Patents – Infringement of the Pith & Marrow

Israel’s Supreme Court, which is the highest judicial authority in the country, has just issued (18th December 2014) a ruling relating to the doctrine of Substantive Infringement as used in Israeli patent infringement actions. The ruling is helpful because there is relatively limited Israeli Supreme Court case law on the subject.

The Supreme Court sat as court of appeal on a ruling issued by the Tel-Aviv District Court on May 25, 2010. The District Court’s ruling was overturned.

The case, Terraflex Pal-Yam Ltd Vs Plasson Ltd relates to pipe couplings. The Respondent filed a lawsuit against the Appellant, before the Tel-Aviv District Court, contending that a coupling sold by the Appellant infringed the Respondent’s registered patent in Israel. The District Court ruled that although there was no literal infringement, there was infringement under the doctrine of the “Substance of the Invention”.

On appeal, the parties did not dispute the court’s finding as to an absence of literal infringement. However, the Appellant argued that the District Court’s finding of infringement under the doctrine of the Substance of the Invention was groundless.

The Supreme Court found that the District Court had not properly defined the Substance of the Invention. Upon ruling that the appeal court was equally equipped as the lower court to determine the Substance of the Invention, the Supreme Court then made such determination, and subsequently found that the Substance of the Invention, as so defined, was absent in the Appellant’s product.

A number of important principles were established or restated by the court.

Definition of the Substance of the Invention – The first step in determining whether a patent is infringed under the Substance of the Invention doctrine must always be a determination by the court as to what is the Substance of the Invention.

The Claims are the starting point for making this determination, but must not be construed in a vacuum. The Specification may be used as a tool, where necessary, to assist in construing the true meaning of the Claims. The Claims cannot be used to establish a Substance of Invention that is broader than the invention as disclosed in the Specification, so the court must always bear in mind the result and outcome and advantages of the invention, as learned from the Specification. The Substance of the Invention must meet the standard criteria for patentability, including novelty and inventiveness. Expert testimony may be used to assist in this process, but the court must exercise caution in this regard, even when dealing with a court appointed expert, and is by no means bound to adopt the expert’s opinion.

Over-Broad Definition of Substance of Invention – The court must be careful to avoid application of an overly-broad Substance of the Invention, defined only in terms of the general purpose of the invention. Such definitions could almost always be used also to describe the State of the Art at the date of the application, so cannot accurately define a patentable invention.

Use of the Phrase “Characterized by” in a Claim – It is customary for the phrase “characterized by”, as used in a Claim, to precede the novel features of the invention. However, where a combination of elements or characteristics follow this phrase, it would be wrong to isolate a single element or characteristic, and define that element or characteristic as the Substance of the Invention.

Preference for Construction Upholding Validity – Where possible, the Substance of the Invention will be construed in such a way as to render the invention valid and patentable. In order to meet the criteria for novelty and inventiveness, this may require that the Substance of the Invention be given a relatively narrow definition; however, this is preferable over giving a broad definition which would render the invention invalid.

Where a Claim is Silent – Where a Claim is silent as to the material to be used, or the particular structure or action of an element, then the Claim is to be construed as having intended not to limit that element of the invention to a specific material, structure or action, particularly where a subsequent dependent Claim includes such a limitation. However, the Claim must still be construed in light of the Specification, and be limited in scope to the results, outcome and advantages of the invention, as learned from the Specification, otherwise the Claim might be overly broad, and perhaps not even novel or inventive.

Use of Extrinsic Material – Promotional material published by the patentee, describing the novel features and advantages of a product may be used in support of the construction arising out of an examination of the intrinsic material.

Availability of Prior Art – The general principle is that a patent which was published is deemed to have entered the public domain and can be cited as prior art. The fact that some effort would have been required in order to locate the document does not render it non-public; rather, the document could be deemed non-public only if it is proved that there was no real possibility for the public to obtain or review the document. If a patent was stored in a searchable database, then it was in the public domain.

Commentary – This is a useful ruling, in that it presents a systematic approach to making a determination as to infringement of the Substance of the Invention. The fact that the District Court issued its ruling without following such approach underlines the importance of the new ruling, as precedent and guidance for the lower courts.

The ruling may serve to amplify the importance of finding the right balance between providing too much, or not enough detail, in the Specification. Many patent applications are drafted to provide only minimal detail as to the State of the Art, the objectives of the invention, and the advantages of the invention. Patent agents may argue that this detail is not required by the Patent Office, and can be limiting in future litigation. This is a fair point. Conversely, however, the absence of such detail may make it harder for the court to arrive at a finding of infringement of the Substance of the Invention, if this cannot be clearly defined from the intrinsic evidence. Certainly, a patentee would not want to jeopardize the possibility of successfully arguing for infringement of the Substance of the Invention; equally, however, a patent applicant will not want to tie himself down to an overly narrow and detailed description in the Specification, just to facilitate a more straightforward definition of the Substance of the Invention, when it is this very detail which might in the future be deemed as limiting the scope of the invention, so as to place various third party products entirely outside the scope of the patent, where less detail may have facilitated a broader reading of the Claims. It remains a delicate balancing act.

Reif & Reif specialises in the field of intellectual property, in general, and matters of patent enforcement, in particular. We will be happy to assist you with any action that you may need taken to protect your patent rights in Israel, or to defend you against unjustified claims of patent infringement.