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?


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.


PCT Filing Fee Reductions in January 2015

December 14, 2014

wipo_pct_logo270savings

The official fees incurred for filing, prosecuting, registering and renewing patents, designs and trademarks in Israel are linked to the cost of living index. Twice a year, on 1 January and on 1 June, they are adjusted. It seems that living in Israel is ever more expensive, and each adjustment makes each fee a few Shekels more.

WIPO works differently. From time to time their fees for PCT related services are adjusted, but not necessarily upwards.

As of 1 January 2015 the basic international filing fee for a PCT application will drip from $1471 to $1384. Excess page fees will drop from $17 a page to $16 a page.

If one elects the EPO as the international Search and Examination Office, the search will cost $2366 instead of the current $2545.

Using PCT Easy saves $104 per application, and filing electronically as XML or similar saves $208. It is possible to combine these and file electronically using PCT Easy, saving $312.

 

 

 

 


European and Israel Patent Offices Sign a Bilateral PPH

December 10, 2014

pph

The European Patent Office (EPO) and the Israel Patent Office (IPO) have agreed a patent deal set to speed up examinations at both offices. Starting next month, the Patent Prosecution Highway (PPH) will allow applicants to request accelerated examination of a patent at either office provided the claims have been previously deemed acceptable by the other. The agreement was signed on December 4 by heads of both offices in Brussels, Belgium.

Apparently Asa Kling, director of the IPO, said the programme would “enhance co-operation between the offices” and further strengthen the economic and technological relations between Israel and Europe.

COMMENT
We see this as a great development, not least because Israel Applications may be accelerated fairly easily under a variety of routes including Section 17c of the Israel Patent Law 1967 and relevant patent office circulars. European Applications can linger in the queue for examination for quite a while, and incur annual maintenance fees. Then again, once allowed, a European patent has to be ratified and is then subject to renewal fees in the countries where it is ratified. The main thing is that this gives applicants choice and flexibility.


IL 153925 to Samsung to Be Published for Reinstatement

December 10, 2014

face

IL 153925 titled “SYSTEM AND METHOD FOR AUTOMATICALLY DETECTING NEUTRAL EXPRESSIONLESS FACES IN DIGITAL IMAGES” was first filed by IBM, was assigned to a company called IPO Healthcare based in Guernsey. It was transferred to a US law company called Bollinger Lane LLC in March 2010, and then on to Samsung Electronics later that year. In its peregrinations, the fact that the patent needed periodic renewal went amiss. It wasn’t docketed properly with Samsung’s renewal service.

Based on an affidavit from Samsung, it was determined that the patent going abandoned was unintentional, and the patent office has published a revival request for opposition purposes.

 

 

 


Orbotech Challenges Cost Ruling, but too Late

December 8, 2014

missed opportunity

Back on 9th November 2014, I reported that after finally ruling on the Camtek – Orbotech patent Opposition, the Israel Patent Office ruled very large costs to Adi Levit, mostly because he’d detailed his cost calculation and it was unchallenged by Orbotech who’d lost the case.

Camtek requested 302,895 Shekels costs (including VAT).  The request for costs were supported by an affidavit from Camtek’s IP manager Michael Lev. The sum includes legal fees of 288,687 Shekels to outside counsel, Adi Levit, 8208 Shekels to the witness Mr Golan, and 6000 Shekels for intermediate costs awarded. All cost requests were supported by documentary evidence such as invoices from outside counsel and salary slips from the witness. Orbotech, represented by Reuven Borchowski, did not counter the request for costs.

In her ruling, Ms Jacqueline Bracha reviewed the intermediate costs to see whether they were affected by the final decision and came to the conclusion that where she had ruled that the costs were incurred by Opposer unnecessarily, they should be discounted.  The costs awarded were 296,895 Shekels.

Apparently, on the day that the cost ruling issued, Orbotech requested that the ruling be canceled, arguing that because of industrial action in the courts, they were unable to respond on the last day as they had intended.

Camtek responded that they could have filed a notice of intent to challenge, the court strike was actually the day after, and a response could have been submitted despite the strike. They requested that Orbotech’s lawyer file an affidavit testifying to why he was unable to respond, and to be prepared to be cross-examined on it.

Ms Bracha decided that the ruling was given fairly and there was no reason to cancel it. The issue was not whether Reuven Borchovsky, attorney for Orbotech had intended filing a response, but whether there were counter-arguments on file when she made her ruling. As there weren’t, she was entitled to simply check the calculation submitted by Adv. Levit. Consequently, she saw no reason to cancel her decision to award the actual legal costs + witness fee – intermediate costs that were unnecessary.


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