Cancellation Proceedings Against an Israel Patent for a Modular Support Bracket

Figs for ACMoshe Lavi registered Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET”. A competitor, Zach Oz Air Conditioning LTD and Zach Raz filed to have the patent cancelled on grounds of invalidity. They seem to have botched the attempt, but I think that this ruling is a poor one.

Background

In the past, Lavi has tried enforcing the patent against Zach Oz Air Conditioning LTD. (Back then, around 2004, I was engaged as an expert witness by Counsel of the Defence, Soroker Agmon. In my Expert Opinion, I argued what is known as ‘the Gilette Defense’ stating that the correct interpretation of the claims was much narrower than that which Lavi and his lawyers Pearl Cohen Zedek Latzer Bratz (Pearl-Cohen) was using and Zach Oz’ support bracket was not infringing. Furthermore, if one considered that Zach Oz’ brackets were within the ambit of the claims, the patent would not have issued in the light of the myriad of prior art shelf support brackets.  On the day of the trial, Lavi dropped the charges and Zach Oz agreed not to infringe the patent.

It was not the first time that Pearl-Cohen have tried to assert a patent against a competitor that was not infringing. They tried this in the US on behalf of Source Vagabond against Hydropak. In that instance, the New York District Court fined Pearl-Cohen and the lawyers actively handling the case $187,308.65. That ruling was then Appealed to and upheld by the Federal Circuit Court of Appeals).

Frustrated by repeated bullying by Moshe Lavi and Pearl-Cohen, Zach Oz filed a cancellation proceeding against the Israel patent. Confusingly, their Attorney is called Pearl. It is not Zeev Pearl, but another practitioner.

Pearl-Cohen submitted a rather ambitious attempt to have the case thrown out as Zach Oz had not argued invalidity when accused of infringing, and Pearl-Cohen argued that this was a sort of in absentia estoppel since they could have raised the argument back then, and didn’t. The Commissioner threw that argument out, and allowed the cancellation proceeding to proceed.

The cancellation proceeding has now run its course and the following article reports on the decision.

IL 157035 was submitted on 21 July 2003, and, after allowance, published for opposition purposes on 11 February 2007. As no Oppositions were filed, the patent issued on 6 November 2007.

On 1 April 2014, Zach Oz Air Conditioning Ltd and Zach Raz submitted a cancellation request. After the parties finished filing their statements of case and evidence, a hearing was held on 24 May 2016. Following the hearing, on 28 July 2016 Zach Oz filed their summary statement, on 25 October 2016, the patentee filed their summary statement, and Zach Oz filed their response on 13 December 2016.

The parties had conducted a legal proceedings in the Tel Aviv District Court, 47000-02-12 Moshe Lavi vs Zach Oz Air conditioning Ltd, 5 December 2012, which related to the charges of patent infringement. This court case finished with a compromise settlement that received court endorsement, under which Zach Oz undertook not to infringe the patent. On the basis of this, the Patentee tried to have the cancellation proceedings thrown out claiming that there was a court ruling, but the Commissioner rejected this on 22 February 2015.

The Patent claims a modular frame for supporting the condenser of a distributed air-conditioning system, and enables a single support frame to be used for different compressors. The frame includes at least two U or L shaped elements with a superfluity of holes that enable the distance between the elements to be adjusted. This enables conforming the support to different compressor units without cutting or welding to change the separation between the elements.

Claim 1 states:

“A modular bracket for an air conditioner compressor, said bracket comprising a substantially rectangular frame composed of at least two portions, being “U” or “L” shaped provided with surplus holes allowing adjustment to suit the thickness of an air-conditioning compressor to be seated thereon, at least one further structure being attachable to said rectangular frame to provide support thereto.”

omnibus.jpgThe patent includes 5 further claims that are dependent on claim 1. Claims 2-4 relate to the further structure mentioned in claim 1 that allows the frame to be attached to different surfaces such as horizontal walls and vertical surfaces [sic]. Claim 5 claims that the frame consists of four elements wherein at least two have a superfluity of holes. Claim 6 claims using fasteners to attach the frame. Claim 7 is an omnibus claim that is dependent on any of claims 1-6 with reference to the figures.

The nature of the invention is clearest from the figures where:

  • Fig. 1 shows the frame with the two elements 10 and the superfluity of holes 30
  • Fig. 2 shows the frame from above
  • Fig. 3 shows a section through the frame attached to a wall using fasteners
  • Fig. 4 shows a section of the frame attached from below
  • Fig. 5 shows the frame from above with the two elements connected together
  • Fig. 6 shows a section along the line A-A of Fig. 5

Figs for AC

The Claims and Evidence of the Parties

The Applicants for cancellation filed affidavits of Mr Zach Raz and of a metal worker – Mr Yosef Levy, One by Mr Grisha Adler, an air-conditioner installer. In addition they filed an Expert Opinion by a Patent Attorney called Dr Iris Jamal Marar. The patentee filed an Affidavit by Mr Moshe Lavi and an opinion by Dr Ofer Alon, an expert in air-conditioning installation [MF – I find myself wondering if Dr Alon’s PhD thesis is on air-conditioning support brackets].

Oz Zach submitted the following publications as evidence of lack of novelty/inventive step:

  • JP 9-257277
  • JP 9-236287
  • IT 1515393
  • US 5,636,816
  • US Des 267,699
  • US 3,495,794
  • US 4,817,907
  • CA 1,228,780

During the hearing which was held on 24 May 2016, Dr Alon, Mr Levy and Mr Adler were cross-examined. However the Applicants for Cancellation withdrew Zach Oz’ Affidavit and the Patentees withdrew Mr Lavi’s statement and its appendices. The Patentees did not cross-examine Dr Iris Dejmal Mahrer, but said that this did not weaken their claims with regard to the minimal weight it should be given.

Since Zach Oz’ withdrawn Affidavit introduced and related to the prior art, this somewhat undermined their case. However, the Statement of Case of the Applicants for Cancellation was originally submitted as an appendix to Dr Alon’s expert opinion and both sides related to these documents, they were considered part of the file wrapper.

The Statement of Case of the Requester for Cancellation

The Applicants for Cancellation claim that similar and identical support structures to that claimed were manufactured and sold in Israel before the priority date. Furthermore, their expert witness Dr Alon claimed to have been exposed to the Claimed invention before the priority date.

The Applicants for Cancellation claimed that the ‘277, ‘287 and ‘393 documents show all the elements of claim 1 and relate to adjustable support structures for compressor units where elongated slots in the adjustable support structures correspond to the superfluity of holes recited in claim 1.

Furthermore, combining the ‘277, ‘287 and ‘393 documents  with the ‘816, ‘699, ‘794, ‘907 and ‘780 publications which all show an adjustment means based on a superfluity of holes as recited in claim 1 would cause persons of the art to arrive at the claimed invention.

The Applicants for Cancellation alleged that the patentee were not successful in showing the claimed advantage of the superfluity of holes as recited in claim 1 over the elongated slots of the prior art adjustable support structures.

The Statement of Case of the Patentee

The Patentee claimed that the Applicant for Cancellation was estopped from claiming that the patent was invalid since they had their day in court when they were sued for infringement, and had not raised the invalidity claim in the infringement proceeding.

The Patentee further argued that in the compromise that was endorsed by the court, the Applicant for Cancellation undertook not to infringe which was effectively an acknowledgement of validity. Furthermore, the mere challenge to the validity is a breach of contract evidencing inequitable behavior.

As far as the claims of invalidity were concerned, the Patentee alleges that the claims relate to a modular adjustable support structure for compressor units that does not require the compressor unit itself to be bolted. They alleged that this property is not possible with the prior art with omega or U shaped cross-sections of the supports, without bolting the compressor through its case. The present invention supports the compressor unit in a clever cage, and the U or L elements mentioned refer to the shape of the support, not to the section (profile) of the extrusions used for their fabrication.

The patentee claims that in contradistinction to claim 1, the prior art systems required additional fixing with bolts, rods, etc. to attach the compressor to the frame. Furthermore, the prior art used long tracks instead of the superfluity of holes. The solution claimed is faster to assemble than the previous solutions, and unlike the prior art, does not require additional strengthening supports to the frame.

Furthermore, two of the citations brought by the Applicant for Cancellation were directed to systems for attaching lightweight units to sloping roofs whereas the claimed system is appropriate for all types of roofs.

Finally, the Patentee claims that the warm reception and commercial success of their product provides evidence that their system included an inventive step.

The Ruling

Before relating to the main issue, the Commissioner related to the allegation that the court had already ruled on this issue. He noted that on 22 February he rejected the request to throw the Request for Cancellation out. The Commissioner ruled that the cancellation proceedings served the public interest of removing invalid patents from the register, and did not consider the circumstances of the present case to be such that the challengers should be prevented from stating their case. Furthermore, the Court had not addressed the issue of the validity of the patent, so there was not positive court ruling on this issue. The Commissioner considers that his reasons for allowing the case to move forward are equally valid now, and it is correct to consider the validity or otherwise of the patent.

In fact the parties have not developed their arguments since the preliminary request to throw the case out. The Patentee referred to Civil Action 2853/84 Monsanto Co. vs. The Gashuri Industrial and Laboratory Company (1) 441 Page 459 where the Court preferred finality res juricata to the purity of the register:

The legal situation is such that the judicial literature sometimes prefers res juricata and sometimes prefers the purity of the patent register and court rulings are pushed to one side. I have to consider agreements in general and court endorsed agreements in particular, avoiding unnecessary litigation and conserving judicial resources vs. the important [quasi]property rights that patents provide, which, in a nutshell, is that invalid patents should not be an obstacle to the public, that undeserving patentees should not be granted a monopoly and others should not be restricted in what they can do. 

In that instance the Court had to reassess infringement of the same parties that had reached a settlement that was endorsed by the same court and ruled  (page 461):

The Monsanto company have derived a res juricata argument and we have already ruled that the claimed right is the basis for the claim. As to res juricata, the meaning of the right is wide and it is improper to cause the parties to fight many different court cases over the same matter. Defendant 1, agrees that Monsanto has a claim, but that this is included in the compromise reached. This teaches that the plaintiff recognizes the respondents rights but prevents them from pursuing them. This is a narrow right (right stricto sensu) that means that I am able to claims that someone else will do something for me, or will avoid something for my sake, that I have the right to prevent him from doing. 

There is no argument that the Commissioner should consider specific estoppels and laches where appropriate to do so. (Compare ruling re Israel TM 203468 Yehuda Goita vs. Northern Delicatessen ltd., 13 December 2016. However, when considering  res juricata one has to balance this with the Commissioner’s interest in the registers being correct.

In this instance, the court did not positively relate to the issue of the validity of the patent. The Patentee wants to deduce that there is an implicit assumption of validity that estoppels the issue being addressed. However, the decision was merely a court rubber stamping an out-of-court settlement, which, in the Monsanto case is considered as being a narrow right, whereas the Commissioner’s responsibility for the purity of the register is much broader.

The Commissioner does not think that one can rule estoppels from cases where patentability wasn’t discussed. This does not serve the purpose behind res juricata which is intended to serve the interest of the court, that of the public and that of the parties themselves:

The general basis for the principle of res juricata is that of finality of the proceeding which is needed for two reasons, where the public interest is common to both. One interest is to reduce the workload of the courts and to protect the value of the courts which would be undermined if parties could simply go back again and again to the court room until they achieve their aims. The second interest is that of the parties themselves who have a certain interest not to have to fight the same court case a second time, so that they don’t have to save their evidence and to prepare for further court cases requiring investment of significant resources for fighting an identical case to that previously ruled on. See Zelzman “Court Rulings in Civil Matters, 1991 pages 12-15, and Appeal 487/04 Motti Gora vs. National Bank of Israel, 8 September 2005, paragraph 7. 

This principle of not applying an estoppel in this case is strengthened by the consideration that the parties have switched in that the patentee over the infringement suite is now the defendant of the Cancellation Proceeding. As Zelzman explains in “Court Rulings in Civil Matters, 1991 pages 44-45, where the parties are switched, generally issue estoppels are not applied.

“Issue estoppels are generally not a barrier to filing a complaint where the defendant becomes the plaintiff, since the proceedings, though they may be similar in terms of the facts under consideration, are not identical due to the exchange in parties. Only the plaintiff of an earlier case is estoppeled by the ruling and not other parties.

As a rule, an earlier judgement reduces the seriousness of a matter since one can avoid redebating matters that were ruled in the first trial. But the principle of a court having ruled (issue estoppel) is only applied to cases that have the same complaints as those considered in the earlier trial, where actively determined and were necessary to reach a ruling, and there is nothing to prevent a defendant from initiating a further proceeding and raising arguments that, as a defendant, he could not raise in the first proceeding.”

In addition to the issue estoppel, the patentee claims that filing a cancellation proceedings is a breach of the contractual relationship established by the out of court settlement and is a kind of “licensee estoppel” whereby a patent licensee is not allowed to challenge the validity of the patent. In this matter, it is adequate to note that in the US, the public interest that invalid patents should be cancelled is considered adequate justification to allow a licensee to challenge the validity unless he explicitly contractually engages not to do so – see re Lear vs. Adkins, 395 US 653 (1969) 670-671:

Surely the equities of the licensor do not weigh very heavily when they are balanced against the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor’s discovery. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification. We think it plain that the technical requirements of contract doctrine must give way before the demands of the public interest in the typical situation involving the negotiation of a license after a patent has issued. ”

Also in later rulings, such as ((MedImmune v. Genentech, 549 U.S. 118 (2007), licensee estoppels are rejected in favour of addressing validity issues. Indeed, the Federal Circuit Court of Appeals ruled on this matter recently in Dot Hill Systems Corp. v. Crossroads Systems, IPR2015-00822 (2015)).

These US rulings were given in cases where the parties had an agreement that the licensee benefited from. The way that the agreement came into being was central to the ruling on whether or not to accept the concept of licensee estoppel. The Commissioner sees this US law as applicable here. The out-of-court settlement did not include a license and there is no ongoing contractual relationship that the parties are arguing over. To the extent that there are contractual obligations at all, they are secondary to the interest of the purity of the register.

The Commissioner thus rejects the claim that the Applicant for Cancellation is prohibited from challenging the validity of the patent.

The Cancellation Request

Section 73b of the Israel Patent Law 1967 states:

The Registrar may, on application by any person who is not the patent holder, cancel a patent, if he found that there are grounds on which it was possible to oppose granting the patent; the Laws of prescription shall not apply on an application for cancellation under this section.

The burden of proof

The burden of proof in cancellation proceedings lies with the Requester for Cancellation, as ruled, for example, in Appeal 8802/06 Unipharm ltd vs. Smithkline Beecham LLC (18 May 2011) page 15:

Section 37 of the patent law completes this concept in ruling that “examination and issuance of a patent are not evidence that the patent is enforceable. The issuance of a patent by the Commissioner is not solid evidence that it is in effect, all it does is show that the Commissioner was of the opinion that he should grant it (Civil Appeal Hasam Reliable Defensive Systems ltd vs. Bahri, p.d. 45(5) 194, 201-202 (1991)). However, the burden of proof is on the shoulders of the challenger (665/84 Appeal Sanofi ltd vs. Unipharm ltd p.d. 41(4) 729, 736 (1987),; Appeal 700/78 Issco International Solar Energy Systems ltd. vs Banit p/d/ 34(1) 757, 763 (1979).

See also Cancellation request against IL 118898 Comforless ltd. vs. Mobidum ltd., 19 August 2008, section 38; cancellation proceedings re IL 148492 Mishkan Tchelet Industries vs. Keter Religious Accessories ltd 8 March 2009 paragraph 54.

The grounds for cancellation are those for opposing a patent that are listed in section 31 of the Law, and the main grounds are lack of novelty and / or Inventive Step at the priority date.

Novelty

Section 4 of the Israel Patent Law 1967 defines that Novelty is a lack of publicity regarding the invention, whether in Israel or abroad, whether by published description or by demonstration, prior to the date of reference:

An invention is deemed new if it was not published, in Israel or abroad, before the application date –
(1) by written, visual, audible or any other description, in a manner that enables a skilled person to make it according to the particulars of the description;
(2) by exploitation or exhibition, in a manner that enables a skilled person to make it according to the particulars thus made known.

To cancel the novelty of an invention, the prior art publication should describe the elements of the invention in a way that enables average persons of the art to implement the invention as claimed (See Appeal 345/87 Hughes Aircraft vs. State of Israel, p.d. (4) 45:

The first rule is that to prove novelty destroying prior publication one has to identify a single document that describes the invention in its entirely and it is not sufficient to create a mosaic of different documents to create a general picture.

Hughes also states that:

A general description is insufficient to remove novelty if it is not enabling and does not provide enough signposts leading to the invention of the patent.

The requirement to teach the whole invention is also explained in Appeal 4867/92 Sanitovsky vs. Tams ltd et al, p.d. 50(2), 509:

On one hand, the defense of a patent includes not just that described in the claims, but also the core of the invention [MF – what the British case-law refers to as the pith and marrow in a somewhat odd mixed metaphor] (section 49). On the other hand one can claim a lack of novelty when accused of infringement (section 4) not just when a piece of prior art describes all the elements of the invention, but also then the prior discloses the core of the invention.

The essence of the invention is that part that is central and essential to the workings of the invention in contradistinction to elements that can be substituted for or left out entirely. the main core will remain protected even if an essential element is switched for another that performs the identical function.
Page 515-516. [MF-this seems to be the so-called doctrine of equivalents].

See also Appeal 793/86 Michael Porat. vs. Z.M.L. Modern Medical Equipment, p.d. 44(4); 578 pages 583-584.

Claim 1 recited the following elements: an adjustable  frame consisting of at least two elements that have U or L shapes and have excess holes that enable adjustment.

The Applicant for Cancellation alleges that the claimed elements are described in the prioר art. The following briefly summarizes that taught by the citations:

The ‘277 Publication

277This relates to a “Fixture for Mounting Outdoor Apparatus of Air Conditioning Device on an Inclined Roof” and claims a support for an air-conditioning unit for installing on a sloping roof. As one can see from the figures thereof, the support is attached to the sloping roof by anchoring strips 1a and 1b which are joined together by four struts, any two of which are separated by angle theta. Anchoring strips 2 (connected to anchoring strips 1a) are slotted, thereby enabling strips 2 to be joined by strip 8. Strip 8 is adjustable with respect to strips 2 by moving the strips along the slots.

The ‘287 Publication

287.jpg

This is titled “Frame Apparatus for Placing Air Conditioner Outdoor Unit”, and claims a support for an air-conditioning unit for installing on sloping roofs. The sections include slotted strips with a pair of bars having short legs 3b and long legs 3a. The bars that connect the strips can be slid along the strips by movement in the slots.

‘393 Patent

393This is titled “Framework Installed to the Sloping Pitch of a Roof for Supporting Apparatus on a Level Surface” and claims a support structure for installing an air-conditioning unit on sloping roofs sich that the air-conditioning unit is horizontal. The claimed invention has anchoring strips that are connected to four bars (element 3) where the bars are slotted (part 8). Bars 8 are connected to the anchor strips.

In this instance, to accept a claim of lack of novelty, it is required that a single publication will teach all elements of an invention such that a person of the art will be able to accomplish it, which, according to Hughes should include the invention as claimed, or at least it’s essence as ruled in Sanitovsky.

It appears that not one of the publications cited achieves this. None of these citations have U or L shaped elements. The Applicant for cancellation’s allegation that ‘393 shows a U shaped element is not accepted since the Figures show that element 4 has an omega shaped section but is not bent into an omega (or L or U shape as claimed.

Another element NOT shown is the superfluity of holes, since the prior art uses slots. It thus seems that none of the publications teach the present invention or its essence.

The Applicant for Cancellation claims a lack of novelty based on exhibition prior to filing the application as testified by both Levy and Adler. These witnesses were cross-examined and it transpires that they had no evident to support their allegation – see page 14 lines 17-23 and page 16 lines 1-4 of the protocol. The witnesses claim that they were shown the support in the 1990s and at the turn of the millennium, which was 20 years ago. In the circumstances, the Commissioner did not think one could rely on witnesses memory without some support, particularly where one would assume that such supporting brackets would be installed somewhere and where the Applicant for Cancellation has to provide proof.

The Applicant for Cancellation also alleged that Dr Alon had seen the frame prior to the filing date of the application. However, review of the cross-examination protocol (page 56 lines 5-7) does not support this claim.

Dr Alon: I saw. I saw the galvanization process. I saw the type of material. I saw the drilling process and all sorts of carriers, but I cannot tell you if this is exactly what I saw or didn’t see on that visit.

From different answers from Dr Alon it is clear that one cannot rely on the memory of air-conditioning installers to establish prior use.

Thus the Applicant for Cancellation has been unsuccessful in showing prior use and thus has not demonstrated that the invention was anticipated.

Inventive Step

The second grounds for cancellation was a lack of inventive step contrary to Section 5 which states:

An inventive step is a step which does not, to an average skilled person, appear obvious in the light of information published before the application date in ways said in section 4.

 Unlike Novelty which requires a single document to teach an invention, an Inventive Step can be disqualified by a number of citations that provide a picture of what was known at the Application date:

The basic question of inventive step is determined by considering the total professional knowledge in the relevant field, and to do so it is legitimate to join different publications into a general picture Appeal 3314/77 [1] page 209. However, one must always bear in mind that the joining together of the disparate documents must be obvious to persons of the art at the date in question; for if it requires an inventiveness to do so, particularly where scattered crumbs of knowledge are gathered together – the general picture obtained is not obvious and one cannot say that the patent has no inventive step.” –page 111.

See also Sanitovsky pages 515-516 and Appeal 793/86 Michael Porat vs. Tzamal Modern Medical Equipment, p.d. 44(4) 578, 585.

Thus unlike novelty where a single document is required to teach an invention, as far as Inventive Step is concerned, one can combine disparate documents so long as it would have been obvious to an average person of the art to do so (page 11 of the ruling):

The question of inventive step is determined by comparison to professional knowledge in the relevant field by combining disparate references without forgetting that their combination has to, itself, be obvious, so that if it requires an inventive step to combine the publications, particularly where disparate elements are collected from all over the place, the picture is not obvious and one cannot state that the invention lacks an inventive step. 

Thus one has to consider whether persons of the art would have a motivation to combine the publications at the relevant date. See Opposition to IL 138347 Sarin Technologies ltd. vs. Ugi Technologies, 14 January 2008.

The US case-law developed a thumb rule for inventive step by combining publications or known elements under which one has to consider the teaching, suggestion or motivation to make the combination (see Section 51 of the ruling).

Further on (paragraph 51):

The Board of Appeals of the European Patent Office takes an approach known as the “could/would approach” to consider if a combination includes an inventive step. A combination of known elements is not considered obvious merely because a person of the art could have combined them, unless he would have been motivated to combine them to achieve some advantage.

The ‘699 and ‘816 publications were cited in the background as prior art. The Applicant for Cancellation alleges that combining 277 and ‘287 or ‘393 together with the ‘699 and ‘816 publications leads persons of the art to the claimed invention.

The ‘816 patent 

816This US patent, titled “Universal Air Conditioner Mounting Bracket and Method”claims a support for an air-conditioning unit in a window. The claimed support consists of three strips. An anchor strip 88 connected to the window sill, a second strip 22 with a superfluity of holes that supports air-conditioning unit and a third strip 24 that is attached to the wall. Changing the connection point between strips 22 and 24 enables adjusting the height of strip 22 over the window sill The support is as shown.

The ‘699 design

699This is an American design patent titled “Air Compressor Bracket” that shows a support shelf that is fabricated from two parts that are perforated with holes.

In their allegations and summary, the Applicants for Cancellation claim that they are combining citations referenced by the patentees in the specification. the burden of proof is on the Applicants for Cancellation, and their arguments do not show how the art is to be combined to teach the claimed invention.

Furthermore, the Commissioner accepts Dr Alon’s words regarding the relevance of the ‘699 and ‘816 publications. Dr Alon explained that the ‘816 is very different in many regards from the field of the claimed invention.  It is meant to support an air-conditioning unit and not the compressor of a split air-conditioning unit. It offers a temporary supporting solution for supporting in a window and not as a permanent fixture. It includes more elements than the present invention, it requires bolts to hold the airconditioning unit. The plurality of holes in the ‘816 publication is not to adjust the frame to the dimensions of the air-conditioning unit, but rather to attach the support to a window sill or lintel in a way that adjusts the angle to the wall. The Commissioner considers that a solution for a stand-alone unit is inherently different from one for a compressor of a split system.

These arguments distance the need to combine the ‘816 publication with other references. However, as Dr Alon testified (sections 44 and 45 of his opinion) no combination of cited elements teach U or L shaped elements that provide stability to a frame.

Similarly the ‘699 publication which the Applicants for Cancellation themselves admit is deficient in that it comprises a pair of large thick boards which was detrimental to its commercial success. This publication is far from the suggested solution. Studying the ‘699 publication makes it clear that it does not relate to a frame of bars and strips unlike the other publications and it is not clear that one learn anything from it regarding the present invention. It is unlikely that persons of the art would refer to it. It cannot be combined with the other publications to teach the invention.

The Applicant for Cancellation withdrew Moshe Zach’s affidavit. However, it remained appended to Dr Alon’s opinion. It is not clear that it has evidentiary weight but the Commissioner notes that he reviewed it anyway and does not find that it relates to the issues raised above even if one believes that having placed it of reference, the Commissioner is obliged to review it. Since Moshe Zach was not cross-examined on his statement, Dr Alon’s statement which was cross-examined, is preferable.

ALthough unnecessary to do so, the Commissioner relates to other combinations that Dr Marar suggests.  Even if one gives weight to her testimony, she relates only to lack of inventive step in light of the combination of ‘780 and ‘794 (apparently together with ‘277, 287 and ‘393). The patentee does not dispute that at the relevant date that holes in vertical struts were known to enable adjustment of height as described in 780 and ‘794 and ‘907. However the patentee pointed out that these publications do not relate to air-conditioning units. ‘794 relates to an adjustable stand for a riding toy that does include U and L shaped tubes but for providing vertical support for the toy and one cannot learn anything concerning the loads and requirements for an adjustable compressor unit. The ‘780 publication relates to a height adjustable crutch and is far from the present invention and does not teach the relevant components.
Consequently, the Commissioner finds that the Applicants for Cancellation have failed to establish that the patent does not include an inventive step.

Conclusion

The Cancellation proceeding is rejected and the patentee is invited to submit a request for costs under the provisions of the M.N. 80 circular.

Cancellation Proceeding against IL 157035 to Moshe Lavi, Ruling by Commissioner Kling, 5 March 2017.

Comment

To my mind, strips that are coupled by slots have a continuous range of adjustment sizes whereas a series of holes allows a number of discrete options over the same range. Where there is a direct force on a joint, such as in telescopic, adjustable crutches and Zimmer frames, one sacrifices the continuous adjustment for a range of discreet options, to provide extra stability. For supporting something light weight, such as manuscript music or a microphone, a continuous solution is preferable.

Substituting one for the other is well within the ability of persons of the art. Japanese published patent applications often show very minor inventions, but are not generally prosecuted to allowance and the Japanese don’t generally sue for infringement. I do not see the ‘277 and ‘287 publications as indicative of the type of invention that is patentable.

The Commissioner is correct that the ‘393 publication does not show U or L shaped struts, but elements 2+3 of the ‘277 publication is an L shape of variable angle theta, and elements 1 and 2 of the ‘287 publication are U shaped (inverted, and with legs of different lengths, but U shaped nevertheless. In other words, these publications have L and U shaped elements but are adapted for fixing to sloped roofs, where, for fixing to vertical wall, internal angle theta of the ‘277 publication would be 90 degrees and for fixing to a flat roof, rear leg 3b and front leg 4 of U shaped member 1 would be the same length. Thus, both Japanese publications show L and U shaped struts, just adjusted to sloping roofs – they both assume the claimed invention and improve upon it, using slots rather than series of holes for additional flexibility.

If, as I believe the intention is, the Applicant creates a frame that is adjustable by using L shaped members, the relevant prior art is probably the type of thing used to stretch canvasses.

However, as the patentees claimed various types of estoppel I think it is instructive to consider the statement of claim by the patentee that was filed in the Court in the infringement case, which explains why, to Moshe Lavi and his attorneys, Zach Oz was infringing the patent. An active claim construction made by the patentee in court should estoppel him.

Putting that to one side, I think that persons of the art looking to make a support structure where a set of discrete sizes is adequate, would naturally drill holes rather than fabricate slots, since drilling is easier than milling. The two options and their relative advantages and disadvantages are obvious. Unlike novelty which is an objective standard, inventive step is somewhat subjective. I do not think that a US examiner following John Deere, would consider that replacing a slot with a series of holes is inventive or non-obvious. It’s rather like using rivets instead of bolts. the advantages and disadvantages are well-known.

It is true that the preamble recites “A modular bracket for an air conditioner compressor” but in the US, the Examiner would not give this patentable weight. There is actually nothing in the claims that relates to the specific load or dimensions, and so I believe that any adjustable frame consisting of L or U shaped elements bolted together should be considered relevant prior art. Suddenly Meccano kits seem rather relevant.

Dr Iris Dejmal Mahrer is not a patent attorney I am familiar with, so I looked her up. It transpires that she has been licensed since 2014, i.e. when the Cancellation Proceedings was initiated. Now there is nothing wrong with the Challenger relying on a newly qualified Attorney. They are usually cheaper than more experienced (and dare I say more capable?) counsel. One of the reasons why my Opinion in the infringement case did not attack the validity of the patent was that the client did not want to authorize the time necessary to do a prior art search. There is a problem though. Dr Iris Dejmal Mahrer works for Pearl-Cohen! So maybe the idea of the same Pearl representing both parties is not out-of-synch with their understanding of conflicts after all.

I think the Applicant for Cancellation is correct that the patentee citing the ‘699 and ‘816 in the background creates an assumption of relevance of this prior art and so it is wholly legitimate to combine these citations with the 277 and ‘287 publications. Thus to my mind, the problem here is not so much the lack of evidence but is rather that the Applicant for Cancellation did a poor job in persuading the Commissioner.  In other words, the Applicant for Cancellation may have failed to explain how the 277 and ‘287 publications may be modified with the teaching of ‘816, to use a plurality of holes instead of a slot to couple the L and U shaped elements together. It is fairly obvious however. I don’t accept that the relevant art is compressor supports and not air-conditioning unit supports. Indeed, I could go further. Very many support brackets and shelving units have upright tracks with a plurality of holes or slots so that the separation of the shelves may be adjusted for different sized books.

The relevant art is actually bracket support systems. The fact that the load is an air-conditioning condenser is, to my mind, hardly relevant. Sure, a system that could not possibly be fabricated to support a compressor could be considered out of ambit. Although if prosecuting an Application and having nothing better to say I would try arguing with an Examiner that no air-conditioning installer would consider brackets designed for TV sets, bookshelves or other items, I would not expect such arguments to prevail.

It seems to me that this decision is wrong. Obviously what is mechanically obvious and what is pharmacologically obvious are not analogous and air-conditioning installers are not generally educated to the same standard as research chemists. Nevertheless, the standard of inventiveness for mechanical inventions seems to be much lower than for pharmaceuticals. I find this worrying.

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