Submitting Corresponding European File Wrapper In Israel Patent Opposition Rejected on Procedural Grounds but Decision Overturned by Court

August 18, 2014

tangled web

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 Appeal

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.

The Ruling

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.

COMMENTS

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.

Somewhat ironically, three days before this decision issued, Ms Shoshani -Caspi ruled against admitting evidence in a second opposition between the same parties!

 

 

 


Judge Randal Rader of the Court of Appeals of the US Federal Circuit Resigns as Chief Judge

May 27, 2014

 The following is largely cribbed from the IPKAT.

Chief Judge Randall R Rader of the US Court of Appeals for the Federal Circuit (CAFC) has resigned from his role as the head of the CAFC.  

On Friday, Chief Judge Rader wrote a letter to his 18 CAFC colleagues in which he stated:

“I have come to realize that I have engaged in conduct that crossed lines established for the purpose of maintaining a judicial process whose integrity must remain beyond question.  It is important to emphasize that I did not and would never compromise my impartiality in judging any case before me.  But avoiding even the appearance of partiality is a vital interest of our courts, and I compromised that interest by transgressing limits on judges’ interactions with attorneys who appear before the court.  I was inexcusably careless, and I sincerely apologize.”

This emphatic language was as a result of an email that, according to the Wall Street Journal, he had sent to Edward Reines at Weil, Gotshal & Manges LLP.  In this email Chief Judge Rader had reported a conversation that he had with another member of the court who had “praised the attorney’s performance” and also included the judge’s own praise.  Chief Judge Rader had also encouraged the recipient to show the email to others.  In retrospect, the judge recognized that the email constituted a beach of the ethical obligation not to lend the prestige of the judicial office to advance the private interests of others. 

Chief Judge Rader

In his letter the judge also referred to having to recuse himself from previous cases.  A few weeks ago, Chief Judge Rader recused himself from two cases in which Edward Reines was appearing– one for Microsoft and another for Medtronic.  The case concerning Microsoft brought by DataTern Inc was judged in favour of Microsoft and SAP.  Judge Rader wrote a dissenting opinion.  A month later, the CAFC reissued its decision, excluding Rader’s dissent and noting he had been recused from the case.  Whether these events are the main cause of his resignation can only be speculation. 

Chief Judge Rader has been on the court for almost 24 years, having been appointed by President George H. W. Bush way back in 1990.  He became Chief Judge in 2010.  His resignation will become effective on 30 May 2014, after which he will remain on the court as a circuit judge. Sharon Prost, who is part of the 18-judge court, will replace him as Chief Judge.   With a background in labour law, Judge Prost was appointed by Dubya in 2001.

COMMENT

Apart from finding his singing abilities short of his enthusiasm, I have only the best to day about Judge Rader. His decisions are well thought out and well written, and he is a charming fellow.

I’ve noted at IP events in Israel where Marshal Phelps had spoken on a case where Rader had an interest, he was quick to leave the room.

Coming from the UK, I expect a person in authority to resign for misappropriate behaviour that might tarnish the office. Unfortunately, this happens less rarely in Israel, where ministers and others hand on to power until they lose in court. The Israeli courts are also seen as politically aligned and less than impartial. In the past, a head of the Jewish Agency, Simcha Dinitz,was found to have used a Jewish Agency credit card for private purchases. The defense that he’d made a genuine mistake was accepted. Things have got better though. A former president is in prison and a former prime minister has been sentenced for corruption. Corruption always exists and the question is how a society deals with it. Rader’s behaviour is honorable. It is a great shame.


Hillel House Hosting BDS Event – trademark implications

February 23, 2014

Hillel's sandwichHillel

Last Friday’s Jerusalem Post had an article concerning a Hillel House hosting a speaker calling for boycotting Israeli goods and divesting, due to the plight of the Palestinians.

Essentially, Swarthmore College’s Hillel House passed a policy stating that they would allow and sponsor any and all organizations and people be they “Zionist, anti-Zionist, post-Zionist, or non-Zionist”. See here. They now intend inviting a speaker who is calling on BDS – boycotting, Divesting and calling on sanctions against Israel because of the Palestinian Issue.

Hillel International has called on Swarthmore College’s Hillel House not to host the event under the auspices of Hillel.

Obviously the issue raises questions of freedom of speech, Antisemitism, anti-Zionism and racism.  It occurred to me that there are also trademark issues involved. A quick look at the USPTO trademark register shows that B’nai B’rith DBA B’nai B’rith International CORPORATION D.C. 2020 K Street, N.W. 7th Floor Washington D.C. 20006 has a trademark for Hillel. See here. (There is also a delightful trademark registration for Hillel’s Angels, for an Association of Motorcyclists, primarily of the Jewish faith that was filed by Wyckoff/Franklin Lakes Synagogue of NEW JERSEY, which has unfortunately, been allowed to lapse).

If Swarthmore College’s Hillel House is affiliated to B’nai B’rith International, presumably the umbrella organization can define what type of events and speakers are kosher.

Hillel International’s policy states:

Hillel will not partner with, house, or host organizations, groups, or speakers that as a matter of policy or practice: 
• Deny the right of Israel to exist as a Jewish and democratic state with secure and recognized borders; 
• Delegitimize, demonize, or apply a double standard to Israel;
• Support boycott of, divestment from, or sanctions against the State of Israel; or 
• Exhibit a pattern of disruptive behavior toward campus events or guest speakers or foster an atmosphere of incivility.

Presumably Hillel International can force Swarthmore College’s Hillel House to abide by the policy or not to use the name Hillel.

Compared to friends at City University, South Bank Poly (University of Greenwich) and elsewhere, I was fortunate to do my undergraduate studies at Imperial College, then a relatively non-political campus. We did have some trouble with the Just Peace in The Middle East Society, the Socialist Workers, and others, but mostly things were calm. In my first year, I ran for the post of religious affairs officer of the Student Union, and, in addition to the Jewish Society, garnered support from the Christian, Moslems and atheist (Huxley) societies, although lost to a candidate supported by the political societies, the largest of which, ConSoc, was the Conservative Society.

Students tend to be political animals, generally irresponsible and immature. I certainly got up to a couple of stunts that with the benefit of hindsight, would consider irresponsible.

I see Swarthmore Hillel’s position as fairly reprehensible.   Since Israel is anyway engaging with the Palestinian leadership, the timing of this is also unfortunate. A Hillel House should try to cater to the Jewish student mainstream. It should be inclusive. I think food should be Kosher. There should be a mehitza for prayers, but it should be minimalist. Let everyone be made welcome. I don’t think that a Hillel House should invite a disciple of Meir Kahanne or a Far Left speaker. I do think that a calm and reasoned debate on settlement and security, democracy and Palestinian self-determination is valuable, but note that it doesn’t happen in Israel, so why should it happen in the US? In general, I think that there are more than enough non-Jewish organizations that are vehemently anti-Israel, without Jewish student organizations joining the bandwagon. 

If any students of Swarthmore College (or any Jewish students studying anywhere) are interested in seeing a West Bank settlement and talking to the residents, I’d be happy to host them.


Super Dooper Patent Prosecution Highway

January 5, 2014

test pilot

Israel and 17 other examining authorities have now set up a Global Patent Prosecution Highway.

The 17 offices involved in the GPPH pilot are IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Hungarian intellectual property office (HIPO), Icelandic Patent Office (ELS), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), National Board of Patents and Registration of Finland (NBPR), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish patent and registration office (PRV), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO). 

An application first examined in one, may, if at least one claim is found to be novel and inventive, be used to accelerate Examination in other pilot jurisdictions.

COMMENT

I suspect that with just about everything being fast-tracked, the system will probably break down. One wonders if a pile up on the Worldwide Superhighway could result in everything grinding to a halt. Still, there are no human test pilots, so no harm done.

The PCT, was, of course, supposed to achieve this. If, instead of ignoring PCT search reports, the various national phase jurisdictions would consider their findings, I suspect that backlogs could have been dealt with years ago.


USPTO offering reduced price searches for PCT applications filed by small and micro-entities

December 22, 2013

pct-monster

As of 1 January 2013, the USPTO will be offering reduced price searches for PCT applications filed by small and micro-entities. The cost of the International Search Report will be  $2080 for regular entities, $1040 for small entities and $520 for micro-entities.

The current fee charged by the Israel Patent Office for International Search Reports is NIS 3500 which is currently slightly less than the US fee for small entities, but the dollar is sliding against the Shekel and the Israel patent office traditional updates its fees on 1st January and on 1st June so the fee for regular entities is cheaper in Israel, for small entities is the same in both jurisdictions and for micro-entities is cheaper in the United States. It is not unlikely that the Israel Patent Office and other patent offices will also offer a ISR fees on a sliding scale.

Note: the choice of examination authority can effect using the patent processing highway (PPH) and also the cost of national phase entry in both Israel and the US, so it is advised to consult with a competent patent attorney before first filing a provisional or regular application in the US or a regular filing in Israel,  and which route to take for the PCT, or indeed, whether to use the PCT system at all.

 

 

 


USPTO Enters the 21st Century

September 2, 2013

pdf

Having criticized the Israel Patent Office for not updating their web-based services and given the USPTO as an example where one can make on line payments that are registered in the system without requiring printing out and submitting on flexible, cellulose based media, it has come to my attention that the USPTO now even allows patent downloads a PDFs!

Until now, one could print individual pages as TIFF files if one has a TIFF reader. Most people don’t. Patent Attorneys who sometimes do, having followed USPTO instructions for downloading a free TIFF reader, often still run into problems. Clients typically download patents as text from the USPTO and the ask me where they can obtain the figures from. Apart from paid services like Delphion, I usually go to Espacenet, but in many regards the USPTO website is more user-friendly.

BTW – I read up this exciting development on Lotempio.

 

 

 


Given Imaging Loses in Prosecution, on Appeal to Board of Appeals, and then Again at United States Court of Appeals Federal Circuit

July 22, 2013

bitter pill

Given Imaging is an Israeli technology company that has developed a camera on pill. Essentially, the patient swallows the camera which images the digestive tract as it passes through, prior to being excreted.

Given Imaging filed a patent application number 10/097,096.  The pending claims of which, Nos. 57, 59, 61, 63-67 and 71 were rejected as obvious in light of the combination of WO 00/22975 to Meron (an earlier PCT application filed by Given Imaging) in view of Masaru Hitata et al. Study of New Prognosis Factors of Esophageal Variceal Rupture By Use of Image Processing with a Video Endoscope.

Essentially, the Meron publication teaches  a capsule that moves through the gastrointestinal tract in order to map the tract. Although the capsule could include a blood determining sensor, it is not specifically disclose this. Hirata does, however teach a study of factors of aesophageal variceal rupture by use of imaging with a video endoscope, teaching red colour tone and red colour signs as indicative of bleeding.  The Examiner considered it obvious to combine the two teachings.

The Applicant, represented by Pearl Cohen-Zedek Latzer (PCZL) appealed the obviousness ruling to the Board of Appeals which affirmed the Examiner’s findings. Undeterred, Pearl Cohen Zedek Latzer (PCZL) appealed to the United States Court of Appeals Federal Circuit. PCZL, represented by Guy Yonai, argued that the Appeal Board did not appreciate that a comparison was made between different redness shades and claimed that the Board relied on new grounds for opposition and should therefore, have reopened prosecution.

After acknowledging that they had jurisdiction to hear the appeal, the CAFC repeated that the obviousness determination is a legal determination, citing KSR vs. Teleflex, Proctor & Gamble vs. Teva, Graham vs. John Deere. The Court ruled that where the Board relies upon a new ground of rejection not relied upon by the Examiner, the applicant is indeed entitled to reopen prosecution or to request a rehearing. However, in this case, the Applicant was mischaracterizing the examiner’s grounds of rejection, and neither points to specific facts found by the board but not found by the Examiner, nor illustrates how any such facts formed the basis of the Board’s rejection. In fact, the Examiner relied on Hirata’s disclosure of both the red color sign and the red color tone, not just stating its use of the color sign classification.

The FCAC ruled that whereas the boards’ explanation may go into more detail than the examiner’s, that does not amount to new ground of rejection. See In re Jung 637 F,3d 1356, 1365 (Fed. Cir. 2011).

In Conclusion: Because the Board did not err in rejecting the pending claims as obvious over Meron in View of Hirata and did not rely on new grounds for rejection, the Board is affirmed.

In re Adler, Appeal No. 12-1610 (Fed. Cir. 2013)

COMMENTS

I understand that swallowing a pill camera is not pleasant, but compares favorably with fiber-endoscopy. As the examiner, the board of appeals and the Court of Appeal Federal Circuit all found the claimed invention obvious, and it is, after all, merely a combination of two prior art citations, we think that it is indeed obvious.

The first appeals board is the patents appeals board or PTAB, a body of administrative judges specializing in patents and patent prosecution. In 99% of cases, their findings are final. In more than a third of the cases brought before PTAB, there is reversal in part of the Examiner’s finding. In this case however, they essentially accepted the Examiner’s version and even added some of their own interpretation as to why the Examiner was right in the rejection. What PCZL failed to recognize was that the PTAB was sending a message to Given Imaging saying “not just that we think the Examiner was right, but he was being easy on you and moreover, we think that based on the two references cited, the invention is obvious because of these ADDITIONAL reasons.” PCZL mistook “additional” for “different” which the CAFC denied on appeal while scolding PCZL (pages 8-10) for doing a bad job on appeal. Of course, PCZL could now try taking the case to the US Supreme Court, but it is unlikely that they will agree to hear the case.

I find it difficult to understand PCZL’s strategy here. The essential argument is whether redness in the gut that is comparable to redness caused by bleeding is an indication of bleeding. I find it difficult to rationalize why that shouldn’t be so.

Patently-O wrote up the case here: Federal Circuit Deciding USPTO Procedure: New Grounds for Rejection

The original decision is here: 12-1610.opinion.7-15-2013.1

Another lawsuit filed by PCZL on behalf of an Israeli Company may be found here 


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