction of the asserted claims. As one of the major dispute between the parties

was on the construction of the claims. Her Honor did not decide that which of the

constructions forwarded by the parties was correct and declared the claim to be

“open claim”.

The Problem with Apple’s case on Touch Screen Patent

As discussed above, Apple asserted three claims of two patents for the purpose of

obtaining the interlocutory injunction i.e claim 6 of the Touch Screen Patent and claim

1 and 55 of the Heuristic Patent. The Touch Screen Patent related to structure of the

Touch Panel of the touch screen devices. This patent covered the method which was

used to make touch screens capable of detecting multiple touches on the touch

screen. The contention between the parties was the construction of the phrase

“disposed on side of an optically transmissive member”. Samsung contended that the

claim is limited to a situation where both layers are both side of single optically

transmissive member, and the member is composed of only one layer. Apple on the

other hand contends that the construction of the claim describes an optically

transmissive member which could be composed of more than one member, and the

layers are directly applied to it. Apple also argued that the even if Samsung’s

construction was to be accepted the Galaxy Tab 10.1 still infringes the claim as the

layer are directly applied to that optically transmissive member.

If we denotes two layers of the touch panel of Samsung’s touch screen as layer D

and E then the problem faced by Apple is that at one hand Apple will have to argue

that the layers D and E both collectively form an optically transmissive member and

there is no difference between both of them for the purpose of construction. On the

other hand Apple will have to argue that layer E for example should be ignored, in

order to prove that the layers are placed “on” both sides of an optically transmissive

member. Samsung also drew attention to section 116 of Australian Patent Act

according to which the court can take into consideration the amendments that have

been made in the claim, in order to be able to understand and clearly construct the

claim. Samsung went on to say that the amendments made in claim 9 of the Touch

Screen Patent were specially to omit a multilayered structure out of the scope of the

claim.

In addition to the Touch Screen Patent, Apple also relied on claim 1 and 55 of

Heuristic Patent for the purpose of obtaining the interlocutory injunction. As

described above Heuristic Patent is used by the touch enabled computer devices to

determine the command form imprecise input gestures of finger touches. The rival

contentions of the parties were again based on the construction of phrase “ based on

the angle of movement with respect to the touch screen surface”. The primary judge

had held that Apple has established a prima facie case of infringement in respect of

the touch screen patent. The angle of movement was an integral part of the

specification.

Samsung contended that the in the Galaxy Tab 10.1, the process for determining

the relevant command is as follows. A first user contact on the screen is detected and

an X (horizontal) channel and a Y (vertical) channel are generated around the touch

point. The touch panel logic then identifies the location of the user’s second touch

point at a pre-defined period of time after the first contact is detected. The location of

the second touch point is then compared with the locations of the X and Y channels

previously generated by the first touch. The software then interprets this as an

instruction for screen movement, relevantly a one-dimensional screen scrolling

command or a two-dimensional screen translation command, and then processes the

command accordingly. Apple on the other hand contends that the angle of movement

is not integral part of the claim and is just an indicative of the command and not the

way by which the Heuristic determine and interpret the command. According to Apple

the heuristic may apply the number of other algorithms to determine the command.

After deterring the existence and strength of the prima facie case for Apple on

both asserted patents the next question infornt of the appellate court was to

determine whether or not the question of balance of convenience was determined

correctly by the primary judge. The primary judge had found that the balance of

convenience of almost evenly poised and tilted slightly in favour of Apple. The factors

taken into consideration by Her Honour were the strength of prima facie case of

Apple, Samsung’s refusal to accept the early final hearing of the suit and the fact that

Apple had asserted two patents which were already registered. During the course of

the interlocutory application there was a suggestion for early final hearing of the case

from the honorable judge. Apple proposed that it was willing for an early final hearing

of the suit on the following conditions.

Apple would limit the product in dispute at the final hearing to the [Galaxy Tab 10.1]

Limit the patents relied on at the final hearing to the heuristics patent ’532, the touch

screen patent ’219 and the selective rejection patent ’177. Limit the claims relied on at

the final hearing to those set out in Apple’s written submissions dated 26 September

2011. Rely on its evidence already filed in the proceeding. Provide an undertaking to

the Court on a no admissions basis not to sue the Respondents in Australia in respect

of the [Galaxy Tab 10.1] for infringement of the remainder of the patents listed in the

Amended Application. Provide an undertaking to the Court on a no admissions basis

not to seek interlocutory relief in respect of the [Galaxy Tab 10.1] for infringement of

patents other than those in points 2 and 5 above.

Samsung would Provide an interim undertaking to the Court on a no admissions basis

not to import, offer to supply, supply, offer for sale or sell in Australia the [Galaxy Tab

10.1], whether or not it includes the zoom bounce functionality, until the

determination of the matter. Provide a permanent undertaking to the Court on a no-

admissions basis not to import, offer to supply, supply, offer for sale or sell in Australia

the US version of the [Galaxy Tab 10.1].

The question of early final hearing was raised multiple times after this and Samsung

insisted that it was not willing for an early final hearing. Samsung argued that this was

a case which was going to have a huge impact on their business, therefore the Korean

company was not prepared for early final hearing of the case until at least one year.

Samsung argued that it had diverted all its energy in defending the claims made by

Apple for the purpose of obtaining temporary injunction and it has not worked out the

case on the basis of final hearing. The council for Apple argued at the same time that

as the effect of grant or refusal of the interlocutory injunction would be of finality

even then Samsung was not prepared for an early final hearing, hence this factor

should be weighed heavily against Samsung while considering the question of balance

of convenience and justice. While discussing the question of balance of convenience in

the reason for judgment her Honour noted that Samsung’s unwillingness to accept an

early final hearing was a factor to weighed and weighed against Samsung for

considering the question of balance of convenience and justice.

The full court however criticized the finding of the primary judge that the refusal

of Samsung to accept an early final hearing is a factor to be weighed against it. It was

the view of the court that it was not just to penalize any party who was unwilling to

accept a suggestion of the court. Similarly the court observed that Apple only put

forward its proposal and did not elaborate how this proposal is reasonable and should

be acceptable for Samsung. The view of the court was that Apple’s proposal was not

reasonable for Samsung in the same way as Samsung proposed order was not

acceptable for Apple.