Finjan Files New Patent Infringement Lawsuit Against Sophos

March 16, 2014

finjan logo                                      finjan coffee pot

Finjan, Inc. has filed a patent infringement lawsuit against Sophos, alleging infringement of Finjan patents relating to endpoint, web, and network security technologies.

The complaint, filed in the U.S. District Court for the Northern District of California, alleges that Sophos’ products and services infringe upon six of Finjan’s patents. In the complaint, Finjan is seeking undisclosed damages from Sophos.


Opposing a client’s trademark by an advertising company

March 3, 2014

mother-in-law-underwear

Delta Galil Industries is a leading Israel underwear manufacturer. The company has filed trademark applications 244662 and 244663 for Bravo and for Machotonim Q.

 

Note: The word Machotonim should be read Macho with a ch sound, as in chair or chu-chu train. this sound is not actually a Hebrew sound at all. It is also not in Arabic. Funnily enough, nor is the P sound.  Arabs can’t say pants or Palestinian. they say B instead of P. The ‘tonim part is the suffix of the word tachtonim meaning underpants, where the ch sound is the guttural het as in Chanuka – a sound not found in the English language. I am going into these pronunciation details, since the word machotonim with the guttural het means in-laws, and is probably not the association that the underwear is intended to convey. Associations are funny things. The company name delta is, of course, the general shape of underpants or briefs, i.e. an inverted triangle. this is clever. I suspect the Q relates to the shape of the fly, as in Y-fronts, but it may be like G as in g-string, since apparently the product has less rear end coverage than conventional male underwear. 

Zarmon DDV LTD and Zarmon Goldman LTD filed an opposition to the marks claiming to have worked on the advertising campaign and never having been recompensed. Further, they requested that the opposition proceedings be stayed whilst their claims for compensation be heard by the District Court.

Selgisohn & Gabrieli representing Delta Galil argued that the District Court proceedings were against an advertising agency and Delta Galilee wasn’t a side in the proceedings. Furthermore, it was proper to stay a patent office hearing only if the court hearing was likely to bear on the result, but in this case, the issues were separate.

Ms Jaqueline Bracha accepted Delta Galil’s arguments and awarded costs of 350 Shekels and a further 3500 Shekels legal expenses to Delta Galil.

COMMENT

I think this decision is correct. I suspect that since the Zarmon companies were not working for Delta Galilee directly, they can’t even record a lien on the registrations.

 


Israel Removed from Special 301 Watch List

March 3, 2014

pirate food pyramid

Oh, better far to live and die
Under the brave black flag I fly,
Than play a sanctimonious part,
With a pirate head and a pirate heart.
Away to the cheating world go you,
Where pirates all are well-to-do;
But I’ll be true to the song I sing,
And live and die a Pirate King.

Pirates of Penzance Gilbert & Sullivan

At the end of January 2014, the Office of the United States Trade Representative removed Israel from the intellectual property watch list of the Special 301 Report. This formally means that the United States, who are, of course, totally objective leaders of the free world, no longer consider Israel to be a haven for pirates.

TEVA is the largest company traded on the Tel Aviv Stock Exchange, and is the world’s biggest manufacturer of generic drugs. Israel has appeared in the watch list since 2005 since its patent laws did not conform to the standards that the US demanded, particularly in the field of generic drugs. Inclusion on the Watch List of the Special 301 Report subjects countries to increased scrutiny on relevant trade issues, and even possibly to sanctions.

Unlike WIPO that reflects international IP agreements reached by the countries of the UN, or even TRIPS which reflects an international regime pushed through by the US under the World Trade Organization in an attempt to bypass WIPO, The Special 301 Report simply reflects narrow US interests and does not reflect international standards accepted by the world, the free world, the Western world or advanced economies. It represents the US trade interests.

Israel recently amended its Patent Law to US satisfaction. See here. Not overly surprisingly, various Israel Ministers are on record as stating that this kowtowing to US financial bullying is a positive development. Economy Minister Naftali Bennett’s spin is that the decision is an “important vote of confidence by the US”. He believes that the move will help Israel advance its industry and innovation, not just in the US but around the world. Justice Minister Tzipi Livni has vowed to continue strengthening Israeli intellectual property rights. “This is a significant achievement, which reflects great efforts for advancing the international status and position of Israel as a leading country in intellectual property,” she said.

This development is the culmination of negotiations between the US and Israel from 2008 onwards. See 2009 article and 2010 article for the history. Beyond the hype, we suspect that this development does not particularly help TEVA and may account for recent job losses and talk of the company moving more activities abroad.


Israel Patent Office Website Goes Bilingual

February 24, 2014

bilingual

The Israel Patent Office has launched an English language version of their website. It may be found here.

The website looks like a mirror image of the Hebrew site, and has many of the same features. At present, Patent Office decisions are linked to, but remain in Hebrew. Annual reports have been translated. The translation appears to be humanoid, rather than by machine. It is not perfect, but is quite comprehensible. The online payment doesn’t seem to work, but it is not clear if this is a glitch that will be ironed out, or is intended.

The patent database is lined to but remains in Hebrew. The trademark database that is linked to has the same layout as the Hebrew version but has enough English to be more or less navigable by an English speaker without Hebrew. Since trademarks often are filed in Hebrew, I would urge people not familiar with both languages to use an Israeli attorney for searches.

Perhaps the most obvious omission is the warning on the front-page of the Hebrew site against non-licensed practitioners.

In general, I consider this development a positive one that should have been done years ago.


Israeli Photographer Wins Copyright Damages from AlJazeera

February 24, 2014

AljazeeraAl JazeeraDalal

Shmuel Rachmani photographed a bus destroyed on the coastal road in a terrorist attack in April 1978, including photographs of the terrorist, Dalal Mugrabia, and one of a victim. At the time, the photographs were printed in Maariv, then Israel’s evening newspaper, now a weekly.

On 15 March 2010, Israel’s Channel 10 broadcast an item about Dalal Mugrabi during which, the two images were aired together with the Al Jazeera icon, thereby alerting the photographer that Aljazeera had infringed his rights. In the Maariv paper from where the photographs were taken, the name of the photographer was displayed, so Shmuel Rachmani alleged that in addition to copyright infringement, his moral rights were trampled on.

Rachmani sued for a total of 80,000 Shekels, consisting of two counts of willful copyright infringement and two counts of willful moral rights infringement. Under the 2011 Copyright Ordinance, the maximum damages is 10,000 Shekels, but for willful infringement, this may be doubled.

Rachmani also requested an injunction against Aljazeera, but dropped this demand. In separate proceedings Rachmani sued Channel 10 and came to an out of court settlement.

Attempts to mediate a settlement were in vain. During preliminary stages of the trial, 7,000 Shekels in legal fees were awarded to the plaintiff.

THE RULING

Judge Raphael Jacoby of the Jerusalem District Court rejected arguments regarding Jurisdiction under International Law, standing and the like, and considered them damaging to the defendant. He noted that Aljazeera is broadcast on local cable television under license, so the company has local presence.

Jacoby went on to rule that the pictures were creative works that were protected by copyright and dismissed the hot news defense, noting that the images related to a historic event from 36 years ago. He did not consider the usage incidental. He acknowledged that the photographer could not produce the negatives and prove ownership or produce proof that the copyright was not transferred to Maariv, but accepted evidence of the archivist of Maariv that this was the standard work terms between the parties, and the acknowledgment of the photographer in the original newspaper as proof that Rachmani was the copyright owner.

Noting that under the new law, Rachmani could sue for 100,000 Shekels a time, Judge Raphael Jacoby ruled that the damages sought were proportional and ordered that Aljazeera should compensate Rachmani a total of 50,000 NIS for the infringements and should pay a further 15000 Shekels in legal fees.

T.A, 45542-12-11 Rachmani vs. Aljazeera International LTD, Jerusalem District Court, by Raphael Jacoby, 19 February 2014.


Hair-raising

February 19, 2014

head and shoulders pantene

Proctor & Gamble and their local representatives sued for compensation for trademark infringement and passing off after police raided a store-room in the Yagel village and seized thousands of bottles of Head & Shoulders and Pantene shampoo, some full and some empty.

The bottles were counterfeit, but Proctor & Gamble could not prove actual substantive damages, and the Magistrate’s Court ruled 30,000 Shekels (about $7000) in estimated damages.

COMMENT

Counterfeiting causes tremendous damages, not only in lost sales, but in damage to reputation. A lot of R&D goes into developing a liquid gunk that removes oiliness and dandruff without irritating the scalp, which can be washed out leaving a conditioning component behind.  I assume that the counterfeit stuff is less effective.

 


Drop in Patent Filings into Israel

February 5, 2014

stats

The Israel Patent Office has just published official figures for 2013.

Some 6185 patent applications were filed in 2013, of which 5,294 were Paris Convention or PCT National Phase Filings, and the remaining 891 were first filings. I’ve compared these figures to those in the 2012 Israel Patent Office Report and it would appear that these are the lowest figures for a decade.

The obvious things that have changed are that the Israel Patent Office put its fees up 40% past year and the Shekel is very strong against foreign currencies.

It seems though, that Israeli inventors are also thin on the ground or first filing elsewhere. Since the America Invents Act I think US provisional applications are less attractive. It could be, however, that with more Israel patent firms filing direct into the US and the low dollar, coupled with the draconian raise in Israel Patent Office filing, extension and issue fees, that the these are being scared off as well.

The Israel Patent Office has to find salaries for the 100 examiners it employs as a prerequisite to obtaining International Search Authority Status. We further note that the number of new practitioners is increasing, so it seems that there is less patent work to go around.

It could be that there is significant drafting going on for Israeli clients. However, they are not filing in Israel. Apparently the number of PCT applications filed with the Israel Patent Office in 2012 was 1199 which is an 11.4% increase compared to the 1062 filed last year. There were also at least 192 further PCT applications filed in Geneva that requested that the Israel Patent Office conducts the International Search.

Of course the Israel Patent Office has put a positive spin on things. The report notes a drop in patent pendency times. Well, with less work coming in and more hands to do it, what does one expect? 

1360 design applications were filed in 2013, which is a 12% drop from 1546 last year, and is similar to the 1362 applications filed in 2002 and 1369 applications filed in 2003, but lower than any year in the past decade which peaked at 1775 in 2008.

It is not all doom and gloom though. There was a 10% increase in trademark filings into Israel, with 8733 marks filed in 2012 and 9578 filed in 2013.


Adding Evidence in Israel Patent Opposition

February 2, 2014

abbott

Patent oppositions proceedings in  Israel follow a set path.

the Opposer(s) file their statement of case. The Applicant responds, and the opposer submits evidence. Evidence should be submitted at the first opportunity, and applicants are not allowed to submit further evidence at a later stage, to prevent cases being unnecessarily dragged out.

It happens, however, that evidence may sometimes not be submitted at the first opportunity as the  applicant or opponent does not consider it relevant. The statement of witnesses brought by opposing counsel may make it relevant and necessary to add such evidence at a later stage. The Israel Patent Office regulations enable such late submissions, if there is a prima facie basis for determining that the evidence was not submitted earlier, not in order to drag out proceedings, but because either the evidence was not known to its presenter at an earlier date, or because the presenter was unaware of its relevance which only became clear due to statements made by the opposing counsel.

Israel Patent Application No. 122546 to Abbott was published for opposition purposes on 31 December 2012. On 29th April 2012, Teva Pharmaceutical Industries and Vertex Pharmaceuticals Inc. filed oppositions.

In response to the oppositions, the applicant requested to correct the specification. In Israel it is legitimate to correct the specification at this stage provided that such corrections are in no way widening of the requested monopoly.

Opposers opposed the request to amend the specification on legal grounds and thus did not submit evidence. Abbott’s witness argued scientific grounds for allowing the amendment, and so Opposers requested permission to submit evidence against this request. Abbott’s counsel argued that it was too late to submit such evidence and that the Opposers were widening the grounds for opposition.

The topic in question relates to whether the 3A4 enzyme is an example of the P450 family of enzymes.

In his ruling, Commissioner Adv. Assa Kling ruled that there were no sweeping grounds to forbid submission of evidence and on weighing it up, he would see whether the evidence was indeed submitted in response to Abbott’s witness, or if there was indeed, evidence that opposers were filing evidence as a delaying tactic or to widen the scope of the opposition.  He noted that he could award costs to one side or the other when ruling costs on the amendment to the claims.

COMMENT

I think the patent office is taking the correct approach here. the rules for submitting evidence are there to prevent abuse. If the applicant is claiming abuse, he has to support his case.


An Israeli Approach to Author’s Rights

January 30, 2014

price control

On February 6, 2014 the Law for the Protection of Literature and Authors in Israel (Temporary Provision), 5773-2013 will come into effect.

This Act is expected to revolutionize the Israeli book market by introducing new regulatory requirements with respect to publishing, distribution, sales and profit allocation across the book supply chain.

The act is a protectionist measure to protect authors from market forces in a dysfunctional market dominated be a cartel of two main chains of bookshops that control over 80% of the Israel market.

Protecting authors from having their work discounted will, of course, increase costs of books. The Law is interesting in that it is an attempt to address a perceived problem. The period over which the Law will affect book prices is 18 months.

What is refreshing about this law is that it aims to regulate the first 18 months of sales. I think that this sort of time span is relevant. This contracts strongly with Copyright, which, in Israel, is called, more accurately, ‘Creator’s Rights’. Copyright lasts life of author + 50, 70 or 95 years. This is an area where reform is needed since if there is still an interest in a work 10 or 20 years later, the author will invariably have been financially compensated.

Main Provisions of the new act

Under the Authors Act, book prices will be ‘protected’ for 18 months from the date of first publication. During the Protection Period publishers must set a retail price for each book, which must be marked on the book. The retail price for printed books may be different from that of e-books. The publisher may not change the retail price during the Protection Period.

During the Protection Period, bookstores may not sell books at a different price from the retail price set by the publishers. Not only regular discounts are illegal, but also special offers of the type common by Israel bookstores, such as “buy one get one free” and promotions such as “four for 100 Shekels” are not allowed.

The ‘no discounts’ and ‘no bundling’ has some exceptions:

  • A discount of up to 20% of the retail price may be granted during the annual Hebrew Book Week. A discount of no more than 10% of the retail price may be granted by an online bookstore, and a discount of no more than 20% of the retail price is allowed for a single entity not allowed to return the books.
  • During the Protection Period a publisher must pay an author no less than 8% of the retail price for each of the 6,000 first copies sold, and 10% of the retail price for each copy sold over 6,000 copies. However, for his/her first book, an author will only be entitled to minimum payments equal to 80% of these percentages. During the seven years following the Protection Period, a publisher will pay an author no less than 16% of the actual payment received by the publisher for the books sold.
  • Once a year, publishers and bookstores will enter into a written agreement setting the discount at which the books will be sold by the publisher to the stores during the relevant year. Bookstores are prohibited from requesting, and publishers are prohibited from granting, any further discounts beyond the margins set in the annual agreement.

The Authors Act will be in force for a trial period of three years at the end of which its impact will be assessed and the Act will be re-examined.

The Authors Act contains other provisions, such as a prohibition on remunerating salespersons for recommending a specific book or a specific author; allocation of shelf space and display space between books published by different publishers, oversight, enforcement and sanctions.

COMMENTS

The goals of the Authors Act, as stated in Section 1 of the Act are:

“to ensure Israeli authors proper pay for their creations, to promote literature in Israel, to preserve cultural diversity in publication and distribution of books… to provide readers an opportunity to choose among a wide range of books according to their wishes and tastes and enable competition between publishers and bookstores with respect to quantity, variety and the quality of books offered to the consumer.”

In the notes accompanying the proposal we learn that

“Books and literature are regarded as products of a definitive cultural value that many countries in the western world recognize the need to preserve. These countries rejected the approach pursuant to which a book is a commodity that should be subject to free market conditions. In the State of Israel there exists a unique situation in which the conduct of the book market is dictated by a cartel composed of two chains of bookstores that controls 80% of the market. One of these chains is controlled by a book publishing company. This situation causes serious harm to the principle of free competition… a serious failure in the book market was caused…”

The main aim of this legislation is to help authors, making it possible for them to profit from their creative output. It has been argued that without this additional protection, there will not be sufficient incentive for them to write.

I dispute this. I don’t think that the size of the market has any effect on quality literature. I don’t think that a law of this nature is required to make authoring books sustainable. I note that Iceland has a population of 300,000 of which 10% are authors. The profitability of writing has little effect on the amount of books written and less effect still on the quality of the literature and its cultural contribution.

If the problem is that two chains dominate the market, then perhaps the chains should be split up? If a publisher controls one chain, then it seems difficult to follow the argument that the chains are in a too strong negotiating position with respect to publishers.

Nowadays anyone can self-publish, and with two chains controlling the market, presumably the authors and publishing houses can choose to work with one chain only and can create contracts regarding discounting, so it is difficult to see how this law provides leverage hitherto unavailable.

Any protectionist measures that help authors will invitably be at the expense of the consumers, i.e. the reading public.

It is, of course true that the people who bundle books in the “buy one get one free” or “4 for 100” promotions are not literature experts and their decisions on such promotions derive mostly from business considerations. It is, however, not true that such promotions force high-quality literary works out of the public eye.

People may be encouraged to buy certain books by price, but quality literature will never sell at the rate of trashy romances.

It has been argued that if the large chain bookstores are not allowed to give discounts and new books will be sold for a fixed price, independent bookstores will have a better chance of competing with large bookstores. This argument can be extended to other areas. Perhaps fixed prices across industries is a good thing. Adam Smith and Milton Freedman would disagree, but perhaps Carl Marx would approve.

It is expected that book prices will increase and, as a result, book sales will decrease. This may adversely affect the variety of books available and it may become more difficult for new authors to get published.


Israel Supreme Court Resuscitates Patent Application that Suffered Sudden Death

January 28, 2014

cot empty cot

On 4 January 2013, I reported on a strange decision by the patent office wherein Ms Jacqueline Bracha accepted an opposition filed by Colb on behalf of Aminach a mattress manufacturer, that alleged that Israel Patent Application No. 179840 for a mattress claimed to minimize cot death (Sudden Infant Death Syndrome or SIDS) should be refused due to lack of utility. My original article may be found here.

Essentially the inventors had not proven their case that the mattress provided the desired effect. Perhaps foolhardily, the inventors not only drafted their own application but also fought the opposition themselves.

On losing the opposition, the inventors appealed to the Tel Aviv District Court which ruled that on Appeal, they could review the legal conclusions of the deputy commissioner but could not hear new evidence. This ruling was appealed to the Israel Supreme Court who has now ruled that unlike regular civil procedure, in an appeal of a decision of the patent office to the courts, new evidence may be heard.

The Supreme Court ruled that Section 177 of the Israel Patent Law and Ordinance 193 of the patent regulations allow the court of Appeal hearing an appeal against a patent office decision to hear new evidence and to try the case as if it is the first court of Appeal. This should not be interpreted as meaning that the court has to hear new evidence and give the appellant a second bite at the judicial cherry. Nevertheless, the court may here new evidence where it sees fit.

In this case, Applicant had laboratory evidence that their prototype did have an effect. Instead of relating to this evidence, the District Court decided under Section 457 of the Civil Court Procedure that it could not hear new evidence that could and should have been presented to the patent office during the opposition. 

In the ruling, Judge Handel noted that the inventors were unrepresented, yet nevertheless persuaded the Deputy Commissioner that their invention was novel and inventive over the prior art. They argued that they never thought it necessary to demonstrate utility. Judge Handel felt that prior to refusing the patent application on grounds of utility, the Deputy Commissioner should have actively solicited evidence from the applicant, particularly as they were not represented and were fighting against a large mattress manufacturer who was represented. he ruled that in the circumstances, the Court of Appeal should here and consider evidence that the claimed invention works. He also noted that the US, UK and EPO had all allowed the invention on its merits.

Judge Handel realized that in the absence of a conflicting expert opinion, the Deputy Commissioner had accepted the expert opinion provided by the opposers and had not been swayed by attempts by applicants to point out logical flaws in his argument.

In the circumstances, the District Court should not have been considered as rehearing evidence weighed up by the Deputy Commissioner.

The Supreme Court referred the case back to the District Court to hear fully, allowing the parties to file new evidence.

Judges Juvran and Shaham concurred. No costs were awarded.

Appeal 5041/13 Gabai vs. Aminach

(this time the Gabais were represented by Adv. Amir Friedman).

COMMENT

In general, patent offices do not test hypotheses. The applicant does not have to show proof that his idea works to obtain a patent except in cases such as perpetual motion machines, turning lead into gold, anti-gravity and nuclear cold fusion where there is a consensus among scientists that the idea is impossible.    

At the time of the first write up I had been contacted by a lawyer to provide expert testimony. I did not want to address the issues. That fell through.

I can therefore now point out that the expert testimony provided by Aminach’s witness in no way proved that the mattress does not work. It is true that Applicants have also not proven that their mattress does have efficiency. There is, of course, a problem in that the correct scientific way to test the theory requires a large population of identical twins and putting one to sleep on a regular mattress and the other on the mattress of the invention in otherwise identical conditions. Once there have been a statistically significant number of cot deaths, one can see if the two mattresses function differently. This type of experiment, is, however, not very practical.

In the brief period I worked on this, I discovered some theories for cot death that provided theoretical support for the hypothesis that such a mattress would work, and also found a researcher who was modelling the effects of different mattresses on carbon dioxide build-up. I also spoke to polymer scientists who make foam mattresses. I am sure that it is possible to provide sufficient evidence to support the hypothesis as reasonable.

 

I think that having convinced the Deputy Commissioner that their claimed invention is novel and inventive, should have been awarded a patent. If it does not work, then Aminach will presumably not have a need to infringe it.

It would have been fun to fight this. I look forward to reporting that the patent has been allowed.


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