An Attempt to Cancel Patent For Breaking GSM Standard Algorithm

September 27, 2017

GSM logoDr Elad Barkan invented or discovered a cryptology method for breaking GSM coded communications and filed a patent application on 30 April 2003 titled “Cryptanalysis Method and System”, which was awarded Israel Patent No. IL 155671 in June 2005. The method was based on the discovery of a fundamental coding flaw in the GSM protocol which caused quite a stir among both telecommunication experts and the cryptology community.

DiscoveryOn 23 June 2015, Rontal Engineering Applications 2001 Ltd applied to have the patent cancelled on various grounds including that it was a discovery and not an invention; that the supplementary tests of inventiveness were met so that there was no inventive step, and that the patent was never implemented. In a long and detailed decision, Deputy Commissioner Ms Jacqueline Bracha considered the various allegations and ruled on the validity of the patent registration.

After the statements of case and the evidence were submitted, a three-day hearing was scheduled in December 2016, and the parties then submitted written summations.

Complicating matters, during the summation stage, the Opposer, Rontal Engineering Applications 2000 Ltd, filed for bankruptcy. Dr Barkan submitted a request that Rontal Engineering post a bond for 200,000 Shekels, to pay his legal fees should he prevail against them. The Deputy Commissioner agreed with his request and a bond was posted duly on 15 July 2017.

Somewhat unusually, the ruling starts with a list of definitions of various words relating to the GSM protocol. Then the decision goes on to rule if the invention relates to patentable subject matter.  In a 46 page ruling with 165 paragraphs, the Deputy Commissioner found that the invention is patentable per se. Furthermore, the invention described is substantially different to the closest prior art so the patent was upheld.

In my conclusions at the end of this article, I conclude that the Opposers could probably have successfully obtained their real objective by negotiating a claim restriction to exclude brute force attacks which were never intended to be covered by the claims anyway.

A summary of the Decision follows.

Glossary

The patent relates to GSM encryption, and to understand the case, a number of terms need to be defined.

GSM NETWORKGSM is an acronym for Global System for Mobile Communications. It is a standard for cellular phone networks developed in 1987 and available since 1992. The standard was published before the priority date. The standard is a digital telecommunication standard and voice is digitized, transmitted and then converted back into sound. GSM is encrypted to prevent third parties from eavesdropping. The communication takes place via base stations.

Read the rest of this entry »


Apple and WhatsApp’s Apps for Apps

September 14, 2017

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for Read the rest of this entry »


Vanunu’s hand

April 15, 2015

learned hand

Zoom 77 A. Sh. LTD has sued Buzz Television LTD for copyright infringement in that Buzz Television broadcast the well known photograph of Israeli traitor Mordechai Vanunu’s hand pressed against the van Uno car window, with the information that he was abducted in Rome by Israel’s Secret Service.

Instead of arguing for informational, non-profitable purposes, de minimis fair use, I am not reproducing the offending image here. Those interested in it can type Vanunu hand into their search engines.

Buzz Television LTD included the image (Vanunu’s Hand, not Learned Hand) in a documentary called the Israel Connection that was produced for Israel’s Educational Television channel. They did not receive permission to include the image and Israel’s Education Television was sued and obliged to pay compensation. See Civil Case 9260-09-12 Zoom 77 A. Sh. LTD vs. Israel Educational Television, 16 January 2014.

(ת”א (מחוזי י-ם) 9260-09-12 זום 77 א.ש (2002) בע”מ נ’ הטלוויזיה החינוכית הישראלית (16.1.2014
Buzz Television LTD used a clip including the image on their website as well, also without permission and without indicating the copyright owner. This second usage is the basis of the current law suit in which Zoom 77 claimed 80,000 NIS compulsory compensation without proof of damage under Section 56 of the Israel Copyright Act 2007.
Buzz Television LTD accepted that the image was owned by Zoom and that displaying it on Buzz’ website was an infringing use. The point of contention was the appropriate compensation in the circumstances.

Section 56b of the Law brings various relevant considerations for setting the compensation including the scope of infringement, its longevity, its seriousness, actual damages, profits to the infringer, the defendant’s activities, the relationship between plaintiff and defendant and inequitable behaviour.

In the present instance, Judge Gideon Gidoni of the Jerusalem Magistrate’s Court noted that the photograph has significant journalistic value and was used to market and promote the defendant’s activities. On the other hand, no evidence was given by the plaintiff regarding the traffic to the website in general and the clip in particular. The Defendant claimed that the clip was a minor component on the website and hardly watched.

No evidence was provided as to how long the image was displayed, but one can assume that the defendant was involved in the case against Israel Educational Television 18 months earlier, and could and should have taken down the clip. Buzz Television is a production company working in the media industry and should be aware of copyright issues and should consequently be highly aware of other’s creative rights. The cost of licensed use of the image was 1600 Shekels.

Judge Gidoni noted the damages paid by Israel Educational Television 18,000 Shekels for first infringement and then 50,000 Shekels for a second infringement last year, and that this was a repeat, albeit indirect infringement of the same product.

He also related to third parties reproducing other news images, including Rachmani v. Israel News 2011 (15000 Shekels for an iconic news image)  the learned, but perhaps not very analytic judge ruled compensation of 25000 Shekels. Civil Appeal Basketball League Management vs. Rachmani (the famous Tal Brody lifting the European trophy “we are on the tablecloth map” where 18000 Shekels was ruled and Kfar Blum Kayaks vs. Manara Cliff 2012, where 75000 Shekels was awarded for moral rights infringed by not mentioning the name of the photographer of the tourist attraction.

In another recent case, Zoom sued Tratkover and was awarded 22000 Shekels.

Judge Gidoni ruled 25000 Shekels compensation, 1000 Shekels costs and 3000 Shekels legal fees.

Sh-14-02-30214-730 Zoom 7 vs.Buzz television re Vanunu’s hnad photo, Judge Gidoni, Jerusalem Magistrates Court, 8 April 2015.

COMMENT

Vanunu set up the picture. The handwriting, font and content of the writing on his hand is his copyright. He was also responsible for positioning his hand on the car window and for his posture. Perhaps he deserves royalties as much as he is deserved his jail sentence?  The journalists that caught the image did very little artistic creation, and arguably whoever crops the image for insertion into a newspaper deserves as much credit and name recognition.

There is certainly a value in fidelity of the law, and levels of compensation for similar infringing acts by different parties should, perhaps, be similar. I would, however, like to feel that judges can analyze and reach sophisticated conclusions and not merely bean count.

I believe that there are iconic images, film clips, sound tracks and the like that have a place in any documentary or dramatization of significant history. I think it ridiculous that a birthday party in a film won’t include children singing Happy Birthday. A film of Martin Luther King couldn’t reproduce his “I have a dream” speech.

In Israel, Holocaust Memorial Day starts this evening. When looking for two rapper versions of Israel’s National ANthem, Hatikveh that were the basis of a copyright infringement proceedings, I discovered a BBC radio clip of the first Friday night Kabbalat Shabbat Service from Bergen Belsen after the camp was liberated. After singing the Hatikveh, one clearly hears the then British Chaplain, the Late Reverend Hardman announcing that the people of Israel live. I sent the clip to his grandson, Danny Verbov who thanked me, and told me that he;s sent the clip about one a month. He kindly sent me a copy of Rev Hardman’s sermons that he’d edited. (I am ashamed to say that I used to go out to play during the sermons).

Now, Danny (and presumably the BBC) could have sued me for downloading and copying or linking to copyright material. At one suing a month Danny would solve the problem of spam email and have a nice sideline. Thankfully he is a mensch and has more sense.

I’d like to see standard reproduction royalties for usage of these literary and artistic creations.

I have illustrated this post with a picture of the US judge who detailed the various considerations regarding compensation for patent infringement in Georgia Pacific vs. American Plywood. The reason for referencing this is not just that he found 15 Factors of relevance, which sounds like an extended family seder, or even that the judge is called Learned Hand. I think his analysis is of relevance when calculated copyright royalties as well as patent royalties.

As always, comments and feedback are welcome.


YES!

February 18, 2015
Yes!

Yes!

DBS Satellite Services 1988 LTD provides satellite television services in Israel that are branded as YES. The Service is licensed by the Communications Ministry.

DBS Satellite Services 1988 LTD sued the brothers Ahmed and Amar Hamuda for trademark and copyright infringement and damages, requesting the following sanctions:

  1. A permanent injunction against the defendants to prevent them from distributing, marketing of selling pirate transmission of the Plaintiff, to cease using the plaintiff’s trademarks, including in third party publications. They requested an injunction against them using the plaintiff’s equipment, or equipment supplied by the plaintiff to their customers, for any but personal use, and to cease any non-personal use immediately.
  2. An order to the defendants or to the receiver to destroy all equipment that enables copyright infringement and all material carrying the YES logo.
  3. An injunction to remove YES’ registered trademarks from the FACEBOOK page for Acre Satellites and from all other publications.
  4. A request to reveal accounts going back seven years.
  5. Statutory damages of 700,000 Shekels under Section 56a of the Copyright Act and Statutory Damages of 100,000 Shekels for trademark infringements (claiming single infringements merely to reduce the court fees) and double costs as a punishment for willful infringement.
  6. Alternatively, compensation of 1,900,000 Shekels for Unjust Enrichment,  (the figures capped to reduce the court fees).

These injunctions were granted by Judge Zernkin, and following the Anton Pillar injunction, equipment and computer records were seized and a summary report was filed to the court by the receiver.

The injunctions were kept in force until the end of proceedings, and for the purposes of the hearing, an order to produce documents and to fill out questionnaires was issued.  This happened in the presence of the defendants who then failed to respond. Consequently, using powers under Section 122 of the Civil Court Procedure 1984, the court ruled that the statement of defense be struck from the record. It is noted that the statement of defense was a mere denial without any explanations.

In a ruling of 27 December 2014, Judge Orit Weinstein requested that the Prosecution supply evidence to substantiate their case and on 15 January 2015 they submitted evidence and affidavits of private detectives, by the VP (Engineering) of YES and the Head of Development at YES.

Based of the evidence submitted, Judge Weinstein ruled that there was sufficient grounds for a judgment against the defendants:

The Defendants broke the security encryption of the satellite transmissions and created a pirate industry, marketing and selling YES’ transmissions piratically, without paying YES, and by undercutting YES’ prices, free-riding on YES. YES’ copyright was infringed by the packaging of the transmission channels and the content, and YES’ trademarks were infringed by being used without permission and illegally.

Consequently, Judge Weinstein ruled that the temporary injunctions would become permanent injunctions, that all equipment be destroyed, following the receiver declaring that he was not holding any assets, there was no need to issue an order against him. The FACEBOOK page should be amended and so should all other publications so as not to include the trademarks of the plaintiff. Judge Weinstein further ruled statutory damages of 700,000 Shekels for copyright infringement and of 100,000 Shekels for trademark infringement, 10,000 Shekels expenses and 40,000 Shekels legal costs.

Civil Proceedings 111147-10-13 DBS Satellite Services (1998) LTD vs. Ahmed and Amar Hamuda.

COMMENTS
I have no sympathy for the defendants in this case. Nevertheless, although the ruling seems very reasonable and the defendants didn’t exactly defend themselves, in the hands of a good lawyer, they could have raised a number of interesting questions. Free riding is not a crime. YES probably does not own very much of the copyright in their transmissions and creating a copyright in a package of channels is stretching things a little. In a recent Supreme Court Ruling concerning parallel imported Tommy Hilfiger shirts here, the Supreme Court allowed the parallel importer to advertise that it was selling Tommy Hilfiger shirts, but not to claim that it was a registered supplier, and to inform customers that they were not entitled to warranties from the official suppliers.  Can one really prevent someone from using the word ‘yes’ on their facebook page or in advertisements?

pirate

Piracy is the crime of boarding shipping on the high seas that is punishable under international maritime law by requiring the pirate to walk the plank.

Arguably with regular TV transmissions, there is a case for Ministry of Communications regulation to divide the radio frequencies into separate bands and to prevent channels interfering with each other. I am not sure that for digital signals sent by satellite this is the case. Certainly government tenders have been abused. The tender for commercial radio that then Govt. Minister Shulamit Aloni put together was designed to prevent Arutz 7 from obtaining a license. The same politicians who called the Arutz 7 team pirates and warned about pirate radios risking plane crashes lauded the late peace activist Abu Natan and his pirate radio ship the Voice of Peace and nominated him for a Nobel Prize. When the Supreme Court voted en banc against Arutz 7, without a dissenting voice even mentioning the value of free speech, it was clear that things have deteriorated a long way since Agranat’s deicison re Kol HaAm.


Finjan Files New Patent Infringement Lawsuit Against Sophos

March 16, 2014

finjan logo                                      finjan coffee pot

Finjan, Inc. has filed a patent infringement lawsuit against Sophos, alleging infringement of Finjan patents relating to endpoint, web, and network security technologies.

The complaint, filed in the U.S. District Court for the Northern District of California, alleges that Sophos’ products and services infringe upon six of Finjan’s patents. In the complaint, Finjan is seeking undisclosed damages from Sophos.


Israel’s Vringo Obtains injunction Against ZTE

December 17, 2013

VRingo

Vringo Inc. (VRNG) have announced that a Germany court found that Chinese telecommunications company ZTE Corp. (000063.SZ, 0763.HK, ZTCOY) infringed one of its European patents and is required to pay damages. The total amount of damages is still being determined. ZTE was also ordered to cease and desist distribution of base stations that were found to infringe Vringo’s patent. A ZTE representative wasn’t immediately available for comment.

Shares of Vringo, a small mobile technology and intellectual-patent firm, jumped 5.5% premarket to $3.25. As of Monday’s close, the stock was up 7.3% so far this year.

The court ruling is subject to appeal. Also, since Germany has a bifurcated system, the validity of the patent involved is being considered in a separate proceeding, as ZTE filed an action in a federal patent court in Germany trying to nullify the patent.

Vringo filed patent infringement cases against ZTE in five countries and has a preliminary inquiry in Spain. The patents involved relate to wireless infrastructure and handsets. The suits were filed in India, the U.K., Germany, France and Australia.

Last year, Vringo was awarded about $30 million in damages and granted future royalties by a federal jury in its patent suit against a handful of technology giants, including Google Inc. (GOOG) and AOL Inc. (AOL). Vringo had sued the search companies for allegedly infringing two of its patents related to advertising placement in search results.


Israel Patent Office Publishes Report on 2010 Activity

July 29, 2011

The Israel Patent Office has just published a report covering its activity in 2010.

The report, in Hebrew, is available from here: http://www.justice.gov.il/NR/rdonlyres/C6ACFC67-FFF0-4D16-A8C3-DCFD0154D82E/0/2010.pdf

There are 45 pages of statistical data that contains few surprises, bound in a blue cover with a slightly corny lightbulb image.

Much of the comparative material, showing how the IPO compares with patent offices in other jurisdictions, and the number of patents filed per GDP and per population are found in the OECD report, on WIPO’s website, and in a paper I wrote together with Jeremy Ben David and which was published in WIPR a couple of months ago. Nevertheless, the report is comprehensive and compares favorably to the odd table or graph that the patent office has traditionally published.

There is some data on oppositions that has never been presented before and also comprehensive ranking tables showing where incoming filings originate.

The document carries two introductions, one from newly installed commissioner, Adv. Asa Kling, and one from his predecessor Dr Meir Noam. We weren’t surprised to see that each commissioner has lauded his predecessor / successor. However, since the document relates to the end of Dr Noam’s tenure, and before Adv. Kling took over as commissioner, this seems appropriate, if a little tiresome. Actually to be fair, 2010 was a good year for Dr Noam, whose achievements were many.

Of note, there is apparently on going consultation between the patent office and the Ministry of Justice regarding a Design Law to replace the 1924 Ordinance inherited from the British mandate, which is still in force.

We were surprised to learn that Brazil is a major filer or design registrations in Israel. Indeed 109 of the 423 design registrations originating from abroad came from Brazil, ahead of everywhere else including the US. Apparently, this is due almost exclusively to H Stern, a Brazilian jewelry firm with many outlets in Israel. Apart from jewelry, Israel design registrations were filed mostly for clothing, building materials, ornaments and food containers. In total, 1622 design applications were filed, which is, however, less than in any of the years 2005-2009.

There were a total of 8017 trademark applications filed into Israel in 2010, which is less than any of the years 2005-2009 and nearly 2500 less than 2008.

Protocol Madrid for the multi-national registration of trademarks came into force in Israel in September 2010, and in the last quarter of the year, some 463 filings were made into Israel via the protocol, and 37 international applications originating in Israel were filed.

In total, some 7266 patent applications were filed in Israel in 2010, which is up from 6780 in 2009, but still below the 2006-2008 levels which peaked, in 20o7, at 8064.  Most of these applications were Paris/PCT filings or divisional applications, claiming priority from earlier applications. The number of new applications first filed in Israel was 1044, which is the smallest number for a decade. It seems that more and more Israeli applicants are first filing in the US, either as regular applications, or are filing US provisional applications.

There was a lot of patents examined and allowed, but problems in publication delayed them issuing and probably contributed to the low number of oppositions filed, which, at 22, is up from 2009 when only 20 were filed, and from 2001 when 21 were filed, but much lower than the other years of this millennium.  We suspect however, that a number of cases examined in 2010 only published in 2011 and there will be some additional oppositions (indeed, I am handling one such case together with Adv Lewin from our office).

Some 41% of patent filings into Israel are computer/electronics related. 31% are chemistry (mostly pharmaceuticals), 17% biotech and 11% mechanical or telecommunications related. (I am not sure why telecommunications is related to mechanical and not to computer/electronics. I suspect it is an anomaly dating back to the mechanical telegraph or to the telephone made of two cups connected by a taut string). The Israel Patent Office receives a disproportionate amount of high-tech and pharmaceutical patent filings compared to those in traditional industries. This seems to reflect the fields where Israeli industries are perceived by competitors as being a threat.

In the end of 2009, Dr Noam initiated a fast track for ‘green’ patent applications. Some 22 attempts to have applications recognized as green were made during the year, and of these, 16 were accepted for the fast track, and 6 were refused. In the pie-chart summarizing this information, the 262 degree slice was coloured green, and the remaining 98 degrees was coloured orange. The significance of this colour was not apparent.Israel is a noticeable user of the PCT system in absolute terms, and is the largest user in terms of population. I suspect that this is because of the small local market, and Israel’s favorable trade relations with the US, Europe and the far East.

It seems that IP activity in Israel, both from local entities and from foreign applicants was down in 2010 in patents, designs and trademarks. This does not come as a surprise,  as we’ve felt the drop in work. It is little comfort to know that Israel weathered the recession better than many other economies, and that patent, design and trademark filings are down everywhere, except for China.

However, we note that the patent office has been aggressively attacking backlogs and examination pendencies are down as well.

We hope that the 2011 data will be more positive!