A Year of IP Litigation
A HISTORIC COMPROMISE THAT ALLOWS FAIR USE OF COPYRIGHTED BOOKS WAS REACHED
The Hebrew University, one of Israel’s leading universities, was sued by two publishing companies arguing that the University’s practice of placing copyrighted material in its electronic repositories violates the publishers’ copyright. Mediation reached a historic compromise, and received court’s approval, that placing up to 20% of a book’s pages in an electronic repository will be considered fair use of the copyrightable material.
A lawsuit was filed against the Hebrew University of Jerusalem by two Israeli publishing companies, Schocken Publishing House Ltd. and The Bialik Institute1, in connection with the University’s placing of copyrighted materials on electronic repositories – a common practice in most of the academic institutions in Israel, permitted under the Fair Use Doctrine and unchallenged by any publishing company until that case. The Hebrew University was represented by Gilat, Bareket & Co.
Mediation that was instituted after four years of legal proceedings achieved a historic compromise, whereby publishers agreed that the use of book segments, up to the scope of 20% of the book’s pages, will be considered “fair use”. The mediation, which was approved by the Court, received broad attention both in Israel and worldwide.
A CLASS ACTION AGAINST GOOGLE BOOKS REJECTED IN LIMINE
A class action submitted to the District Court against Google Books was rejected in limine. An appeal to the Supreme Court was withdrawn at the Court’s suggestion.
Gilat, Bareket & Co. represented Google Inc. in a class action concerning the Google Books project, in which the plaintiff challenged Google’s practice of enabling the search engine’s user to view “snippets” consisting of a few sentences from books.
The District Court accepted Google’s motion to strike the claim in limine, and the plaintiff appealed this decision to the Supreme Court2. During a hearing held on September 11, 2013, at the recommendation of the Supreme Court, the plaintiff withdrew its appeal. (CA 230/12).
A LANDMARK, SUPREME COURT-APPROVED AGREEMENT ON THE PAYMENT OF ROYALTIES FOR THE SECONDARY TRANSMISSION OF COPYRIGHTED WORKS
A landmark, Supreme Court-approved agreement between a copyright owner and a cable TV company grants the cable TV company a license for secondary transmission of copyrighted works on TV channels delivered to subscribers in return for royalties.
After many years of legal proceedings between AGICOA, represented by Gilat, Bareket & Co., and the HOT cable TV company, the parties reached a landmark agreement which is the first such agreement in over twenty years of cable television operations in Israel, granting HOT a license in return for the payment of royalties for the secondary transmission of copyrighted works on TV channels delivered by HOT. This agreement was approved by the Supreme Court.
AN INTERIM PATENT EXTENSION ORDER
The District Court approved an interim patent term extension (PTE) order that would be made permanent upon fulfilling the Two Countries Condition, which is a mandatory threshold for the grant of a PTE in Israel, even though this condition was not formally met at the expiry of the 20-year patent term.
The legislative arrangement regarding patent term extensions (PTE3) includes the intention, to compensate a patent holder for the time required to be granted with a regulatory approval for a medical product (which may be a drug or a medical device). The PTE provisions of the Israeli Patents Law make reference to foreign “reference” jurisdictions and stipulate that one of the threshold conditions for the grant of a PTE in Israel is the grant of marketing authorization and PTE in the United States and the grant of marketing authorization and SPC (European “PTE”) in at least one of the European reference countries – a condition referred to as the “Two Countries Condition”.
BTG International (BTG), represented by Gilat Bareket & Co., has a patent whose scope include a pharmaceutical preparation known by its trade name Zytiga, which is indicated for the treatment of prostate cancer, particularly in patients who did not respond to “conventional” treatment.
BTG filed a PTE application for its Israeli Patent, however, the 20-year patent term was due to expire before the date on which the “Two Countries Condition” was expected to be met, i.e., the patent was to expire before a permanent PTE order was granted to the US reference. The PTE application was accepted conditional to the grant of a permanent PTE in the US. A group which in essence represents the generic pharmaceutical industry opposed this interim PTE grant, arguing that under these circumstances, the term of the patent cannot be extended. The Registrar accepted this position but left the interim PTE in place until after the appeal. BTG indeed appealed the decision to the Tel-Aviv – Jaffa District Court.
It was argued on behalf of BTG that the circumstances of this case are unique and the grant of an interim PTE is appropriate for, the following reasons (and others): First, under the circumstances of the BTG matter, delays in the developmental process resulted in the pharmaceutical product being first approved for marketing only about 18 years after the filing of the patent application in Israel, and thus the patent owner had – in fact – less than two years to enjoy its patent exclusivity. Second, the corresponding U.S. patent, which was still entitled to enjoy a patent term of 17 years from grant, was set to expire one year after the Israeli patent already lapsed. Therefore, despite the fact that the corresponding U.S. patent was held to be entitled, in principle, to a PTE, no PTE was expected to be formally granted in the US at that time.
On November 10, 2013, a decision was laid down by the District Court4, ruling in BTG’s favor, noting that under these specific circumstances, an interim PTE order is appropriate in order to achieve the legislative intent. This decision paved the way for the eventual grant of a permanent PTE order at the beginning of 2014.
Meanwhile the Patent Law has been amended, and it remains to be seen, how the new law will be applied to such situations.
DECISION ON A TIME EXTENSION REQUEST FOR FILING A PATENT TERM EXTENSION APPLICATION FOR PATENT NO. 157471
Under the PTE provisions in the Patents Law, the owner of a patent may submit an application for a Patent Term Extension (the “PTE application”). The deadline to submit this application is up to 90 days from the marketing approval of the pharmaceutical preparation for which the Patent Term Extension is requested. As wording of the Law refer to “a patentee”, if the patent has not been granted by the end of said 90 day term, it would be impossible to submit a PTE application.
This problematic situation was dealt with first in 2002 by the Deputy Patents Registrar, in the matter of Asta Medica et al. In this decision, the Deputy Patents Registrar accepted the PTE applicant’s argument that the right to apply for a PTE order is not forfeited where submission deadline cannot be made because the patent application is still pending upon the expiry of the deadline5. The ASTA decision however did not set a deadline for filing the application for such time extension.
Boehringer Ingelheim GmbH received marketing authorization for the drug Trajenta® at a time the patent application was still pending and therefore could not submit a PTE request. After the patent was granted Boehringer Ingelheim filed an application to extend the tiome to submit the PTE request.
The Patents Registrar ordered Boehringer to provide reasons detailing the circumstances that prevented both itself and its counsel from submitting a timely request for extension. An oral hearing was requested in respect of this matter.
In the hearing before the Registrar in December of 2013, it was submitted that the Patents Law or the Patents Regulations do not establish a duty to file the time extension application within the period prescribed by section 64.O, i.e. within 90 days from the marketing authorization. Therefore, since there was no delay, there is no need to explain the circumstances behind such. In addition, the applicant argued that the mere fact that the extension is requested for a patent application, rather than a patent, constitutes a circumstance “[t]he applicant and its representative has no control over and could not prevent”, as required by Section 164(a1) of the Act, and for this reason, the applicant should be granted the requested extension.
In view of the arguments brought before him by Boehringer Ingelheim GmbH, represented by Gilat Bareket & Co. the Patents Registrar gave a precedential decision, in which he accepted the applicant’s position, stating that the mere fact that the patent itself is yet to be granted constitutes grounds to give a time extension under section 164(a)(1). Accordingly, the requested extension was granted, with the PTE application to be filed until 90 days after the patent has been granted.
PATENT OFFICE OPINES ON INHERENCY AND OBVIOUS-TO-TRY WHILE DISMISSING OPPOSITION
The decision of the IP Adjudicator in an opposition to a patent application by the international company DSM IP Assets BV6 relates to important patentability tests including inherency, obvious-to-try standards and onus of proof.
DSM, represented by Gilat, Bareket & Co., managed to hold off the opposition while the majority of its factual and legal claims, relating to the grounds for the opposition were adopted by the Adjudicator in her decision.
Among the legal issues determined therein, it was held that the legal test for negative novelty on the basis of so-called inherent disclosure is to clearly show that an element of the claim is necessarily found in the prior art, and that this element can be identified by a person skilled in the field.
It was also held that in order to prove that an invention is obvious-to-try, it is not sufficient to show that a person skilled in the field was encouraged to try and achieve the invention it is also necessary to show that the person skilled in the field would have done so with a reasonable expectation of success. An additional indication in the implementation of the obvious-to-try legal test is the time period that elapsed from the date of the prior art to the date of the invention; that is, the longer the period, the less obvious it was for a person skilled in the field to try and achieve the invention.
Regarding the onus of proof and the burden of evidence, the Adjudicator adopt DSM’s position, that while the burden of persuasion in Israeli opposition proceedings lies on the applicant, the burden of adducing evidence lies on the opponent (namely, to question the patentability of the invention). Only when the opponent lifts this burden, should the burden shift to the applicant; should the opponent fail to lift its burden of adducing evidence, such burden does not shift to the applicant, and the failure thereof is held against it.
On appeal the case was remanded solely in order to examine whether the corresponding European Case was relevant for the Israeli decision.
CLAIM AMENDMENT DURING OPPOSITION – DENIED
Claims’ amendments requested during the course of opposition are mostly denied on the ground of broadening existing claims and /or adding a new matter.
Sarine Technologies Ltd., a local company represented by Gilat, Bareket & Co., lodged an opposition7 to the post-acceptance amendment of a patent application for a “Laser system to mark gemstones and method to verify the marking”, of the foreign company, Lazare Kaplan Inc.. The opposition proceedings to the amendment were conducted during the opposition proceedings to the patent application itself (which had been ongoing for past 12 years).
The application for amendment concerned two independent claims (a system claim and a method claim), and the applicant argued that its purpose would be to narrow or clarify the claims.
Sarine opposed the amendments on two main grounds: that none of the amendments achieve their intended purpose, and that the amendments either broaden the claims or add new matter.
The Deputy Patents Registrar ruled in favor of Sarine with respect to the majority of the requested amendments, holding that some of them do not achieve their purpose, others add new matter, and that one of them even completely changes the meaning of the claim. Accordingly, most of the requested amendments were not approved, and the Deputy Patents Registrar ordered the applicant to reimburse the opponent for their costs in these proceedings.
THE PUMA LEAPS HIGHER THAN THE TIGER
Puma receives a permanent injunction, a destruction order of infringing goods and a statutory compensation by the District Court, that rules that the decision of the Deputy Registrar of Trademarks in an opposition against the same trademark that marked the infringing goods constitutes res judicata and estoppel.
City Wash Ltd. filed a trademark application for a mark including the word “TIGRIS” joined by the figure of a leaping predator cat. The Puma Company, represented by Gilat, Bareket & Co., filed an opposition to the registration of this mark. At the same time, Customs seized two shipments of goods bearing the same mark.
The Trademarks Registrar accepted the opposition and City Wash appealed to the District Court, but the appeal was eventually withdrawn with the parties’ consent. However, Puma filed two lawsuits with the Tel Aviv District Court in connection with goods seized by the Customs Authorities8. The first suit was handled while the proceedings in the second suit were put on hold pending the decision in the first suit.
The suits, which were filed on the grounds of infringement of Puma’s trademarks, copyright infringement, passing off, unjust enrichment, violation of the right to property, damage to goodwill and dilution of goodwill, alleged that the Registrar’s decision constitutes res judicata as well as estoppel. The Court was asked to grant an injunction to the marketing of the infringing products, and an order for the destruction of the seized goods, as well as an order for the payment of compensation without proof of damage, for the sum of NIS 100,000 (a statutory compensation). The District Court accepted most of PUMA’s claims, stating, inter alia, that the decision of the Deputy Trademarks Registrar indeed constitutes res judicata and estoppel. The court granted a permanent injunction, a destruction order and the requested compensation of NIS 100,000 for passing off.
Are ONESTO and ENSTO Confusingly Similar?
The Deputy Registrar of the Israeli Patent and Trademark Office rules9 that ONESTO and ENSTO are confusingly similar trademarks and rejects the application to register the trademark ONESTO.
Ensto Oy, a Finnish electronics manufacturer, represented by Gilat Bareket & Co., opposed the registration of the mark “ONESTO” of Yueqing Onesto Electric, for a variety of devices and electrical equipment, due to its misleading similarity to the opponent’s trademarks, “ENSTO” and “ENSTO EE” which is registered for a variety of electrical and electronic products. The Deputy Registrar, sitting in her capacity as an IP adjudicator, ruled in favor of the opponent, holding that the parties’ marks were very similar, to the extent of public confusion, as both marks were intended for the same type of goods, appealed to the same clientele and were marketed through the same marketing channels. The Deputy Registrar noted in her decision that the applicant, Onesto, did not prove the existence of circumstances that may prevent confusion, such as one of the marks being familiar to or having a secondary meaning in the eye of the Israeli public.
In this connection c.f. decision of the European Court of justice In Case T 624/11 (judgment of the General Court (Third Chamber) dated 19.3.2013), which ruled in favor of Ensto Oy on the basis of likelihood of confusion between the marks. In Europe said marks were held to be non-confusing at the first instance.
1 CC (Jerusalem) 3524/09 Schocken Publishing House Ltd. et al v. The Hebrew University of Jerusalem et al, November 27, 2013.
2 CA 230/12 Jonathan Brauner v. Google Inc., September 11, 2013.
3 The Patents Law uses the term “Extension Order.” In this article, we will use the more widely recognized term – PTE.
4 CA-V (T.A.) 33766-08-13 BTG International Ltd. v. The Manufacturers Association, the Chemical & Pharmaceutical Society, November 10, 2013.
5 It should be noted that in a recent legislative change, that will be discussed in a separate newsletter in the near future, this term has been set to expire within 90 days of the grant of the patent.
6 Opposition to patent application No. 142789, October 17, 2013.
7 Opposition to patent application No. 124034, August 7, 2013.
8 CC (T.A) 1245/08 PUMA AKTIENGESELLSCHAFT RUDOLF DASSLER SPORT v. City Wash Ltd. and CC (T.A) 23520-03-11 Puma SE v. City Wash Ltd. et al.
9 Ensto Oy v. Yueqing Onesto Electric, Opposition to trademark application 219922 “ONESTO”, July 10, 2013
This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.