Australia: Samsung's Galaxy Tab 10.1 is about to hit the shelves – High Court refuses special leave to appeal the decision that lifted the injunction

Focus: Samsung's Galaxy Tab 10.1 is about to hit the shelves
Services: Commercial, Intellectual Property & Technology

What is the case about?

This case is about whether Samsung's Galaxy Tab 10.1 uses technology that only Apple has a right to use. Apple has two separate patents for inventions concerning the touch screen and heuristic computing technology used in the iPad2.

What has been happening?

A single judge of the Federal Court had ordered Samsung not to sell its Galaxy tablet in Australia until the Court had an opportunity to conduct a full hearing into the issue.

An appeal against that order was successful in the Full Federal Court

Apple sought special leave to appeal to the High Court, seeking to have the injunction reinstated. Leave was refused at around 11am this morning. Samsung's Galaxy Tab 10.1 will presumably hit the shelves shortly, just in time for Christmas.

There will probably still be a full hearing down the track, to determine whether Apple's patents are valid and whether they have been infringed. In the meantime, Samsung will be allowed to sell its tablet - keeping an account of its sales and profits - and suffer the financial consequences later if it was wrong to do so.

Why did the Full Federal Court overrule the first decision?

The three judges found that the first decision was clearly wrong.

Generally speaking, a court will assess an application for an interim order that a product be kept out of a market by asking:

  • is there a prima facie case for infringement, in the sense that if the evidence remains unchanged, there is a probability that the applicant will succeed at the final hearing?
  • having looked at a basket of discretionary considerations, does the balance of convenience and justice favour the grant of the injunction?

Justice Bennett had concluded that Apple had a prima facie case, and that the balance of convenience was almost evenly weighted between the parties. Her Honour's decision would inevitably inflict significant damage on one of the parties, and monetary damages would not be an adequate remedy for either of them. But, according to Justice Bennett, the balance of convenience fell slightly in Apple's favour, because:

  • the grant or denial of an interlocutory injunction would, practically speaking, determine the matter for the whole of the products' short lifecycle, unless the parties agreed to an early final hearing. Samsung had been unwilling to accept an early final hearing.
  • Her Honour gave some weight, albeit minimal weight, to the fact that Samsung launched its tablet with its "eyes wide open" to the impending legal proceedings, and
  • Apple had a prima facie case against Samsung for infringement of two separate patents.

The Full Court overruled Justice Bennett because Her Honour failed to conduct two evaluative tasks.

Firstly, Her Honour should have assessed the strength of Apple's prima facie case against Samsung – not just whether it had one – and required Apple to make out a relatively strong prima facie case given that the practical consequence of the order would be to decide the commercial fate of the Galaxy tablet in Australia. Secondly, Justice Bennett should also have taken that assessment of the strength of Apple's prima facie case into account when she weighed up the balance of convenience and justice.

The Full Federal Court conducted its own evaluation of Apple's prima facie case, and thought that there were difficulties for the infringement case that mean that, if the evidence at the final hearing is the same as it was at the interlocutory hearing, Apple is unlikely to succeed at the full trial.

In the Full Court's view, the three factors that caused Justice Bennett to lean towards Apple on the balance of convenience 'paled into insignificance' in light of that assessment.

Why did the High Court refuse special leave to appeal?

The special leave application focused on whether the approach of Justice Bennett to the assessment of the prima facie case was correct, or whether the Full Federal Court was right to substitute their more in-depth analysis.

In refusing special leave to appeal, the High Court affirmed that the scope of the examination of the probability of success can vary, depending on the nature of the rights asserted and the practical consequence of the orders sought. The grant of an injunction would effectively be final relief, because it would probably keep Samsung's product out of the market for its entire life cycle. In those circumstances, there needed to be a reasoned examination of the strength of the prima facie case. The Full Federal Court had undertaken that analysis, and there was no cause for the High Court to intervene.

Who cares?

Global patent practitioners, anyone with patents, anyone who may have to challenge one, and anyone who wants a Galaxy tablet!

The speed with which the Court has moved in the Apple v Samsung matter to date means that many of the foreign combatants in this global patent war are watching the Australian decisions with great interest.

The Full Federal Court undertook a more rigorous analysis of the 'prima facie case' question than has been the norm in interlocutory injunction applications in recent years. Its focus on the assessment of the strength of Apple and Samsung's competing cases, and the key part that assessment played in the outcome, will be of great interest to patent challengers who, of late, have found it difficult to fight against applications for interlocutory injunctions on the basis that the case levelled against them has weaknesses or is subject to a strong counter attack on the basis that the patent is invalid.

The approach of the Full Federal Court got the nod from the High Court this morning, but the circumstances of the case, and particularly the draconian consequences of granting an injunction in light of the pace of change in the tablet computer market, were clearly very important to the result.

What remains unclear is precisely which circumstances will trigger the requirement to conduct this kind of close examination of the prima facie case. Those circumstances have not been (and perhaps cannot be) precisely defined by the Full Federal Court or the High Court - it will depend on the facts of each case. But Apple v Samsung sends a clear message to patentees of fast-moving technology: be prepared to prove you have reasonably strong prospects of success, and be prepared for a fight at the interlocutory stage. For patentees in those industries at least, we can expect to see more evidence and more argument at the outset.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.