Plasson

January 25, 2015

PLasson

Plasson manufactures pipe couplings. Unidelta launched a competing product and Plasson claimed patent infringement of their patents IL 125899 and IL 127327 and passing off and requested an injunction. The District Court accepted the charges that the “main point of the patent” was infringed and issued an injunction preventing the manufacture, import or sale of Unidelta’s pipe connections in Israel as they are a copy of Plasson’s product. On Appeal, the Supreme Court overturned the finding of patent infringement and referred the case back to the District Court. The Supreme Court ruled that where the similarities between the allegedly infringing product and the patented invention lie in features that are in the public domain, there can be no case of infringement.

Background

In addition to literal infringement of the claims of a patent, Section 49 provides grounds for legal remedies where the kernel of the patent is copied. This is rather like the “pith and marrow” doctrine in the UK. Essentially, the Law provides remedies where claim infringement is avoided by a technicality, and may be seen as similar to the doctrine of equivalents. Arguably contributory infringement and inducement to infringe may be considered as judicial extensions of this doctrine. It is important to allow general inventing around, but to avoid situations where poor claim drafting can result in no literal infringement of the claims.  What the Supreme Court has done is to clarify the extent of application of Section 49.

Ruling

Judge Meltzer of the Israel Supreme Court ruled that Section 49 provides monopolistic powers to the patentee to prevent literal infringement of the claims defining the invention and also similar products / processes that infringe the kernel of the invention. In this instance, both parties accept that there is no literal infringement so the only issue is the kernel of the patent. The kernel cannot be wider than that described in the Specification and, where the patent is for a device or system comprising a combination of known parts, the kernel of the patent cannot include the parts themselves. In this instance, the District Court did not address the question of what the kernel of the patent is, and without identifying the kernel of the patent, it is impossible to establish that this is infringed by Unidelta’s product. Once the kernel is established, the court must consider whether the infringing product operates in a similar way to achieve similar results.

The Supreme Court ruled that the patent issued because of a limiting feature added to the other components.

The main claim recites:

“1. A pipe coupling comprising a tubular housing having an axial bore adapted to receive a pipe end to be coupled and having an externally threaded housing portion and an inner housing abutment; a pipe gripping sleeve having formed therein a plurality of substantially equiangularly distributed, axially directed slits extending from a first end thereof to a region adjacent to but spaced from a second and opposite end thereof thereby defining an integrally formed, axially distortable, ring-like sleeve end portion, a first axial portion of said sleeve, through which said slits extend, tapering externally from a peripheral, outwardly directed flanged portion towards said first end and being formed with a plurality of inwardly directed, axially spaced apart serrations; a tubular collar having a first inner axial portion tapering from an inner collar abutment to a first end of said collar and a second inner axial threaded portion extending from said collar abutment to a second and opposite end of said collar; and a flexible sealing ring; the arrangment of said coupling being such that with said pipe end extending through said collar, sleeve, sealing ring and housing, said collar is screw fitted on said housing, said sleeve is located in said housing and said collar with said flanged portion located between said collar abutment and an adjacent end of said housing and said sealing ring is located between said sleeve ring and said housing abutment; screw tightening of said collar on said housing causes the respective tapering portions of the collar and sleeve to be mutually displaced with the gripping contraction of said sleeve about said pipe end and the axial compression of said sealing ring about said pipe end”.

Plasson’s patent is for a ring fitting that includes a wide and flexible ring that enables different sized pipes to be attached together in one smooth motion without dismantling the connector. Since Unidelta’s system did not include this limiting feature, but merely combined pre-existing components to create an alternative pipe fitting, there was no infringement of the kernel of the patent.

Quoting from the specification:

Pipe couplings of the type herein described, which are presently in wide-spread use, normally require pushing the pipe through the seal (typically an O-ring) in the bore of the body member in order to achieve compression of the O-ring on the pipe, and thus a leak free joint. However, for pipes of large diameters, the operation of pushing the pipe through the O-ring seal requires a large force, making the operation very difficult, and sometimes even necessitating an extra operation of chamfering the pipe end for this purpose.

A further disadvantage in the pipe couplings of the type herein described now in use is that such couplings do not tolerate substantial variations in the pipe diameter so that precise pipe diameter tolerances must be maintained, or a large number of different-size couplings must be produced for the different diameter pipes to assure good sealing and gripping actions”.

“…a pipe coupling constructed in accordance with the foregoing features provides a number of important advantages including: convenient assembly, since the particular seal, in its relaxed condition, introduces very little resistance to the forceful entry of the pipe during assembly; …increased diameter range of pipes capable of being coupled, since the two-ribbed (or three-ribbed) sealing ring can accommodate substantial differences in diameter sizes…”.

This emphasizes that Plasson did not invent the only pipe coupling for joining pipes of different diameters, and there patent was limited to one that is easy to seal due to little resistance.

As to passing off, the Supreme Court was critical of the District Court for finding this without explanation of why they considered that this was applicable. The Supreme Court referred the case back to the District Court for further consideration on this issue.

Judge Meltzer established costs against Plasson of 75000 Shekels.

Judge Miriam Naor (now president of the Supreme Court) commended Judge Melzer on reducing the issue to non-technical matters without technalese that regular people could understand.

Appeal 6750/10 Unidelta vs. Palson, Supreme Court 18 December 2014

COMMENT

One wonders who the non-technical people are in this case, plumbers or the President of the Supreme Court? Is the technical issue here flanges and pipes, gaskets and washers, or non-literal infringement, pith & marrow and other legalese?


Chinese Copycat Products not illegal and down will come baby, cradle and all…

January 25, 2015

rockabye

Dvaron Import-Export sell a baby rocker.  The products were manufactured and imported from China. Fisher Price Inc. and Mattel Inc. sued claiming copyright infringement, passing off, trademark infringement and Unjust Enrichment. They alleged that their intellectual property was infringed by the product, it’s upholstery and instruction manual which they claimed were accurately copied. Both Dvaron Import-Export and directors Aharon Stein and David Ben Shushan were sued.

The Nazareth District Court threw out the charges noting that there was no patent or design registration and that the defendants had not infringed any trademark registered by Fisher Price or Mattel. Claims for reputation and confusing the public as required for a finding of “passing off” were also rejected.

The Court ruled that copying products per se. where there are no registered rights, does not, in and of itself, create grounds for an injunction. Each case has to be judged on its merits. There is no copyright in the design of functional articles, including their form, although sometimes articles includes artistic elements that are protectable.  Copyright does not apply to rocking chairs or to their upholstery which should be protected by a design registration.

Copyright does cover instruction manuals however, as these are literary creations. However, the defends are not responsible for the contents of the instruction manual infringing the copyright of Mattel or Fisher Price as they could not know that Mattel or Fisher Price had copyright in this, and they are thus innocent infringers. The Chinese manufacturer had indeed reproduced Fisher Price illustrations but one would not generally notice this or Fisher Price logos in the images, and purchasers would only see the instruction manual after purchase.

As to Unjust Enrichment, in 5768/94 A.Sh.I.R. the Supreme court found that applying this doctrine where there is no infringement of registered IP rights requires an additional element of bad faith which, in the present instance is not found

Fisher Price Inc. and Mattel Inc. could not show a reputation in the product. The mere copying is not in and of itself an additional element of bad faith and the charges were rejected.

As the charges were rejected, the issue of personal liability of the directors was moot.

Costs of 30,000 Shekels were awarded against  Fisher Price Inc. and Mattel Inc. As to goods seized under an Anton Pillar injunction by Tel Aviv Magistrate’s Court, Judge Ben Hamu referred the parties back to that court to rule on the issue.

T.A. 39534-02-12 Fisher Price et al vs. Dvarron et al., Judge Yosef Ben Hamu, 8 January 2015.


PCZL (Pearl Cohen Zedek Latzer LLP) Appeals Source Vagabond Decision Sanctioning the Law firm for bringing Frivolous Law Suit.

January 21, 2015

shlooker

Background

Source Vagabond is one of a number of companies making personal portable water supplies that are known in Israel as Shlookers – a shlook being slang Hebrew for a sip.

On August 2, 2011, Source Vagabond sued Hydrapak for, inter alia, infringing “at least claim of the US 7,648,276 patent, either literally, or under the doctrine of equivalents.” On September 16, 2011, Hydrapak served a sanctions motion under Rule 11 which provides that, before a motion for sanctions is filed, the party against whom the sanctions will be sought must be notified of the potential Rule 11 violation and given a twenty-one-day period to withdraw the offending claim. Fed. R. Civ. P. 11(c)(2). Source declined to withdraw. On October 6, 2011, Source filed an Amended Complaint, and on October 12, 2011, Hydrapak served an amended Rule 11 motion.

The court of first instance ruled that granted Hydrapak’s motions for summary judgment and Rule 11 sanctions on April 11, 2012.

Regarding claim construction, the court said there was “nothing complicated or technical” about the claim limitation “slot being narrower than the diameter of the rod,” and that none of the words of this limitation “requires definition or interpretation beyond its plain and ordinary meaning.” Accordingly, the court gave “slot being narrower than the diameter of the rod” its“plain and ordinary meaning.”

The district court stated that Source’s proposed claim interpretation “violates all the relevant canons of claim construction” and that even under Source’s own construction, Hydrapak did not infringe. It also found the literal infringement claim “lacked evidentiary support no matter how the claim was construed” and “the difference is apparent to the naked eye, and the tape measure leaves no room for doubt.”

Specifically, the district court determined that in Hydrapak’s products the slot is larger than the diameter of the rod, even under Source’s proposed construction. The original decision ruling that the case was frivolous and fining attorneys PCZL is reported here.

Source Vagabond and Pearl Cohen Zedek Latzer appealed the ruling.

The Appeal

On appeal, judge Cott determined that the sanctions were bases on two grounds:

“Source made frivolous legal claims in its submissions to the Court, in violation of Rule 11(b)(2); and Source failed to conduct an adequate investigation before filing this lawsuit, in violation of Rule 11(b)(3).”. He recommended Source’s counsel (i.e. Pearl Cohen Zedek Latzer pay $187,308.65 in partial attorney’s fees, but that Source not be sanctioned.

The logic, explained by the district court was “Given counsel’s sole responsibility, as a matter of law, for the violations of Rule 11(b)(2), and counsel’s additional responsibility for the failure to investigate under Rule 11(b)(3), I recommend that Yonay and Shuman be held responsible for any monetary sanction. I further recommend Yonay and Shuman’s law firm, Pearl Cohen Zedek Latzer LLP be held jointly and severally liable in accordance with Fed. R. Civ. P. 11(c)(1).

Hydropak successfully argued that it should receive legal fees for defending against te reconsideration motion, and the court concurred, raising the damages to $200,054.

The decision was appealed to the Court of Appeals of the Federal Circuit.

Court of Appeals of the Federal Circuit Ruling

In patent lawsuits, defending against baseless claims of infringement subjects the alleged infringer to undue costs, and this is precisely the scenario that Rule 11 contemplates.

The District Court found that Source had an obligation to demonstrate why they believed they had a reasonable chance of proving infringement, and that Source failed to show either literal infringement or infringement under the doctrine of equivalents. The issue revolved around the meaning of “slot being narrower than the diameter of the rod”. The district court dismissed Source’s construction stating, “an ‘analysis’ that adds words to the claim language [without support in the intrinsic evidence] in order to support a claim of infringement” does not follow “standard canons of claim construction.” Additionally, the surrounding claim language demonstrates that the “the slot,” “the rod, and “the portion of the container . . . folded over the rod” are distinct from each other. The claim language does not compare the size of the slot to the size of the rod together with the folded over container. Source had the ability to draft the claim that way but did not. It cannot correct that failure by adding words to otherwise unambiguous claim language. In other words, there is a limit to what one can argue a claim means.

Finally, Source argues that Hydrapak’s proposed construction “would render the entirety of claim 1 nonsensical.” This is a fascinating admission that not only does the scope of the claim as prosecuted by PCZL not include the product fabricated by Hydrapak, but that the claim is actually meaningless.

On Appeal, the Federal Circuit stated that “The district court properly determined that “claim construction is a function of the words of the claim not the ‘purpose’ of the invention,” and that Source’s construction “violates nearly every tenet of claim construction and amounts to a wholesale judicial rewriting of the claim.” Source was required to “perform an objective evaluation of the claim terms” to satisfy its obligation to conduct a reasonable pre-suit evaluation. Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1329 (Fed. Cir. 2011). By proposing a definition that ignores the canons of claim construction, Source did not meet that standard. The district court did not abuse its discretion in imposing Rule 11(b)(2) sanctions based upon Source’s frivolous claim construction arguments.

Regarding the doctrine of equivalents:

(“[N]either the attorney’s affidavit nor plaintiff’s ‘pre-suit analysis’ . . .[ever] mentioned, let alone analyzed, how Hydrapak’s product infringed Source’s patent under the doctrine of equivalents.”). Counsel was obligated to come forward with a showing of exactly why, prior to filing suit, they believed their claim of infringement under the doctrine of equivalents was reasonable. See View Eng’g, 208 F.3d at 986. Source did not comply with this requirement below. Under these circumstances, the district court did not abuse its discretion in finding a Rule 11 violation. The cost of $200,054 against Guy Yonay and against Pearl Cohen Zedek Latzer was affirmed.

Court of Appeals Federal Circuit, SOURCE VAGABOND SYSTEMS and Pearl Cohen Zedek Latzer LLP v. HYDRAPAK, INC., decided June 5, 2014

COMMENTS

I apologize to readers for being tardy in reporting this decision from June 2014. It has only recently come to my attention. Guy Yonay accused me of unfair reporting of the original decision and argued that the judge was clearly wrong, and Zev Pearl accused me of publishing lies. I think this decision, which may be found in full here appeal PCZL vindicates my reporting.

The court is correct that the attorneys are responsible for filing the frivolous law-suit. Why did this happen?

Well, the decision states that “Guy Yonay and Clyde Shuman are partners in the law firm Pearl Cohen Zedek Latzer LLP. Prior to the present action, Mr. Yonay prosecuted the ’276 patent application. In the underlying district court litigation, Mr. Yonay signed the original Complaint on behalf of Source, and Mr. Shuman signed the Amended Complaint.”

I would suggest that the first problem is that Yonay apparently prosecuted the claim before the patent office (and may have drafted the application) and then went on to litigate it. This is never good practice. Before litigating one should seek an independent opinion of the chances of prevailing. Yonay could not objectively review the claims he’d prosecuted. He appears to be confused between the purpose of the product and the claimed structure. With mechanical patents one cannot, by obtaining a patent for a specific device, prevent third parties from competing with devices having different structures that are well beyond the ambit of the claims, by arguing that they achieve the desired aim and are thus functional equivalents.

In general, it is ill-advised for the prosecutor of the patent to litigate it in court. Indeed, it is ill-advised for the prosecutor and litigator to belong to the same firm. At least on Appeal, Pearl Cohen took an external counsel, Jenks.

The managing partner of PCZL, Zev Pearl is not licensed to practice in the US. There is, however, a senior partner, Mark Cohen, who is US licensed. Both these gentlemen could and should have prevented the frivolous case being filed. Their failure to do so explains why the courts find the firm responsible and not just Yonay and Shuman.

In a newspaper article on trolls that originated in PCZL was published in the Jerusalem Post and also appears on the Pearl Cohen website, it is implied that only under new Obama legislation, can non-practicing entities be sued for costs in unsuccessful law suits. The implication is that prior to the proposed legislation trolls had nothing to lose by filing frivolous lawsuits and that practicing entities have nothing to lose as they are not trolls. This decision shows the error in this approach. Any entity, whether practicing or otherwise, must have reasonable grounds of validity and infringement to bring a case against a third-party to court. The courts have the authority to sanction the plaintiff and their legal counsel for filing frivolous cases. Pearl Cohen should have known that the interpretation they were giving to the claim was untenable. It was not infringed. The courts were therefore correct in fining PCZL.

 


Nespresso sues Espresso Club for using Clooney look-alike in advertisement

January 21, 2015

david siegal

Espresso Club aired an advertisement in December 2014 that uses a George Clooney look-alike actor called David Siegal. The actor leaves a shop selling coffee machines with a paper bag in hand.

Nespresso, who has an international campaign for their coffee capsules that features George Clooney sued to obtain a preliminary injunction against Espresso Club. The charges included well-known and egistered trademark infringement, unjust enrichment, encroachment, copyright infringement, passing off, interfering with fair trade and unreasonable behavior.

The judge, Magen Oltavia threw out the request, arguing that the chances of Nespresso eventually prevailing were slight. At worse, this was a strong hint and parody against the competitor with the intent of producing a more popular low brow competing product. There was neither copyright nor trademark infringement.

In the advertisement the graying actor wears a suit and sunglasses and makes purchases in a shop selling coffee machines, but during most of the advertisement, the words “The actor is not George Clooney” appear in the top left hand corner fo the screen.

Clooney is not a brand. Real people are not protected characters and are not copyright protected. None of Nespresso’s marks include a likeness to Clooney. The judge did not consider that the actor had even a resemblance to Clooney, a man in an white open necked shirt, suit and sunglasses would not necessarily be associated with Clooney and the words “the actor is not George Clooney” is sufficient to avoid any possibility of confusion. Clooney promotes different goods over time and the CEO of Nespresso in Israel concurred the brand is Nespresso and not Clooney.

The Judge accepted that the actor was intended to recall Clooney and was providing a broad hint parodying Nespresso’s campaign, but this was far from copyright infringement or trademark infringement. The defendant claimed to be parodying Nesspresso by offering a cheaper less elitist alternative where the machine is provided for free and one only buys the capsules. The advertising campaign was designed to promote a legitimate competing product.

The grounds of passing off and copyright infringement were also rejected. Judge Oltavia stressed that Clooney plays himself in the advertisement, not a character created by Nespresso and protectable under copyright.  Clooney would be unlikely to transfer rights in himself to Nespresso giving them lifetime +70 years rights to himself.

The advertisement was not based on a specific Nespresso advertisement. Using attractive looking people for product branding is standard practice in advertising and not the monopoly of Nespresso.

Nesspresso does not have rights in this case that override the right to free speech and creativity of Espresso Club.

Civil case: 451922-12-14 Nespresso vs. Espresso Club, before Judge Magen Oltavia, 19 Jan 2015 

COMMENTS

Selling machines cheaply or giving them away and then charging through the nose for consumerables such as ink or toner cartridges or coffee capsules is an established business model.

Courts do not necessarily enforce registered designs for the compatible cartridges as there is a retrofit clause that prevents machine manufacturers from forcing customers to purchase original replacement parts at any price. This is a matter of public policy. In general, Israel is pro-competition so this ruling is not surprising.

 


Meretz Found Guilty of Moral Rights Infringement

January 14, 2015

Meretz

Amir Peretz views military exercise (c) Ephraim Shrir

Amir Peretz views military exercise
(c) Ephraim Shrir

Some readers may consider this blog as having political leanings. After all, I’ve reported on copyright infringements by the Likud Party (here) and by Shas (here) in previous election campaigns, and have also reported on copyright infringement by the Hebrew University Student Society affiliated to the Labour Party.

Just in case anyone thinks I am politically motivated to expose Labor, Likud and Shas shortcomings, I am now reporting on a just published decision of moral rights infringement by the Meretz party which has what some might call a ‘politically correct’ manifesto.

On 16 December 2012, Ephraim Shrir sued Meretz for 70,000 Shekels for copyright infringement by posting Shrir’s iconic picture of Amir Peretz peering intelligently through a lens capped pair of binoculars whilst ‘observing’ a military exercise on 21 February 2007, in the elections for the 19th Knesset.

Ephraim Shrir is a photo-journalist. Meretz used the photo on their website, posters and advertising in their political campaign and also photo-montaged parts of the image onto other candidates. Shrir alleged that his economic and moral rights were infringed by Meretz failing to get permission and failing to acknowledge the photographer’s identity. He muscled in on Meretz, suing for 70,000 Shekels. Furthermore, Shrir’s lawyers sent a Cease & Desist letter which was ignored, and thus Meretz cannot claim that they were unaware.

Meretz claimed that Shrir had not proved that he had rights in the image. Shrir countered that the commercial rights were owned by the daily paper Idiot Acharonot, but, citing Section 34 of the Copyight Act 2007, he nevertheless held the moral rights.

Meretz claimed that as the picture was taken in 2007, before the Copyright Act 2007 entered into force, the case should be thrown out. They also claimed that the picture was never reproduced as is, but was always part of a photo-montage with other members of Yzippy Livni’s party Hatnua. Since the photo-montage was a new image that wasn’t significantly based on Shrir’s photo, it was a derivative work and could not be considered as illegitimate under Section 11 of the Law. Alternatively, the Court could accept that Section 11 was infringed, but due to Section 19 allowing critical review and brief citation, the usage should be declared legitimate.

Meretz further claimed to have taken down the image from their Facebook page sometime between 5december 2012 and 7 December 2012, prior to and independently of receiving the Cease & Desist letter. Meretz denied using the image in posters and flyers and maintained that usage was limited to their Facebook page. Since Meretz is not a profit making organization, it denied that its usage could be considered commercial.

In summary, even if there was an infringement, the short time that the image was on Facebook, the lack of political profit, the fact that the use was non-commercial and that it was there to create critical public thought combine to create a situation that the damages are negligible.

The case was brought in the Afula District Court before Judge Shaden Nashaf Abu Achmed.

The Ruling

Judge Abu Achmed noted that Section 78a of the Copyright Law states clearly that the new Law applies to creations that precede it coming into effect apart from the duration of rights and the ownership issue which are covered by the Copyright Ordinance 1911. She considered that as far as the general economic rights were concerned, Shrir’s photograph was work for hire, and was owned by Idiot Acharonot and he had no standing as a plaintiff. However, as far as moral rights were concerned, these are non-transferable and so Shrir was entitled to sue. She also dismissed Shrir’s allegations that addressing the issue of copyright ownership was a broadening of Meretz’ defence. I was rather impressed that she quoted the underlining principle of Hebrew Law: Babylonian Talmud Baba Kama 46:1 that “the onus is on the plaintiff to prove his case”.

Shrir’s dismissed the fair use defenses. Judge Abu Achmed accepted that Shrir’s moral rights were compromised and then ascertained the damage and compensation.

Of interest, Judge Abu Achmed considered that the moral rights were not only that of being identified as the photographer, but also accepted that the photo-editing, which included the image being laterally inverted and Peretz’ arms and the binoculars being photo-shopped onto the bodies of other politicians was also an infringement of his moral rights. She also accepted his concerns that the picture could compromise him by causing him to be identified with the political party and their agenda.

In assessing the damages and compensation Judge Abu Achmed noted that the relevant law provides up to 100,000 Shekels without proof of damages, but provides the court with considerable leeway in ruling lower sums. The judge considered the extent of the usage, the time period, the actual damage caused and the need to deter similar infringements. She seems to have been impressed that the Facebook post garnered 100 ‘likes’. Ultimately, however, there was one image that was posted once on one Facebook page which was shared once. This can only be considered as one infringement. Although the photographer did not accept the time-frame, the judge felt that defendant was correct that the image was in use for a few days. The photographer himself testified that where Idiot Acharonot allowed him to resell a picture, the going rate was 100 – 150 Shekels. Then again, in this instance, the defendant is a political party which helps legislate laws. Meretz has legal advisors and they claim to have procedures for obtaining permission to use copyright material. No satisfactory explanation was given why these procedures were not used in this case. It was difficult to show that Meretz actually gained or lost Knesset seats as a result of usage of the image. The judge did not accept significant inequitable behaviour as the image was taken down and wasn’t reused. Taking into account all these aspects, the judge ruled that Meretz should compensate Shrir 14,000 Shekels and a further 3000 Shekels legal expenses.

282 63-12-12 Shrir vs. Meretz Afula Magistrate’s Court, Judge Shadan Nashef Abu-Achmed, 30 December 2014.

COMMENT

Section 46 (2) of the Copyright Law 2007 states that moral rights provides that no distortion shall be made of a work, nor mutilation or other modification, or any other derogatory act in relation to the work, where any aforesaid act would be prejudicial to creator’s honor or reputation.

The Fair Use exception of Section 19 only states that “Fair use of a work is permitted for purposes such as: private study, research, criticism, review, journalistic reporting, quotation, or instruction and examination by an educational institution.

The critical review defense raised by Meretz had as much chance of flying as pigs have. The correct defense was satire. This is not listed in Section 19, but the list of fair use exceptions is open-ended. In the US, Europe and elsewhere, satirical use is considered fair use. (In Europe, the Judge apparently has to find it amusing, and with most Israeli judges appearing to be aligned with Meretz, one wonders how that would play out here.

Different creations have different degrees of creativity. In journalistic images the creativity is not supposed to be in directing those photographed to pose in a certain manner (although many iconic images of the Arab-Israel conflict are staged).

Shrir is not the creator of Amir Peretz peering through binoculars with the lens caps on any more than he is responsible for Peretz’ iconic caterpillar mustache.

To the extent that Shrir has rights, these are in the angle, lighting, and the like. There may be moral rights preventing an image being edited, but I don’t think these are significant. If Yediot had cropped the image or altered the contrast, I don’t think Shrir could have claimed that his moral rights were compromised.

I don’t think that satirical usage is derogatory or prejudicial to the original creator’s honor or reputation. I don’t accept that the photographer’s right to integrity in an image should extend to satire, and positioning Peretz’ hands on a different politician is simply that. I think the original picture is well-known and having Peretz blindly looking to the (political) right is also satire (albeit too subtle for Israeli politics) and should be allowable. Indeed, I am not sure that these changes don’t over-ride the moral rights of the photographer completely since the creative aspects of the image such as the lighting and angle are immaterial. I also do not accept that use of a well-known image of this nature identifies the photographer with the political party using the image. There is a world of difference between a popular song and singer being used in a political campaign which may imply that the singer / songwriter supports the agenda, and a photograph of an event five years earlier, which does not imply an endorsement by the photographer.

It seems that Meretz rather stupidly raised the fair use defense that their material was a review. In my opinion, more germane to the case, and rather more interesting is the defense that the usage of the image was satirical. Clearly their using Peretz in their campaign was satirical. I don’t know if this defense is sufficient, but it is what the case should have been about and there is a need for a ruling on the subject. As Meretz’ lawyers didn’t raise the issue, I don’t think the judge could fairly have addressed it.

I am also highly skeptical of Meretz’ argument that the use was non-commercial. I accept that political parties all have agendas for furthering the public good as they see it. I am less convinced that politicians are motivated by altruistic motives. That as may be, parties are allocated public funds and raise donations. Even if we ignore the alarmingly large extent that non-elected officials are selected due to their political affiliations, we can agree that party officials and certainly city mayors, Knesset members and ministers are paid employees so Meretz, like other parties, should be considered as being a commercial entity.

Ironically, Israel may be one of the very few countries in the Middle East where an Arab woman could be appointed a court judge.

I find troubling Meretz’ claim that the date by which an image is created and not the date of infringement is the date that determines whether the Israel Copyright Act or the Copyright Ordinance is the applicable law applies. This position, though creative, is untenable and one would assume that legislators would have more sensitivity to the fine points of the law.

I have posted the picture before when Shrir sued Walla, however, the photo is such a good one, I am reposting. It would be amusing except that people have been killed in actions that resulted from Hizbolla and Hamas assuming that Israel’s defense is in the hands of incompetents.


Cyber-bullying in the Israel Patent Profession

January 12, 2015

cyber-bullying-poster

There are trends in naming patent firms, as with everything else. Sometimes, the names of the senior partners are used. When this become too long, the firm switches to an acronym. so Pearl Cohen-Zedek Latzer became PCZ”L. When they merged with a firm called Baratz, they switched to Pearl-Cohen as the acronym was a little too long.

There was a trend a while ago when firms switched to acronyms for no apparent reason. Reinhold Cohen started using the acronym RCIP, Jeremy Ben-David started using JMB, and Colb started using STC. (Confusingly, most Korean patent attorneys, and presumably a lot of Koreans who are not patent attorneys, seem to be called Lee or Kim. There is a Canadian firm called Smarter & Biggar which is at least memorable. A US firm called Nutter’s is named after a founding partner. Another founding partner was Louis Brandeis. Why they preferred the name Nutter is anyone’s guess, but I digress).

Using one’s name to trade under and as an email domain is not without the possibility of confusion. In Israel, there is a patent attorney with an independent practice called Friedman but there is also a Freiman. There are a number of Cohens practicing IP Law and possibly practicing for their hereditary Priestly duties. These include the current generation of the Reinhhold Cohen dynasty, Dr Shlomo Cohen and several others. There are at least two pairs of divorced patent attorneys where each side is entitled to continue using the name they’ve been working under and they do. There are also mothers and daughters having the same initial and family name, who each provide IP services via different firms. These practices may lead to confusion, but each party is generally considered as acting in good faith and is entitled to continue using their name.

With websites, there seem to be two trends in Israel. One trend is to use one’s own name as the basis of the domain. The other is to use a generic IP website, such as patent, trademarks, IP, and to add Israel, or I, so there is an ipatent, israel-patent, -i-copyright, , etc. or using bezeq, Israel’s phone service as the domain name, an email such as patent@bezeq, etc.

In my opinion, anyone who uses the surname Cohen on a daily basis, is entitled to use the term cohen as part of his email address. I don’t think he needs to prove that he is indeed of the priestly caste. Similarly Dr Gal Ehrlich may use his hereditary surname Ehrlich, which means honest. It is not an indication of honesty. It is merely a hereditary surname.

Terms and letters such as Israel, ‘i’ for Israel, ip, and words such as Israel, patent, trademark, copyright, are all available for any practitioner to use.

As I am interested in people coming to ME for my expertise, and don’t consider myself another flavor of 3% milk or sliced white bread, I use the name factor, although I have added the letters ip to remind people what I do.  I realize that I cannot prevent other Factors from using the name Factor, nor do I have a monopoly on ip. When the UK Patent Office launched a blog called “ipfacto” I was a little put out, as the IP Factor has been around for a decade and logged up hundreds of thousands of hits. However, I didn’t seriously contemplate legal action, despite the fact that it wasn’t just the IP or the Factor, but the combination that was copied, which does create a likelihood of confusion. There is a US patent agent active in Israel called Haim Factor. As far as we know, he is not related to me. It would be nice to stop him calling himself Factor as it might confuse clients, but he is as entitled to the name as I am. I suppose this is why we have both personal names and family names.

Recently, Advocate Meir Dahan started offering electronic filing under the name epatent.  Dahan was using epatent.co.il as a website for his services. Ehrlich & Fenster use ipatent.co.il. Dahan’s email to associates gives his name as Meir Dahan very clearly. The source of the services offered was clear. It is not confusing. As an attorney-at-law, he is entitled to provide patent services. His prices are rather low, but he is entitled to set his fees at whatever value he feels is appropriate to his level of service and competence.

Nevertheless Dr Gal Ehrlich of Ehlich & Fenster sent letters to their contacts informing them that there was no connection between Dahan and their firm and announced that they had initiated legal action against him. Dahan was using epatent.co.il as a website for his services. Ehlich & Fenster use ipatent.co.il. It seems that Ehrlich & Fenster consider that ipatent is not a generic name but one that since they’ve appropriated it, they now have rights in this non-registered trademark which has acquired distinctiveness.  I find this development distasteful to the extreme.

Dahan’s letter to associates is reproduced below, as is Ehrlich’s letter.

Dear Sir/Madam

Meir Dahan Patent Law Firm specializes in filing patent applications in ISRAEL as a national phase service for foreign colleagues.

We noticed from WIPO publications that your firm represents applicants of PCT applications.

For your information, we provide you with the costs of filing and prosecuting patent applications in ISRAEL, as follows:

TABLE DELETED

Should you require further information about the detailed cost and services, we will be happy to provide such to you immediately upon request.

If you prefer not to receive similar notices from us in the future, please reply with Unsubscribe in the subject line.

We hope the above information has been helpful and we look forward to serving your intellectual property interests in ISRAEL.

Thank you for your attention.

Best regards,

Olga Lurie, Office manager 

Meir Dahan, Advocate

Ehrlich’s letter is as follows:

Dear Clients and Colleagues, 

Recently, it has been brought to our attention that several of our colleagues may have been contacted via emails from “Meir Dahan Patent Law Firm” with a solicitation offer to file National Phase applications in Israel.  The Dahan firm is using the domain name “epatent.co.il“, which is disturbingly and confusingly similar to our domain name “ipatent. co. il”

Due to complaints received in this regard from several associates around the world, we would like to clarify the following:

The Dahan Law Firm has no connection whatsoever with our firm, and we were unaware of its emails until just recently.

As soon as we became aware of the above, we immediately initiated legal actions to have the Dahan Law Firm cease using the “epatent.co.il” domain name which is confusingly similar to ours.

We regret any inconvenience caused you by these solicitation emails, none of which were initiated by, or related to, our firm.

So as to end this message on a positive note, kindly please find attached our latest newsletter discussing an Israeli judicial decision, entitled Patent Eligibility of Software-Related Inventions in Israel.  This landmark decision was a result of a successful appeal undertaken by our office.

Very truly yours

Dr. Gal Ehrlich, Patent Attorney

I’ve discussed this case with a leading trademark expert who doesn’t think that Dahan’s behavior is actionable in a court of law or under ICANN

Actually, Ehrlich did at one time try to obtain Israel trademark no. 241700 for ipatent. The mark was for Intellectual property software; all included in class 9, for Providing a website featuring information and rendering services in the field of Intellectual Property; information and professional services in the field of intellectual property ; all included in class 42, and for Intellectual property consultancy and services related thereto; all included in class 45.  However, the application was cancelled and abandoned in June 2014.

From official Patent Office figures it appears that the total number of incoming patent cases into Israel appears to be shrinking. I hope that this recent distasteful development is not indicative of what we can expect as ever more competing practitioners fight for larger slices of a smaller cake.


Cancellation Proceeding Against IL 199377 – a patent for a plate lifter!

January 12, 2015

 

plate lifter

The following decision relates to the entitlement to the priority date of a an invention claimed in a divisional patent that was asserted against a competitor. The Commissioner ruled that the claims of the divisional were not adequately supported by the priority document of the parent application and so the priority claim was lost and the patent was cancelled. A careful reading of the independent claims leads me to conclude that the device, as claimed, is a plate lifter – one of those toys used by practical jokers to move objects at the dinner table.

******************

IL 199377 “Inflatable Devices for Moving Schneider Membranes” is a patent owned by Dr Ben-Zion Carmon. Dr Ephraim Kfir  and Miambi LTD filed a request to cancel the patent under section 73b of the Israel Patent Law 1967.  IL 199377 was filed in June 2009 and is a Divisional Application of IL 152732 which was filed on 10 November 2002 and is a national stage entry of WO 2001/085062  that claims priority from a US application that eventually issued as US 7,771,482.

IL 199377 had an accelerated examination due to a threat from Dr Ephraim Kfir and Miambi LTD, and was allowed on 30 November 2010 and, as no oppositions were filed, the patent issued on 1 March 2011.

On 2 May 2011, Dr Ben-Zion Carmon sued Dr Ephraim Kfir and Miambi LTD in the Petach Tikveh District Court claiming infringement. A negotiated settlement was reached on 5 July 2011, under which the infringement suit would be withdrawn and Dr Ephraim Kfir and Miambi LTD would request cancellation of the patent.

The cancellation proceeding was filed, together with an affidavit by a patent attorney showing why the claimed invention was not new. Carmon responded with an affidavit from a Professor of Mouth & Jaws. The Opposer requested that Applicant’s affidavit be struck from the record. After a hearing, the patent office decided to rule on the admissibility of the Applicant’s affidavit in the main case.

The technology relates to grafting bone into the upper jaw prior to implanting dental prosthetics, and to the occasional need to move the Schneider membrane into the sinus cavity to allow introducing bone growing material into the base of the cavity for attachment of dental implants.

Grounds for the Cancellation included allegations that the claimed invention was not supported by the parent application or the priority document, that the claimed invention was not known to the applicant at the effective filing date and that the claimed invention is not new.

According to Patent Attorney Rimma Pugatsch Shendelzon who appeared as an expert witness for the plaintiff, the parent patent and the priority document related to a device that included a sacrificial material, and which facilitated bone growth to replace the material lost. In contrast, the continuation related to an inflatable material designed to separate the Shneider membrane from the base of the sinus. The invention claimed in the divisional lacked support from the parent and thus was only entitled to its actual filing date of 16 June 2009. Consequently, it lacked novelty due to the earlier WO 2007/129312 whose Applicant was Dr Kfir, and also due to EP 1174094, WO1996/013221, US 5,685,716, and lacked inventive step over the combination of WO1996/013221 and US 5,685,716.  Furthermore, US 2007/1565251 to Carmon himself rendered the present invention both known and non-inventive.

In response, Carmon claimed that the parent application included a number of inventions, some of which dealt with causing bone growth and others with moving tissues such as membranes. Carmon referred to Page 34 lines 1-20 of the priority document, which he claimed was directed to an inflatable device for raising the Schneider membrane. He alleged that the invention was well supported by the priority document, from page 44 line 18 to page 46 line 21 and by figures 14-22. He considered that allegations of lack of support for the invention in the priority document required support by an expert in the field (presumably physiology or dentistry) and without this, the cancellation request was groundless and should be thrown out. He considered that by virtue of the priority document, the divisional was entitled to priority and was filed as a divisional application by right and under the instruction of an Examiner. He referred to WO1996/013221 and argued that it did not render the claimed invention either anticipated or obvious.

In an expert opinion appended to his response, Professor Chowshu opined that the claims of the patent were well supported by the both the parent and the priority document. He held that the publications indeed described a number of applications for raising the sinus, some of which included a soluble container of bone material, and which were optional but not the core of the invention. The device could be an elastic material that is not biodegradable such as silicone. He considered that any person of the art would have understood that the purpose of the container is to widen and raise the Schneider membrane, and other properties such as solubility are optional and depend on the selected material. The expert further opined that one could not invent an inflatable, soluble device for displacing the Schneider membrane without creating an inflatable non-soluble device (I think the intention is inflatable regardless of solubility properties which are apparent only later). He considered that WO1996/013221 did not anticipate the claimed invention.

In summary, Carmon emphasizes that all the claims are fairly supported in the specification (of the parent) and all the experts, including his witness but also the examiners in the US and Israel concurred. Because he was entitled to priority, he did not see necessary to relate to the art cited.

Ruling

Section 73b of the Israel Patent Law 1967 states that the Commissioner may cancel any patent for any reason that could be used to oppose its issuance, at the instigation of any third-party.

The difference between an opposition proceeding and a cancellation proceeding is the assumption of validity of an issued patent, where the onus of showing invalidity falls on the third-party. Support for this is found, inter alia in 345/78 Hughes Aircraft vs State of Israel and others, PD MD (4) 45, 02 (1990).

The Commissioner considers that the question of validity consists of finding support for the independent claims 1 and 67 in the parent application, and the effective date of independent claims 1 and 67, vis-a-vis the dates of the prior art.

The invention relates to dental surgery, specifically to implants that widen the upper jaw to support dental implants. The question is how a person of the art with full knowledge of the field but without a glimmer of inventive capability would understand the prior art.

Both Carmon and Kfir are involved in developing dental procedures.  Both they and the two expert witnesses were extensively cross-examined in the hearing. Since the parties have questioned the competence of the witnesses, the Commissioner has to relate to this issue. Carmon alleged that Kfir has a commercial interest and so his testimony is valueless, and the patent attorney is not an expert in dental surgery. Kfir countered that the expert witness’ testimony is professionally inaccurate and non-objective.

The Commissioner was impressed with Professor Chowshu as a professional within the field of dental and bone implants. He noted that the patent attorney Ms Reima Pugatch-Shendelson had a Master’s Degree in Bio-Medical Engineering and had expertise in patents and patent law. The Commissioner acknowledged that he did have initial reservations regarding the competence of a patent attorney without formal education in dental surgery to be an expert witness in this case. However, during cross-examination she demonstrated her competence and provided explanations to the commissioner.

Citing Technip France SA’s Patent [2004] R. P. C. 46 on expert witnesses:

“Their primary function is to educate the court in the technology – they come as teachers, as makers of the mantle for the court to don. For that purpose it does not matter whether they do or do not approximate to the skilled man. What matters is how good they are at explaining things”.

The commissioner was satisfied with Ms Rimma Pugatsch Shendelzon’s performance to consider her an expert witness. He noted that she had declared her employment by Reinhold Cohen, and her connection to Gilat Bareket who represented the party in the infringement proceedings and that she was a paid expert. However, he did not consider that this should prejudice her standing as a witness, but should merely be born in mind.

In contradistinction, Advocate Meir Dahan’s analysis for the defendant of the infringement action which was not submitted as a sworn statement, and a second paper submitted by the patentee were, however, considered as non-objective and of dubious value.

There were certainly similarities between the statement of claims as filed in the infringement action and the opinion of the expert witness (implicitly implying that the opinion was prepared by the lawyers). However, the expert witness should familiarity with his statement and stood behind it.

An attempt was made to show that Professor Chowshu was a technical consultant to a competing firm and had a conflict of interest. This was dismissed as being additional evidence that was submitted too late to be taken into account, was available to the plaintiff earlier, was not critical in determining the outcome of the case and was submitted late in the day. Since Professor Chowshu was not a court selected objective and independent witness, but was one who was selected and paid for by one of the parties, this revelation was hardly key in reaching a fair ruling.

Claim 1 is as follows:

  1. A device for displacing the Schneiderian membrane from the floor of the maxillary sinus comprising: a rigid conduit for insertion through the maxillary bone towards said Schneiderian membrane, an expandable inflatable container, a connector, a filling tube, a reservoir having a flowable filling material and injecting mechanism, the distal portion of said connector being connected to said conduit, the proximal portion of said connector being connected to said filling tube, said filling tube being connected to said reservoir, said injecting mechanism being configured for the insertion of said filling material from said reservoir through said filling tube inside said container so at least part of said
    container being expanded to protrude distally to the distal end of said conduit inside said maxillary sinus to displace said Schneiderian membrane.

Claim 67 recites:

  1. A device for displacing the Schneiderian membrane from the floor of the maxillary sinus comprising: an expandable inflatable container for insertion through the maxillary bone towards said Schneiderian membrane, a rigid hollow connector, a filling tube, a reservoir having a flowable filling material and injecting mechanism, the external diameter of the distal portion of said connector being smaller than the largest external diameter of said connector, said distal portion of said connector being connected to the proximal portion of said container, the proximal portion of said connector being connected to said filling tube, said filling tube being connected to said reservoir, said injecting mechanism being configured for the insertion of said filling material from said reservoir through said filling tube inside said container so at least part of said container being expanded to protrude distally to the distal end of said connector inside said maxillary sinus to displace said Schneiderian membrane.”

In 2626/11 Hasin Eish TaAsiyot LTD vs. Koniel Antonio (Israel) LTD it is stated that the specification cannot provide protection beyond that claimed. Section 73b states that the Commissioner may cancel patents at the request of a third party if there are grounds under which the patent should not have issued. Referring to Section 31, the Commissioner considers inadequate support as grounds for cancellation. To establish whether or not there is sufficient support, the scope of the claims should be compared to the specification and figures, with the adjudicator putting himself in the shoes of the average person of the art. The comparison should not be a simple technical exercise of finding supporting words (see Terrell on the Law of Patents, Edition 16, 2006 (P. 68) Sweet and Maxwell.

The Commissioner considers that the structural elements required are the expandable inflatable container and the flowable filling material. He found that every reference to the Schneiderian membrane related to an absorbent insert that released a bone growth promoting material. There was no reference to any other fluids, other than those that promoted bone growth.

The Commissioner dismissed the support suggested by the patentee as being taking phrases out of context and ignoring other phrases. This was considered illegitimate, and quoting 407/89 Zuk Or vs. Car Security LTD (1994), he noted that “patent documents are written by the inventor himself, in his own words and with very little restrictions in how they are written. A lack of clarity in a phrase or term may be solved by reference to other parts of the document but one cannot selectively use phrases in the specification and ignore others to support the inventor’s interpretation.

To provide support for the claims, page 15 lines 12-59 were added.to the Summary prior to the patent issuing. This does not explain the claimed invention in greater detail than the wording of the claim. There are still phrases in the specification that specify that the container is totally or partially absorbed and that the container is periodically filled with a biocompatible material, which teaches away from a closed hydraulic fluid.

The plaintiff noted that there was no teaching for removing the device which implied that the devices considered were left in place. The patentee countered that the removal was obvious to persons of the art. The Commissioner found the plaintiff’s contention more convincing. He also accepted their argument that a careful lifting of the Schneiderian membrane would require a control device to prevent over-inflation. (with the absorbable solution, the bone replaces the membrane, blocking off the sinus so the tearing of the membrane is not a problem).

In conclusion, the Commissioner held that the specification did not support an inflatable container and an inflating liquid.

The Background clearly states that:

“The present invention is unique because it is the only device combining together a bioresorbable barrier, a graft material and an expansion device therefore avoids most of the forgoing drawback and permits a more simplified and effective means for bone regeneration:..” 

This was seen as clearly teaching away from the claims that were filed in the divisional and rendered them lacking in support.

Importantly, terms like ‘can be’ and ‘preferably’ that peppered the specification could not allow the patent to be widened indefinitely.

 

COMMENTS

Medical procedures are not patentable subject matter in Israel (or indeed, in most other countries, except the US). Devices used in medical procedures may be

The independent claims describe a rigid tubing with an inflatable container at one end and a reservoir at the other. A ‘plate lifter’ – one of those toys for running under the table-cloth to spook the dinner table (useful for showing Elijah sipping the wine on Seder Night) has all the structural limitations of the device. The structure claimed in the independent claims has been around for much longer than 20 years and the claims lack novelty.

I disagree with the Commissioner’s assumption that the only issue is whether the independent claims are novel and inventive at the time of appropriate priority. If the main claims are entitled to the priority date, I believe that the dependent claims still have to examined as to whether they are entitled to the priority and whether at the relevant date are novel and inventive.

It seems to me that if the invention claimed in divisional is not supported by the parent application, the divisional application may be considered as a patent of addition. The parent application cannot be cited against the continuation as novelty destroying, nor does the divisional need to be non-obvious over the parent application. However, the divisional application does require to be prima facie patentable over the remaining prior art at the time of its filing.

I am not sure that a professor of dentistry is better than a patent attorney at establishing what a patent publication fairly teaches. The professor in the case seems to imply that from the teaching of the specification, the extrapolation required to get to the claims is not significant. Professors are usually experts in their field and they are not well suited to put themselves into the position of persons of the art. To obtain a PhD requires original research. It requires insights. The professor in this case may well believe that the claimed invention of the divisional is obvious from the specification, but that is not the question. The question is whether it is taught, and it isn’t.

It is important that the adjudicator is aware that exerts are paid and are thus not objective. He should not be wowed by titles such as “Professor” or be dismissive of a mere patent attorney. The question is the competence of the witness. The expert testimonies should help clarify the questions requiring a legal ruling. It is clear that the patent attorney in this case was chosen because of her academic background, and while patent attorneys do not claim to be legal or technical experts, they generally are rather good at noting what is implicit or explicit in a publication as this is the basis of patent prosecution and what they do on a day to day basis. Professors may or may not be good witnesses. The question of whether the difference between the parent application and the claims of the divisional warrants a second peer-reviewed paper is a different one from whether the divisional is entitled to priority.

The experts selected by parties in legal proceedings are often friends of the party. They are generally paid for their work. They are rarely objective. Neither patent attorneys nor professors will generally dirty their names by testifying what they do not believe. The adjudicator sitting in judgment is supposed to use the witnesses to help clarify to himself what the documents are about. Adv. Kling is an aeronautical engineer. He is not a dentist. Many judges lack technical knowledge completely. They should, however, be competent to read a technical passage and to understand with the help of experts what it states.

This decision is a correct one, but it is worrying that none of the parties, including the Israel examiner, the commissioner, the patent attorney witness and the lawyers for the plaintiff realized that the main claims include a plate lifter. The Examiner, knowing that this was made special due to an apparent infringement, should have made certain that the claims were adequately supported by the specification. Had either action occurred, this rather long and laborious decision (21 pages in the original) could have been rather shorter and more entertaining.


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