Aminach is a large mattress manufacturer. They opposed a patent application No. 179840 filed by Moshe and Anat Gabai that allegedly reduced likelihood of Sudden Infant Death Syndrome (SIDS). Theyir invention was a foam mattress with holes punched out so that a face down child could not be suffocated by rebreathing trapped exhaled carbon dioxide.
The Israel Patent Office refused the patent by accepting Aminach’s submission that the mattress did not have proven efficacy. The Applicants appealed this ruling to the courts and the whole thing went to the Supreme Court and back down, and eventually the patent was registered but with a narrower claim set which specified that the the mattress may help in cases of SIDS attributable to rebreathing the same air.
Aminach, represented by Colb, filed for costs of 444,615.99 Shekels for all actions. As a fall-back position, they requested costs of 300,796.37 Shekels for the costs from when the Gabais appointed legal counsel, and as a further fall back position, costs of 113,841.36 Shekels from when the case was referred back to the Patent Office.
The Gabais, now represented by Glazberg, Applebaum & Co, opposed this. The courts decided not to rule costs and this was an active decision and not a lacuna and the issue was therefore moot. As to the patent office costs, the Gabais claimed that essentially they had won, and all Aminach had achieved was a claim narrowing. The Gabais alleged that the costs were incurred because Aminach and their lawyers had leveraged their greater resources.
The Gabais claimed that the costs were unnecessarily incurred. For example, Aminach did not need to compare their products with the patent claims. Aminach argued that where the courts had not ruled costs, they could be ruled, and where actual costs were considered excessive, the patent office could award what they considered to be reasonable.
Aminach were awarded 40,000 Shekels legal fees and 5,597 Shekels costs for the original opposition. They were awarded a further 20,000 Shekels by the District Court who upheld the Patent Office Decision and was not prepared to review additional experimental evidence. The Supreme Court didn’t award costs (arguably declined to do so), and nor did the District Court when ruling that the case should be returned to the patent office. This decision was also appealed to the Supreme Court as was a request to stay the ruling until the end of the process. No costs were awarded for this either.
The Deputy Commissioner then accepted new evidence and the Applicants corrected the specification. Costs of 5,500 Shekels were awarded to Aminach.
The Deputy Commissioner noted that all courts had addressed the costs issue, even if to rule that costs were not granted. She also noted that Section 162B of the Israel Patent Law 1967 only empowers the Patent Office to rule costs for proceedings before it. Unless the courts specifically delegate the awarding of costs to the Patent Office, it has no authority to rule costs for appeal proceedings before the courts. Further support for this was found in section 462 of the Civil Court Procedure and in the cost ruling regarding IL 165705 Israel Aircraft Industries vs. Rafael Advanced Warfare LTD, 12 July 2012. Furthermore, Circular MN 80 if these have already been awarded.
The only costs to be considered, therefore, are the costs related to the additional evidence submitted by each side after the Supreme Court ruling and the subsequent hearing including cross-examination of the expert witnesses and the correction to the specification for which costs were previously awarded.
The Deputy Commissioner then went through the various invoices and decided which ones related to the proceedings before her and concluded that costs of $21,864.55 were attributable to the proceedings before her. She also noted that the Gabais had chosen to cross-examine witnesses and submit evidence prior to narrowing the claim set which had incurred the costs.
I rather enjoyed this epic battle between the little inventor who was not represented, and an Israel corporation with expensive IP counsel. I suspect that the Israel Patent Profession as a whole found it quite entertaining. I was critical of the original patent office ruling to cancel the patent on appeal and do not think that the patentees can fairly be criticized for conducting tests and submitting and cross-examining expert witnesses, whether or not they could have reached a compromise with Aminach.
In awarding full actual costs for the proceedings before her, I feel that Deputy Commissioner is punishing the patentees for what was originally a poor decision by her. If the Supreme Court felt it could rule on the Appeal against the District Court’s ruling without awarding costs, we think that the patent office could have as well.
Although it is detailed and not obviously unreasonable, maybe the Gabbais and Glazberg will appeal the cost ruling anyway?
Obviously apparently healthy babies could die for a number of reasons, some of which doctors may not yet understand. Nevertheless, it would be interesting to see if baby mattresses with air holes become common place and if this has a statistically significant effect on SIDS which is very distressing for the families concerned.