DSM filed Israel Patent Application Number 142789 for high directional – fibers. The patent claimed priority from Dutch Patent NE 1010413 from 28 October 1998. The patent covers the fibers themselves and both ropes and anti-ballistic equipment fabricated from the fibers.
The Application issued under Section 17c, based on the corresponding United States Patent No. US 6,916,533 and published for opposition purposes in April 2006. DSM also has a couple of corresponding European patent applications. One was rejected and the other, EP 113828, was allowed but with narrower claims.
Mifalei PMS Migun (PMS Protection Factories) filed an opposition which was heard by Adjudicator of IP, Ms Yaara Shoshani Caspi. The opposition proceedings included a hearing on 28 and 29 June 2011, during which the Opposer requested to submit the file wrapper of the corresponding European case, but Ms Shoshani Caspi refused to allow this to be entered. On 17 October 2013, the Adjudicator upheld the patent and rejected the opposition. The Opposer has appealed this decision, particularly the intermediate decision not to allow the file wrapper of the European case to be submitted.
The Opposer filed a long-winded and detailed Appeal that claimed that in addition to factual errors and illogical conclusions regarding novelty and inventive step, the arbitrator also erred on legal principle. Specifically, the Arbitrator did not give sufficient weight to the fact that the Applicant had not made the European file wrapper of record, contrary to the duty of disclosure and the obligation of equitable behaviour. Specifically, the Applicant did not make the fact that one European patent was refused and one was significantly narrowed, concealed a graph and failed to provide an English translation of a Japanese patent cited as prior art, merely providing the Japanese original. Accepting the case under Section 17c without considering the other family members and applying technical discretion was considered unacceptable, as it transferred the burden of proof to the opposer. Furthermore, the Opposer claimed that the standard of proof that the arbitrator demanded was beyond reasonable doubt rather than simply the burden of evidence generally required in civil procedure. The Opposer challenged the patent office for failing to examine the patent, and for simply relying on the US patent under Section 17c.
The Opposer claimed that when requesting allowance under Section 17c, the applicant should have proactively submitted all corresponding cases, and referred to District Court ruling on the issue.
The Patentee’s Response
The respondent (patentee) argued that the arbitrator had given a detailed and reasoned ruling based on factual and professional issues that the courts didn’t generally consider on Appeal. As to the graph, it was considered irrelevant to the adjudicator’s upholding of the Novelty and Inventiveness of the Application. The patentee rejected the claim that the duty of disclosure required submitting English language translations of all references, unless requested to. The Existence of corresponding European patent applications was alluded to in the file wrapper of the Israel application. Once allowed under Section 17c, there is no longer an ongoing duty of disclosure.
The patentee argued that the appeal was not one against the intermediate ruling concerning the European file wrapper. The appeal was only against the final decision from October 2013. The Patentee considered that the time to appeal intermediate rulings had long past. Furthermore, amending the statement of appeal was insufficient, since this was a separate appeal on the decision, not on intermediate rulings, and a request to amend the ruling was first raised in a hearing in April 2014.
The appellant countered that the original hearing had mentioned the intermediate ruling as grounds for appeal, both in the statement of appeal and in the Statement of Claims, and the intermediate decision was appended to the file. Case-law does not require the appeal to include the protocol. The request to amend the Statement of Appeal was not to introduce this as new material, but merely a safety precaution.
Under regulation 411 of the Civil Court Procedure, in addition to being able to appeal intermediate rulings after they are given, appellant may appeal intermediate as well as final rulings by right when appealing after the final ruling issues. Respondents (Patentee’s) claims that the appeal does not relate to intermediate rulings is not accurate. Point 76.2 of the Notice of Appeal notes that the adjudicator erred in failing to allow the European file wrapper to be entered into the Opposition. The fact that she did not give sufficient weight to the European patent office’s conclusions is mentioned earlier in Point 7.5. Reference is also made in Point 12 and Point 43. This was also fleshed out on 19 March 2014 in Chapter 3(6) of the main claims.
On examining the protocol, this intermediate ruling does not appear under the heading Decision or Ruling. It is scattered over 13 pages of protocol and is not detailed. It seems that the arbitrator was simply over-whelmed with the amount of material submitted. It is only in the final ruling that the decision not to allow the introduction of the European file wrapper is first discussed formally with legal support and so it is reasonable to appeal it when appealing the decision as a whole.
Filing the protocol regarding the intermediate ruling only on 28 Feb 2014, is somewhat unacceptable in that it contravenes Regulation 419(1) of the Civil Procedures. The appellant’s statement that they do not need to submit intermediate rulings and protocol is problematic and they should have submitted it. Nevertheless, since the protocol does not clearly state this as a Ruling or Decision, this flaw may be dealt with when awarding costs.
Citing the Regulations, the Judge noted that the court has the discretion to allow the Statement of Appeal to be amended at any time, awarding costs if necessary, so there was nothing inherently wrong with the appellant’s request to amend the Statement of Appeal. Indeed, contravening the procedural regulations does not disqualify a case in and of itself.
Judge Judith Schitzer was prepared to allow the protocol to be entered and the intermediate ruling to be appealed, despite procedural flaws, and went on to relate substantively to the issues raised by the European file wrapper.
The Arbitrator justified refusing to allow the European file wrapper to be considered on three grounds: the timing, failure to submit an affidavit and a suspicion that the respondent would not be able to cope with the new evidence.
In the ruling, Judge Schitzer determined that the Adjudicator Ms Shoshana-Caspi should have considered the timing, the relevance of the material in reaching a true and just ruling, the damage to the parties if additional material is allowed to be considered, and whether the other party has the ability to relate to the new evidence.
As to the timing, the Opposer wished to introduce the additional material during the evidence stage and not after this stage was concluded. The Opposer requested to confront the expert witness of the Applicant with the European file wrappers. The Applicant countered this request by claiming that the new evidence should have been submitted at the evidence stage and not during cross-examination of the witness. If there was a delay here, it was a relatively minor delay, and is not comparable to submitting evidence after the evidence stage is closed, or during an Appeal. Citing Gabai vs. Aminach, Judge Schitzer noted that in patent appeals, the appellate court has wider jurisdiction than in other appeals and can hear new evidence if required to in order to get to the truth. How much more so (a fortiori) should the opposition proceeding by prepared to hear new evidence if it will help to clarify whether or not an invention is patentable.
Where one corresponding European patent is cancelled and one is severely narrowed, there is a prima facie basis to assume that the assumption of validity at the basis of a Section 17c allowance is suspect, and the Opposer should be able to have the evidence considered. Furthermore, the European file wrapper is not a surprising piece of evidence. The Applicant mentioned the corresponding European case, albeit laconically and possibly with insufficient detail, but nevertheless, should not be surprised by its inclusion; particularly as DSM was the applicant in Europe. In the circumstances, the European case should have been considered in attempting to do justice. The attempt by the Adjudicator to manage the case efficiently and smoothly is understandable but should not come at the cost of reaching a just conclusion, and the late stage at which the European file wrapper was submitted can be grounds for adjusting costs.
The Judge then cited from a pertinent Supreme Court ruling (1297/01 Michaelowich vs. Clal Insurance LTD) and noted that in patent cases there were a fortiori grounds to be even more lenient.
Furthermore, in the Statement of Case, the Opposer stated that they would refer to corresponding file wrappers, so the Applicant had plenty of time to prepare themselves. The judge refrained from ruling whether or not the applicant should have been more open in acknowledging the European case. Suffice to say, that when it did come up, they should have related to the issues of novelty and patentability instead of fighting to prevent it being considered.
Judge Schitzer went on to note that the patent regulation 63 actually states that after the end of the evidence stage the parties cannot submit additional evidence without the permission of the Commissioner, implying that prior to the end of the evidence stage they can submit additional evidence, and even after this stage, the Commissioner has the discretion to allow such additional evidence to be submitted and should apply judicial consideration wisely instead of narrowly relying on procedural grounds. Further evidence to this wide discretion was found in Regulation 72.
As to the lack of an Affidavit, the Judge noted that if Ms Shoshana Caspi had felt the need for one, she could have asked for it, but not all evidence actually requires affidavits. Some evidence is self-evident and can be considered on its merits. Indeed, the Opposers raised this issue themselves, stating that the file wrapper speaks for itself.
Since, as ruled in 6837/12 Merck Sharp & Dohme Corp. it is preferable for the specialized courts to consider the issue of novelty and patentability, Judge Schitzer referred the case back to the Adjudicator to consider patentability of the claims in light of the European file wrapper.
In conclusion, Judge Schitzer stated that she was refraining from addressing the issue of novelty and inventiveness head on and also was leaving it to the arbitrator to decide whether or not an affidavit was warranted, and if so, to indicate to the parties what the affidavit should include.
Nevertheless, since the Opposer (the appellant) was responsible for the procedural irregularities, despite accepting the Appeal, she awarded costs of 15,000 Shekels against the appellant.
Civil Appeal 34029-01-14 Mifalei P.S.M Migun vs. DSM, Judge Judith Schitzer of Tel Aviv District Court, 12 August 2014.
I suspect that the judge’s last remark regarding affidavits was tongue-in-cheek. Indeed I have been fighting the Israel Patent Office regarding the need to supply affidavits to support self-evident facts.
The Judge is correct in her analysis and there is a moral here, in that with patent issues it is neccessary to prefer substantive arguments rather than to have awkward material dismissed on procedural grounds.