Unipharm Successfully Opposes Novartis Patent for Panobinostat Lactate Salts

March 26, 2017

PanobinostatThis ruling relates to an opposition against a patent application by Novartis for Panobinostat  which is a hydroxamic acid  that acts as a non-selective histone deacetylase inhibitor (pan-HDAC inhibitor).  On 23 February 2015 the drug received FDA accelerated approval for use in patients with multiple malignancies, and on 28 August 2015 it was approved by the European Medicines Agency for the same use.

The Opposer claimed that the drug was described in the Applicant’s earlier published PCT application and was thus both anticipated (known) and obvious. The Commissioner rejected the anticipation claim but accepted that in light of the earlier publication, it was obvious and lacked an inventive step.

Due to the ruling being rather interesting but only available in Hebrew, and since these Israeli rulings can and do have an effect on validity of corresponding patents elsewhere, I have translated the decision in full. At the end I have made some general comments.

Background

NovartisNovartis AG filed Israel Patent Application Number 195087 titled “ANHYDROUS LACTATE SALTS OF ANHYDROXY-3-[4-[[[2-(2-METHYL-1HINDOL-3 YL)ETHYL]AMINO]METHYL] PHENYL] – 2E-2-PROPENAMIDE AND PHARMACEUTICAL COMPOSITIONS COMPRISING THE SAME” as a national phase of PCT/US2007/070558 that was filed on 7 June 2006 and claims priority from US 60/804523 and US 60/869993, two US provisional patent applications filed in June and December 2006 respectively. The Israel national phase entry was submitted on 3 November 2008 and, on allowance, published for opposition purposes on31 October 2012.

UnipharmUnipharm opposed the application on 3 January 2013. Subsequently, on 26 June 2013, Novartis requested to correct the application and, since neither Unipharm nor anyone else opposed this, the application was corrected and this ruling concerns an opposition to the amended application.

The parties submitted their claims and evidence and a hearing was held Read the rest of this entry »


Exforge Patent Successfully Opposed in Israel, despite surviving an Opposition based on similar citations in Europe

November 7, 2016

Exforge is a blockbuster drug sold by Novartis for lowering blood pressure that combiexforgenes two medications in a film-coated tablet It contains amlodipine, a dihydropyridine-type calcium channel blocker, and valsartan, an angiotensin II receptor antagonist (ARB or A2RA); typically formulated as the benzenesulfonate salt.

Israel Patent Application No. IL 140665 titled “USE OF COMBINATION COMPOSITIONS COMPRISING VALSARTAN AND AMLODIPINE IN THE PREPARATION OF MEDICAMENTS FOR THE TREATMENT AND PREVENTION OF DIABETES ASSOCIATED WITH HYPERTENSION” relates to the drug.

In an Opposition to the Patent Application issuing, the Deputy Commissioner, Ms Jacqueline Bracha, has ruled that the combination of two active ingredients, each individually known for treating high blood pressure, into one pill for ease of dosage is not inherently inventive where the separate efficacy of the active ingredients is known, as are other two component pills for treating hypertension. Though claimed by applicants, there is no evidence of a synergy between the active ingredients.  The Patent Application is therefore ruled not patentable in Israel and significant costs were awarded to Teva and Unipharm. We expect that the decision will be appealed. This decision may have a knock on effect regarding patents for the same drug abroad and may encourage Teva to proceed with at-risk launches of generic competitors in other jurisdictions.

A translation of the ruling follows:

Read the rest of this entry »


Gentlefile – Trademarking Portmanteau Words

November 2, 2016

Gentlefile is a portmanteau of ‘gentle’ and ‘file’. An Israel trademark application was filed for the GENTLEFILE covering flexible soft dental files. Ill-advisedly, the pending application was then used as the basis for an International application under Madrid.

Medic NRG Ltd filed Israel trademark application No. 255358 for the word Gentlefile. The application covers surgical, medical, dlogoental and veterinary apparatus and instruments; parts and accessories for the aforementioned products; all included in class 10.

The Application was filed on 1 May 2015 and was the basis for subsequent International Application No. 1189965 under the Madrid Protocol in accordance with Section 56(c)(1) of the Trademark Ordinance 1972.

On 17 September 2014 the Trademark Department of the Israel Patent Office refused the Application under Section 8(a) and 11(10) of the Ordinance as lacking inherent distinctiveness and being descriptive of the goods covered. The Examiner considered that the word was a portmanteau of gentle and file, and implied a filing implement that was mild or tender, and consequently the term was descriptive of dental filing apparatus. The Examiner stated that the term implied:

Devices and equipment that are smooth or soft, mild tender to the touch and which deflect on use or gentle touch medical equipment that gives a pleasant and good feeling to patients.

Furthermore, after reviewing the Internet website of the Applicant, the Examiner concluded that since the main activity of the applicant is to provide dental equipment, the term file is descriptive by its nature.

little-shop-of-horrorsThe Applicant claimed that the mark is distinctive and the goods to be protected are not soft, smooth or pleasant dental equipment and so the mark is not descriptive. The Applicant further alleged that a reasonable person would not associate the mark with dental equipment since smooth, soft, mild instruments can be used in a variety of fields, and at the Examiner’s request the Applicant appended examples of usage of the mark in its publicity material and the description of goods accepted on its basis by the United States trademark office on 12 August 2014.

mr-bean-dentistThe Examiner was not convinced and issued a second Office Action. In response the Applicant claimed that the applied for mark had many alternatives meanings and none of them described the goods covered. The Applicant claimed that the word file meant case, computer document, line or rasp, and that the Applicant had developed the mark and used it for years and had now began registering around the world, including the European Community, the United States, China and Russia.

The Examiner dug in her heels and continued to hold the mark non-registerable.  She claimed that the term file was a rasp-like instrument that was used in root canal treatment and the term “gentle file” is descriptive in that it relates to a flexible hand tool. The Examiner provided examples of dentists referring to such a tool as being a file and noted that it only requires one of the meanings to be a generic description to make a mark non-registerable.

oral-proceedingThe Applicant requested a judicial ruling based on the arguments on record and an oral proceeding.

RULING

The Deputy Commissioner Ms Jacqueline Bracha summed up the legal question as whether GENTLEFILE is inherently distinctive, and, if not, whether it can be considered as having acquired distinctiveness.

Section 8 of the Ordinance makes registerability dependent on distinctiveness:

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

A trademark having distinctive character enables distinguishing the goods of one company from another. See the Bible Seligsohn “Trademark Laws and Related Legislation” page 20 (1973).

It is generally considered that marks fall into the following categories: generic, descriptive, indicative, randomly selected and made up. There is a continuum from generic marks to made up ones (See 5792/99 Communication and Religious-Jewish Education Family (1997) Ltd “Family” Magazine vs. SBS Advertising, Marketing and Sales Promotion Ltd. “Good Family” Magazine, Supreme Court Ruling 2001(11) 534 (23 May 2001). At the made up mark end are marks with inherent distinctiveness, whereas at the generic end are marks that cannot be registered.

Section 11(10) of the Ordinance determines that marks that describe the goods that they are to label cannot be registered unless they have acquired distinctiveness:

a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;

The mere fact that a descriptive mark is not in Hebrew does not make it registerable in Israel since the accepted terms should remain in the public domain, even if they are not in Hebrew. (Seligsohn page 35, and 3552/02 Toto Gold Club Ltd vs. The Counsel for Regulating Sports Gambling (26 September 2004).

Thus the general rule is that there is no place to drag descriptive names from common language and to remove them from the public domain and to relate them to specific goods unless they have acquired distinctiveness. 

The degree of descriptiveness of a mark is determined with respect to the intended goods or services and not in a vacuum. (see Appeal 21488-05-11 Eveready Battery Company Inc.  vs. The Commissioner of Patents and Trademarks 8 December 2011. The mark will be considered in its entirety and not analyzed into its components as this is how the consumer regards the mark (see Appeal 5454/02 Tiv Taam  Teva (1988) Tivoli vs. Ambrosia Superhav Pd 57(2) 438).

No-one denies that the marks are intended for medical usage in general and for dentistry in particular. The consumer in this instance is not the general public but rather dentistry practitioners such as dental surgeons, assistants, dental technicians and the like. So the way the mark is regarded has to be considered from their perspective and not from that of others not in the field.

The applied for mark is a combination of two words without a space so that they are viewed as a single word. The portmanteau word comprises file and gentle which mean mild and a tool that is generally steel that has sharp crevices and is used to smooth and flatten surfaces such as human teeth. In dentistry this tool is used to remove plaque from teeth. The word file also means computer document, divisional arrangement and line.

When considering the words in the appropriate context, that is with regards to medical devices for dental applications, the Deputy Commissioner concludes that both ‘gentle’ and ‘file’ are descriptive terms. That the words have other meanings in different contexts to a different audience in no way detracts from them being descriptive in the relevant field, since one has to consider the marks with respect to the services and goods for which they are to be used. The word file has a specific dental meaning and the word gentle is a qualifier that describes a relevant property whose meaning is well understood in this context. As the Examiner concluded, in this instance, we are dealing with flexible tools and it transpires from the Applicant’s own marketing material that it is their softness/gentleness that describes them.

The mark should be considered in its entirety as this is how the target audience perceives it as a trademark. In this context the combination does add something beyond the sum of the parts which increases the likelihood of the mark being considered registerable.

However, it has been determined that merely joining two words together is insufficient to render a mark distinctive unless the combination provides added value. With reference to Page 38 of Seligsohn:

A complex mark of this type cannot over time and through usage lose the plain meaning of the words from which it is comprised, rather a combination has to inherently include something imaginative that the descriptiveness is no longer revealed.

In this regard, reference is made to the Opposition against Israel Trademark Application No. 202424 “MAXIMUMASP” MAXIMUMASP LLC vs. Sky Net Group Ltd (30 June 2010:

The element that Judge Zilberg refers to as “An invention”, and which the European Court calls “Linguistically Unique” is not separate from the second element, that is having acquired a separate meaning from the original one. This means to say, the creativeness is the originality that changes two known and descriptive words into a third phrase which in turn indicates or describes the original meaning, is tested not just in that the phrase adds something, but that the addition provides the phrase with a meaning that is blatant and is the first thing to jump into the viewer’s brain, and which clouds out the original meaning, even were he to think of the original meaning if contemplating the mark. We can already say that the mere combining of two words into one, and even if a letter is thereby deleted, is no proof that the resultant word has the inventiveness required.

The term ‘Gentlefile’ is indeed a portmanteau of two words rolled into one, but it does not appear that the combination creates a new meaning beyond the literal meaning of the combination. In this instance there isn’t even a letter that has been deleted or changed, merely the space between the noun and adjective has been deleted. Thus the combination lacks the essential element of inventiveness that creates an additional meaning beyond the original meaning of gentle file.

Without ruling on whether the combination is too descriptive to be able to acquire distinctiveness through use (2673/04 Appeal Copy to Go marketing (1997 Ltd. vs Israel Shaqued 15 April 2007) the Applicant has not furnished sufficient evidence to persuade that the mark has indeed acquired distinctiveness as required for registration under Section 8(b) of the Ordinance.

Examining acquired distinctiveness of a mark is done with reference to how long the mark is in use, the amount of publicity gained and the resources invested by the Applicant / Owner in creating a linkage between the mark and the goods in the public perception. (see Toto above). Furthermore, one should examine if due to the mark the public connects the goods and services with the mark Applicant/Owner. (see Appeal 18/86 Israel Class Company Venezia vs. Les Verries de Saint Gobain, p.d. 45(3) 224, 238 (1991).

The Applicant did append examples of advertising material from Israel and abroad showing the mark to their responses to the Office Action, and also submitted examples of registrations for the mark from other countries. The Applicant did  not supply details of sales, investment in marketing, the period over which the mark was in use, and the like.

Where marks are far from the imaginative end of the spectrum and are more descriptive-generic, it is more difficult for the Applicant to meet the burden of proof to show acquired distinctiveness. (see Toto paragraph 9). Since the Applicant did not append sufficient evidence to prove this and relied on foreign advertising and registrations, without additional evidence there is no way to ascertain that there is local acquired distinctiveness.

In conclusion, Ms Bracha ruled that the Application be rejected.

Ruling by Deputy Commissioner Ms Jacqueline Bracha on Registerability of Israel Trademark Application No. 255258 Gentlefile, 21 September 2016

COMMENT
Where a mark is arguably descriptive such as in this case, it is not advisable to use a pending application as the basis of a Madrid filing since central attack on the application voids the Madrid trademark registrations.

What I believe the Applicant should have done in this case is to first register the logo that appears above. The mere addition of the graphic element makes this more than a mere combination of words. Using this as a logo without challenges will be good evidence of acquired distinctiveness when subsequently attempting to register the portmanteau word. It is likely that the company sells dental tools worldwide and does not concentrate on the local market which is small since there are only 8.5 million Israelis for dentists to treat. In a small market it is possible to acquire distinctiveness and to become the market leader but this requires strategically deciding to do so. As always, descriptive names should be avoided.

It is difficult to blame the Attorney of record in this case as it is more than likely that they provided good advice and the client went ahead and chose a poor name and tried to protect it. If they didn’t, there would be little work for trademark attorneys.

 


Wet-wipes, The Issue of Inventorship and the Responsibilities of the Patent Attorney

September 22, 2016

wetnap-were-ready-for-any-messThis ruling concerns a product that resulting from the contributions of two people who were formerly friends. A patent application was filed that named both people as both inventors and applicants. Later, after powers-of-attorney signed by each of the named inventor – applicants had been filed, there was an attempt to ‘correct an office error’, to list one of them as an inventor only. The corresponding PCT application and the national phase entry applications, including two issued patents in the United States only bore the name of one inventor and applicant. In an Opposition ruling the Israel Patent Office has now accepted that the second named inventor is indeed an inventor and also an owner.

Apart from emphasizing the need to determine who is the inventor and who is the owner of an invention when the patent is filed, the need to put everything into writing, and the dangers of working with friends, the case raises interesting questions regarding what contribution to reducing a patent to practice entitles someone to recognition as an inventor and whether this standard is the same in all jurisdictions. It also raises interesting questions regarding the duties and responsibilities of the patent attorney to ascertain the facts, or at least to avoid signing on contradictory statements regarding ownership and invention in different jurisdictions.

BACKGROUND

IL 152867 titled “Tissue Container With Auxiliary Compartment”is a patent application for a package of wet-wipes
rc-chairswith an adjacent container for nappy cream. The Application was filed back in November 2002 and listed Boaz Krystal and Liat De-Vries as inventors and owners. The patent application was allowed at the end of June 2010.

Subsequently, an Opposition was filed by WET-NAPS LTD and Liat De-Vries on 4 October 2010 under Section 31(3) of the Israel Patent Law 1967 on the grounds that Boaz Krystal was not in fact an owner, and that the patent was exclusively owned by Ms Liat De-Vries.
affidavitsMr Boaz Krystal and his wife Mrs Dorit Krystal each submitted affidavits. Mrs Liat De-Vries submitted a primary affidavit and a supplementary one in response to Mr Boaz Krystal’s affidavit. Wet-Naps Ltd. is owned by Mr Ilan De-Vries, who is Mrs Liat De-Vries’ husband. He also submitted an affidavit on behalf of the company.  Mr David De-Vries, a patent attorney at Reinhold Cohn & Partners who drafted and filed the application and is a cousin of Mr Ilan De-Vries, Ms Ronit Tal who is an acquaintance of Liat De-Vries and Mr Yoram Hadar who is an industrial designer, also submitted affidavits. A hearing was held and the parties submitted their summaries.

wetnapWet-Nap Ltd manufactures, exports and markets wet-wipes. The company had a business relationship with Packtop Ltd., a company directed by Mr Boaz Krystal that distributes wet-wipes amongst other things.   At the time of filing, both the Krystals and the De-Vries couple were good friends.

roobarbs-shedThere is no argument that Mr Boaz Krystal and Mrs Liat De-Vries met at the Wet-Nap Ltd factory, where Mr Boaz Krystal heard the idea of including baby ointment together with a package of wet-wipes from Mrs Liat De-Vries. There is also no argument that Mr Boaz Krystal and Mrs Liat De-Vries had some kind of collaboration, to develop and improve this invention and to file a patent application for it. Eventually a joint application was filed in both Mr Boaz Krystal and Mrs Liat De-Vries names. However, the parties disagree regarding Mr Krystal’s contribution to the development of the invention and consequently disagree regarding whether he is to be considered an inventor and owner of the patent.

The Main Documents in the Prosecution File Wrapper

roobard-and-custard-friendsThe Application was filed in November 2002 by Reinhold Cohn Patent Attorneys. The Application form lists both Mr Boaz Krystal and Mrs Liat De-Vries as joint owners due to them being inventions. Both parties filed Powers of Attorney, and the Filing Certificate gives both names.

On 10 December 2002, Adv. David De-Vries of Reinhold Cohn Patent Attorneys submitted a notice stating:

office-error“Due to an office error, the name of the inventor, Mr Boaz Krystal was inserted as an Applicant. With our apologies for this, we are submitting a new cover sheet and application form in duplicate, listing Mr Boaz Krystal and Mrs Liat De-Vries as joint inventors, but Mrs Liat De-Vries as the sole owner.”

On 10 December 2002, Adv. Edna Haruti, now Mr Krystal’s representative, submitted a letter in which it was stated that Mr Krystal was a joint owner together with Mrs Liat De-Vries as he had invented the tissue container with auxiliary compartment together with her.  Adv. Edna Haruti also noted that registration of the patent in the name of Mrs Liat De-Vries only was contrary to the agreement between the parties.

shimon-shalitOn 2 February 2003 Patent Attorney Shimon Shalit, then Senior Examiner in charge of formalities at the Israel Patent Office, responded to both Reinhold Cohn and to Mr Krystal that Mr Krystal could not be removed as an owner in the application as filed, since there was no indication that he had assigned his invention to Mrs Liat De-Vries prior to the application being filed. In absence of such proof, since Mr Krystal was not an employee of Mrs De-Vries, by virtue of being a co-inventor, he was also a co-owner.

(As an aside – On 12 March 2006 Mrs De-Vries submitted a divisional application of IL 152867 for certain applications of the invention. This divisional application (IL 174309) was examined, allowed and issued as a patent. On 1 December 2010 IL 174309 lapsed due to failure to pay the renewal fees. That patent is not directly relevant to this Opposition, but Wet-Naps Ltd and Liat De-Vries related to it in their claims).

procrastinateIn the protocol of a hearing held on 5 February 2007 before then Deputy Commissioner Noah Smulevezh it was decided to defer the issue of ownership until the examination of the application was completed. It was further ruled that Reinhold Cohn would be address of record, but would update Mr Krystal or his representative regarding actions taken to get his input before responding to office actions. The patent application was eventually allowed and published for opposition purposes, resulting in this opposition proceeding.

The Opposers’ (Wet-Naps Ltd and Mrs Liat De-Vries) Main Claims
wetnap

Mrs De-Vries and Wet-Naps Ltd claimed to have thought of the idea and developed the invention whereas Mr Krystal had merely provided technical drawings and a business plan for commercializing the product. They alleged that during the period in question, Mr Krystal provided technical and consultancy services to the company as almost an in-house service provider and as such, was exposed to the invention. They further claimed that Mr Yoram Hadar (industrial designer) and Patent Attorney David De-Vries provided sketches for the product that eventually evolved into the patent application. They further alleged that Mr Krystal had suggested a specific implementation (embodiment?) – storing the cream in a blister pack or sachets, which developed into  Read the rest of this entry »


Orbotech’s Patent Application Remains Rejected, Despite Appeals

April 10, 2016

Rejected

Despite Appeals to the District Court and the Supreme Court and a compromise reached by the parties upholding the patent, the Deputy Commissioner refuses to allow IL 179995.

Orbotech is the Applicant of Israel Patent Application IL 179995. In a decision from back in July 2014 , the Deputy Commissioner Ms Jacqueline Bracha accepted Camtek’s arguments filed in an Opposition and refused the patent application.

Orbotech appealed to the District Court against the decision, and the District Court accepted the Appeal and ordered the case returned to the Deputy Commissioner to give the Applicant a chance to prove their assertion that the prior art patent ‘405 and the control system were insufficient to render the alleged invention unpatentable.

Not to be outdone, Camtek requested permission to appeal the District Court decision.However, then both sides agreed to a compromise which was ratified by the Court, under which the patentee would be awarded the patents but no costs would be awarded.

Consequently, Camtek may be considered as an Opponent who has retracted the Opposition and the court’s options are detailed in Section 34 of the Israel Patent Law 1967 which states:

34. If opposition was duly submitted under section 30 and was subsequently cancelled, then Registrar may refuse to grant the patent applied for if, in the course of the opposition, he discovered material according to which the application should not have been accepted in the first place. 

Thus this is a rare case where an Opposition was accepted. That decision was cancelled but the Court of Appeal did not positively allow the patent. Rather, the District Court considered the decision to accept the opposition was deficient and the Applicant was deprived of a fair opportunity to show that the prior art does not render the claimed invention non-patentable. However, the District Court did not, itself, analyze the references and conclude that they are insufficient to anticipate of render obvious the claimed invention.

Furthermore, the Supreme Court that authorized the Opposition being canceled also did not address the patentability issue or discuss Section 34.

In these circumstances, having analyzed the case and concluded that the claimed invention is not patentable, the Deputy Commissioner saw no reason to reconsider this decision and informs Amitech that with reference to the Decision of 20 July 2014, does not see fit to allow the patent. In paragraph 64 of that decision, the Deputy Commissioner had concluded that the patent was anticipated by the ‘450 patent and any additional functionality of the control system that was not claimed are not pat of the claimed invention.

Therefore, the patent remains rejected. Under regulation 74b of the Patent Regulations, the Applicant has 30 days to Appeal this decision.

 


Opposition to IL 178249 Dropped After Claim Amendment, but then Rejected Due to Lack of Novelty

March 8, 2016

solifenacin

Il 178249 to Astellas Pharma Inc is a patent application titled “PHARMACEUTICAL COMPOSITION FOR USE IN SOLID FORMULATION CRYSTALLINE SOLIFENACIN OR SALT THEREOF AND A PROCESS FOR ITS PREPARATION”. On allowance, back in 2012, it was opposed.

Following the Statement of Claims, Astellas requested various claim amendments, some of which were allowed and some were opposed. The Applicant requested a further amendment and the Opposer did not object, so the amended claims published for Opposition purposes.

This amended claims set (version 5) is now subject to a judicial decision under Section 34. Based on her analysis, the Deputy Commissioner, Ms Jacqueline Bracha considers the claimed invention as lacking novelty and inventive step, and therefore provisionally refuses it under Sections 4 and 5 of the Israel Patent Law 1967. The Applicant has 30 days to appeal this decision.

The claimed invention is a pharmaceutical preparation that includes solid formulation crystalline solifenacin or a salt thereof in a concentration of up to 77% as measured by NMR. The relevant date is the filing date of the priority document which is 25 March 2004.

The specification itself states that this preparation was known, as was its crystalline state and its method of manufacture, and its effectiveness in treating urinary diseases.  The amorphous state was present in tablets on sale prior to the priority date, and the Applicant is requested to answer whether this amorphous phase is indeed inherently present and if so,how and why it affects the novelty of the invention as claimed.

The Applicant claims that the percentage amorphous material in the tablet affects the efficacy and moisture during manufacture affects  the amount of amorphous material in the pills. PEG is used as a binder but this is not claimed and so is not part of the claimed preparation.  Apendix IX of the Statement of Opposition shows that exposure of pharmaceuticals to moisture degrades them, and this occurs more in amorphous regions. as stated in reference:

“What we can conclude from this analysis is that medium effects due to residual water in the amorphous state can be significant, but that the direction and extent of this effect will depend on the nature (e.g., polarity, specific solvation) of the transition state for the particular reaction causing degradation.”

Reference 10 states that wet granulation affects the degradation rate.

From the above, it is clear that persons of the art would expect the amount of amorphous active material to affect the rate of degradation, the extent of degradation over time and to reduce degradation  one should protect from moisture. Consequently the claimed invention is obvious.

The Statement of Opposition shows that the pill was on sale before the priority date.

 

The Application is therefore provisionally refused, and the Applicant has 30 days to respond.


J-Date swipes at J-Swipe

August 11, 2015

matchmaker
There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)