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.