Israel Patent Application No. “181562” to Hanita is titled “High Performance End Mill” The patent claims:
High Performance end mill comprising a shank portion and at least one cutting portion divided into a plurality of teeth by flutes disposed between said teeth at the cutter extremity and a gash cut profile wherein the maximum axial depth of said gash out measured in the direction parallel to the cutter extremity each having a cutting edge extending outwardly from the center of the tool’s extremity in a positive direction.
In May 2013, Hanita sued Iscar for infringing the patent in the Nazareth District Court before Judge Arafat Taha. Iscar attempted to have the patent revoked before the Patent Office, but a settlement was mediated and the request was withdrawn.
On 3 September 2013 the Tel Aviv District Court rejected Hanita Metal Factory’s patent infringement and passing off claims against Iscar. The District Court understood that the claims recites three components and that Iscar’s device does not include the second component and that this is sufficient reason to throw out the infringement ruling.
Nevertheless and beyond that necessary, the District Court further considered other claims of the parties and also concluded that Iscar’s product included the third component (the parties concurred that it included the first component). It also ruled that the claim was void since the components were not new, and nor was the combination, and awarded costs of 50,000 Shekels to Iscar.
Hanita appealed this ruling and challenged the way the claim was construed by the District Court. In this Appeal, Hanita has petitioned the Supreme Court to find the patent both valid and infringed.
Counter – Appeal
Iscar has filed a counter-appeal against the finding that their product was within the ambit of the third component.
Request to have the Counter-Appeal thrown out
Hanita then requested that Iscar’s counter-appeal be struck out on the grounds that it did not create any operative results with respect to the findings of the Court of First Instance. Iscar challenges the attempt to cancel the Appeal and argues that canceling the finding that their product is in the ambit of the third component has operative consequences since if the Court of Appeal accepts Hanita’s Appeal without considering the counter-claims if could conclude that Iscar’s product infringes Hanita’s patent to the detriment of Iscar, whereas if they accept the counter-appeal that the product does not include the third component, then even if it concludes that the second component is present and that the claim is valid, the charge of infringement would be dropped.
Judge Gilad Lubinsky Ziv ruled that the request to have the Counter-Appeal thrown out should be accepted.
The basis for his ruling is that the condition for filing an appeal or a counter-appeal is that the Appellant is harmed by the ruling and requires an operative change. In other words – one can only appeal if the right sought was not granted by the Court of First Instance or was only partially granted, or that a right sought against the Appellant was granted or partially granted. See Zussman Civil Procedure p. 805 7th edition ed. Levin, 1995). Appeal 1946/01 The Fund for Confidential Trial vs. the Administrator General, p.d. 56(3) 311, 315-316, Civil Ruling 2734/09 Piutrakowsky vs. Arnon (20 June 2010), where the Appeal against that ruling was rejected by Judge N. Hendel on 9 January 2011 in Appeal to Supreme Court 6753/10). Whilst it is true that Regulation 434 of the Regulations Governing Civil Procedure 1984 explicitly allows that a counter-Appeal can be filed if the Respondent wishes to allege that “the Decision of the Court of First Instance requires changing…” the intention is a change in the result that the court has reached (See Appeal 1560/06 Levy vs. Shkalim 17 April 2007).
In this instance, the Appellant claims were rejected in full by the Court of First Instance and it is clear that the Counter-Appellant (respondent) does not want to change the OPERATIVE ruling and cannot be considered “hurt” by it. So even if one were to accept the Iscar’s reservation about their product including the third component, changing this has no operative effect (in isolation of the main Appeal by Hanita) on the ruling of the Court of First Instance which dismissed all charges. Consequently, Iscar is not allowed to appeal the ruling. Indeed Iscar themselves note that the practical consequence of their counter-appeal is only if Hanita’s appeal is accepted, and this is insufficient to grant the right of appeal, since it is clear that one cannot base the right of appeal (whether as main appellant or counter-appellant on a “what if” “scenario regarding whether the opposing party will appeal or not.
This conclusion does not leave the Appellant without course of action, since the arguments regarding the inclusion of the third element can be raised in the response to Hanita’s Appeal, but an Appellant has to request an operative change for their appeal to be considered. See Levy, Appeal 4691/91 Israel vs. Ozen p.d. 45(5) 695, 699 H. ben Nun and T. Chavkin Civil Appeals p. 408 (4rd Edition 2012, Zussman p. 840-841, and The Fund for Confidential Trial vs. the Administrator General p. 315. Thus contrary to Iscar’s assertion, there is nothing to prevent them claiming in their defense in the Appeal, that their product does not include the third component either, and can thus fight to have the decision of non-enforcement upheld for different reasons to that ruled by the District Court.
Iscar’s Counter Appeal is refused and Iscar is obliged to pay 4000 Shekels costs to Hanita.
Ruling of 15 January 2018 by Judge Ligad Lubinsky Ziv Concerning Iscar’s Counter Appeal against Hanita
Iscar is taking no chances. When Israel Patent Application No. 177336 to Hanita titled “Chatter resistant end mill” was allowed, Iscar opposes it on grounds of lack of novelty, lack of inventive step, and insufficient disclosure as required by Sections 4, 5 and 13 respectively. In that case, the previous commissioner Adv. Kling ruled that the main claim was not-inventive and is not adequately supported. The Opposition was accepted and IL 177336 was rejected.