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?


US Supreme Court Overturns Federal Circuit’s Ruling Regarding Validity of Patent for Teva’s Copaxone

January 21, 2015

copaxone

Copaxone is a blockbuster drug based on the glatiramer acetate copolymer which was patented by Yeda (the Tech Transfer Company of the Weizman Institute) and licensed exclusively to Teva to manufacture.

On Tuesday 20 January 2014 the U.S. Supreme Court reversed an appeals court ruling that invalidated Teva Pharmaceutical Industries patent on the blockbuster multiple-sclerosis drug Copaxone, giving the drug maker a new opportunity to forestall generic competition.

The claims specify a particular molecular weight range but do not specify what method was used to measure the molecular weight. Sandoz argued that this is a fatal flaw and the claims are indefinite under §112. The District Court found for Teva, and was convinced by Teva’s argument that the claim clearly meant the “peak average molecular weight”, and not either of the two alternatives of “number average molecular weight” or “weight average molecular weight”.

On appeal, the Federal Circuit held to the contrary and found the patent invalid for indefiniteness. In reaching this conclusion, the Federal Circuit reviewed de novo all aspects of the District Court’s claim construction, including the District Court’s determination of subsidiary facts. The issue before the Supreme Court was whether that was permissible, or whether the Federal Circuit had impermissibly set aside the District Court’s findings of fact without the requisite finding of clear error on the part of the District Court (in violation of Federal Rule of Civil Procedure 52(a)(6), for what it is worth). The Supreme Court of the USA accepted TEVA’s appeal that found that the Federal Circuit had indeed impermissibly conducted a de novo factual review. So the Federal Circuit’s decision was vacated and the case remanded.

The Supreme Court Decision ruling was made by seven judges with two dissenting. Justice Breyer gave the Opinion with Justices Roberts, Scalia, Kennedy, Ginsburg, Sotomayor and Kagan affirming. Justice Thomas filed a dissenting opinion which Justice Alito concurred with. According the majority opinion the Federal Circuit had indeed impermissibly conducted a de novo factual review. So the Federal Circuit’s decision was vacated and the case remanded. In the dissenting view, the opinion was that the Federal Circuit had not overturned findings of fact, but had instead formed a different conclusion of law as to the claim construction. Therefore, there had been no breach of the Federal Rules of Civil Procedure. The case has been referred back to the Federal Circuit Court of Appeals.

COMMENT

The ruling will help TEVA prevent generic competitors from entering the Copaxone market until the patent expires in September. There seems to be a power struggle going on in the US court system with the Supreme Court reprimanding the Federal Circuit for assuming powers that are not rightfully theirs.


Narrowing Claims During Oppositions

January 18, 2015

narrowing

IL 188066 to Elta “Gunshot Detection System and Method” is being opposed by Rafael.

During opposition proceedings, the Applicant is allowed to narrow the scope of protection by deleting claims or by adding restrictive features.

In addition to claim amendments that were specficially authorized, Elta deleted some additional claims and made further amendments. These amendments were clearly restricting the scope of the claims but Elta exceeded the amendments that were agreed between the parties and did not flag that they were making further amendments.

In the circumstances, the Commissioner Asa Kling accepted the amendments, gave Rafael two months to correct their statement of case and awarded costs of 7000 Shekels costs to Rafael.

 


Reviving Lapsed Patents in Israel

January 18, 2015

revival

The December crop of patent office decisions included a number of attempts to revive lapsed patents. The requirements for revival, broadly speaking, are that the patent lapsed unintentionally and that the patentee acted promptly to restore the lapsed patent. Three out of five requests for reinstatement were allowed. Two requests were refused due to tardiness in filing the request for revival.

IL 152965 to Shlomo Lavel unintentionally lapsed. Patentee claims to have paid the renewal fee on-line but could produce no evidence of this. He further claims to have made steps to commercialize the technology. When trying to pay the second renewal he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 168588 to Sharine Polishing technologies LTD unintentionally lapsed. Patentee paid the renewal fee on-line but did not send the proof of payment to the patent office. Following a random check he discovered that the patent had lapsed. As Deputy Commissioner Ms Jacqueline Bracha was convinced that the patent lapsed unintentionally and that the patentee took steps to rectify the situation promptly on learning that the patent had lapsed, she has ruled that it may be revived and the decision will publish for opposition purposes.

IL 192499 to S. M. B. T. technologies issued on 25 June 2013. The first renewal should have been paid within three months, i.e. by 29 September 2013, and, when it was not paid within the subsequent six months, was deemed to have lapsed as of 29 September 2013. The current owners took possession on 3 September 2013 and responsibility was transferred to Zvi Ben Ari, Patent Attorney. Mr Ben Ari attempted to pay the next renewal on 3 June 2014 and learned that the patent had lapsed. He contacted the previous representatives for an explanation but was unsuccessful in this attempt. It seems that the patent was abandoned due to human error. The problem was that the request to reinstate was only submitted some four months later. In the circumstances, Deputy Commissioner Ms Jacqueline Bracha could not find that the patentee or his representative had acted promptly to reinstate as required by Section 60 of the Law, so reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.

IL 196017 to Microsoft lapsed due to failure to pay the second renewal which lapsed at the end of June 2013, and the fact that it had lapsed published in the February 2014 patent office journal. Microsoft filed for reinstatement, claiming that their foreign renewal service provider unintentionally noted the filing date as June 2008 instead of June 2007 and so docketed the renewal for 28 June 20014 instead of 28 June 2013. In April 2014 the local agents (Colb) were contacted and on 15 July 2014 they filed for revival with affidavits from the service provider. Although the reasons for the patent lapsing were explained, no explanation was provided for the nearly four months that passed before the reinstatement request was filed. In the circumstance, reinstatement was not allowed. The patentee is entitled to a hearing under regulation 90.


Israel Patent Application Number 142789 – The European Patent Wrapper

January 15, 2015

file wrapper

DSM IP Assets owns Israel Patent Application Number 142789.

PMS Armory Factory LTD opposed the patent issuing. The opposer wished to enter the file wrapper of the corresponding European patent application into the evidence, but the Adjudicator of IP, Ms Shoshani Caspi refused to allow this as the request was submitted late in the proceedings. The opposition was rejected on 17 October 2013 and the Opposer appealed to the District Court.

On 12 August 2014 Judge Shitzer ruled that the file-wrapper of corresponding patent application EP 1137828 should be admitted as evidence. See here. The Applicant appealed this to the Supreme Court who ruled that the case was ongoing and so they were not yet prepared to get involved.

The Applicant therefore requested an expedited decision by the Patent Office regarding EP 1137828 so that they would be able to benefit from the application before it finally lapsed in 4 1/2 years. The Opposer rejected this request, claiming that it gave the impression that they were time-wasting. They requested due process including the right to cross-examine the witness. Applicant argued that the file wrapper did not need to be submitted by a witness that would be available for cross-examination. The District Court merely ruled that the evidence was admissible. Submitting via a witness who would be cross-examinable was a mere time-wasting exercise.

The Opposer argued that the European file wrapper raised technical issues that required clarification, and the applicant argued that this was widening the grounds for opposition. The sides each tried to get the other’s case thrown out on technicalities and argued as to who should be cross-examined first to avoid giving one side an advantage over the other.

Ms Yaara Shoshani Caspi ruled that as the European file wrapper was ruled as admissible by the courts, its relevance should be determined and now was not the time to try to stop it being considered by a technicality. She went on to rule that the European file wrapper should be submitted with a statement of its relevance to why the claimed invention is not patentable and the applicant could respond to the statement. There was a need to finish the opposition without further ado to provide legal clarity to the sides and to third parties regarding the validity or otherwise of the patent.

The Opposer should submit the European file wrapper in full within 14 days with no moe than six sides of arguments and the applicant would have 14 days to respond. The opposer would then have 7 days to sum up in three sides. That would be the time to decide whether a witness should be available for cross-examination. Should there be a hearing the sides would be required to sum up orally, and a final ruling would issue soon after the summary / hearing. No costs were awarded at this time.

 


Double Patenting in Israel

January 15, 2015

novartis

The present ruling relates to the issue of identical of overlapping patents and patent applications, and examines the ramifications of double patenting.

IL 2039732 is a Divisional Application of IL 176831 “Compressed Pharmaceutical Tablets or Direct Compression Pharmaceutical Tablets Comprising DRR-IV Inhibitor Containing Particles and Processes for their Preparation”. Novartis have appealed a final Examiner’s rejection.

The Examiner considered that the parent and the divisional application are directed to the same invention. After this issue was first raised, the Applicant amended the claims, but the Examiner considered that the amended claim set (claims 1-23) covered the same invention as claims 23-26. Based on 5293/93 Welcome Foundation vs. Patent Commissioner (1993), the Examiner rejected the claims of the divisional application. A telephone conversation was to no avail. The Examiner issued a final rejection noting that there were substantive issues not addressed, whilst Applicant is appealing this decision claiming that the issue is one of interpretation of the law and has thus appealed to the commissioner.

The Commissioner held a hearing and allowed the Applicant to present a short summary of the comparative law in US, Europe, Australia, Japan, China and India. In this instance, the Examiner did not claim that the divisional had identical claims to the parent application, but that there was some overlap. According to the Commissioner, the issue is one of interpretation of Sections 2, 8 and 9 of the law. These state that an inventor is entitled to a patent, that a patent can only cover one invention and that where two or more applicants file for the same invention, the first to file is awarded the patent. The purpose of divisional applications is to prosecute additional inventions claimed within the same parent application.

In the Welcome case, claims 1-10 related to uses of a pharmaceutical preparation in the treatment of various diseases and claim 15 related to a method of preparation of the active ingredient.  Then Commissioner, the late Michael Ophir ruled a claim for use in preparing a medicament’ and ‘use in the treatment of’ were identical. He did not see that the application related to more than one invention. On appeal, Judge Winograd ruled that one can have one application for a material, a second one for the method of fabrication and a third one for uses, provided each application is directed to patentable subject matter and there is no overlap between the cases. There Judge Winograd went on to rule that one application cannot include more than one patentable invention, i.e. one should not award more than one patent for one invention, and this is a corollary of Section 8 that a patent should cover one invention. One can file a plurality of applications for a plurality of related patents provided that each one is directed to a patentable invention and the claims are not identical or overlapping.

In the present case, both the parent IL 176831 and the divisional application IL 203972 have the title. In IL 203972 there is one independent claim. Claims 23 and 24 of the parent IL 176831 each depend on claim 1, and claims 25 and 26 are dependent on claims 24 and 23 respectively. The independent claim of IL 203972 is directed to using a powder to form a pill for treating a wide range of ailments. Claims 23 – 26 of the parent IL 176831 are directed to forming tablets and a corresponding process. The divisional relates to various states that are not in the parent application, but both cases have the same specification. According to the Applicant, the parameters are identical but the parent claims the process whereas the divisional application claims use of the active ingredient to prepare a pharmaceutical.

According to the Examiner, the divisional application claims use of a formulation for treating a disease, where the formulation is given in claims 23-26 and the diseases treated are listed in claims 1-22. In both cases, the formulation is the same, the particle size is the same and the active ingredients and additives are the same as those given in claims 23-26 of the parent. Novatis found the Welcome decision poorly claimed and poorly reasoned and could not see why two applications could not claim identical or overlapping inventions. They argued that where applicants are the same, there is no need to relate to identical or significantly overlapping claims, holding that the Israel Patent Law does not prevent multiple patenting. Novartis argued that Section 2 is merely a declarative statement that the applicant may file a patent. It does not have legal ramifications, and certainly does not limit the number of patents that the applicant may file. Section 2 does include the word “one” and it should not be read into the claim such that one patent may be requested for one invention. Support for this interpretation is found by contrast to Section 9 which relates to different applicants with patent applications for the same invention.

The parties are in agreement that different applicants cannot be awarded separate patents for the same invention. Novartis holds that the same applicant can be awarded two or more patents for the same invention. The Examiner disagrees.  Novartis accepts that there is no economical justification or logic in an applicant having more than one patent, and even sees this behavior as unacceptable. However, so long as there is some difference between the two patents, it is legitimate to award the protection of both patents.

The commissioner upheld the Examiner’s conclusion and ruled that so long as there is nothing in claim 1 of the divisional that exceeds the scope of the claims of the parent, there is no reason to allow the divisional.

COMMENTS

In the US, the issue of double patenting is dealt with by filing a terminal disclaimer. Although that prevents extending a term of protection (sometimes  disparagingly called evergreening), it still has negative ramifications. Third-parties such as an alleged infringer may have to show that he is not infringing a number of overlapping patents. Likewise, a competitor may have to show a number of similar patents are invalid or not infringed. This places an unnecessary burden on third-parties.


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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