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Dr.Goldraich expert witness

The latest decision given by the Supreme Court on 12 January 2014 – read here

 

Excerpts from a summary of judgment in the trial in which Dr. Goldraich was an expert witness – given on 22 August 2010

A petition for a permanent injunction, a mandatory injunction and compensations ruling, due to the infringement of Israeli registered patent no. 184211 (hereinafter: the “Patent”), regarding an invention of a system and a mechanism which enable forced opening of doors, or other apertures, by exerting pressure on adjacent surfaces.

The patent application was submitted by the plaintiffs on June 25, 2007, and on December 20, 2007 they applied to the Patent Registrar with the request  that the  application  be immediately examined, claiming that their invention  is already being unlawfully exploited and that there is also concern of its future abuse.

The judge said the following in summary:

In this case I am of the opinion that, despite the fact that a ruling on the question of validity of the patent is not required for ruling on the infringement claim, it was appropriate to look into the initial question of the patent’s validity due to the great deal of time dedicated to this matter by the plaintiffs in their claim and due to the fact that analyzing such claims regarding the patent’s validity will clarify the ruling regarding the alleged infringement of the patent, as this will be explained later.

According to the statement of opinion of Dr. Marganit Goldraich, an Israeli patent attorney, who was brought to the court on behalf of the respondents and who was questioned at length regarding her statement of opinion, it appears that prior to the date of application of the patent, a few patents that were already registered described products highly similar to the product which is the subject of the plaintiffs’ patent and as well as  similar products made by a number of manufacturers that were already available on the market.

In her statement of opinion, the expert, who has impressed me with her proficiency and great professional integrity, reviewed the patents’ prior art, including the relevant patent and patent applications, as well as the names of products and catalogues of companies that distribute kits for non- destructive opening of apertures, part of which already existed in the market before the patent application was submitted for registration.

The expert mainly referred to the Holmatro door opener, which was already in use prior to the year 2006, and had even been used by the Ministry of Defense for military purposes throughout the years.  This device was punctiliously examined by the expert, as she compared it with claim no. 1 of the patent, subject of this case, and found that excluding one component, which I will further describe later on, Holmatro’s door opener contains all of the components described in the subject patent.

The operating method described in the patent’s claim 1 is identical to Holmatro’s one as well, with the goal of breaking open the door being achieved in the same way. The two breech blocks the door opener is composed of are forcefully inserted into the connecting line between the two adjacent surfaces subject to be separated,  while the two blocks are engaged together, and by operation of the pump installed in both blocks, pressure is exerted on them, thus forcefully breaking through the door-lock by separating the two adjacent surfaces.

Holmatro’s door opener was presented to me during the hearing along with the explanation of its operation, as well as of the operation of the plaintiff’s invented product, and the two devices are indeed very similar, both in shape and in their way of operation.

And if one shall ask how did the patent registrar come to approve the registration of the plaintiffs’ invention while at the time of submission of the application, as it appears, similar products already existed in the market, some even subject of patents, the answer to this question is quite simple.

The plaintiffs avoided revealing this fact to the patent registrar, the fact that such products are designed and manufactured by others are abundantly available in the market, and that therefore his decision to approve the patent application was based on restricted information.

According to the statement of opinion of Dr. Goldraich,  expert on behalf of the respondents, if the patent examiner who had examined the patent application had been aware of Holmatro’s door opener as well as of other products and patents in this field, she would not have approved the registration of this patent, since the invention described in the patent was not in fact innovative and did not constitute any progressive invention, when compared to what already existed in this field at the time of submission of the patent application.

In her cross-examination, when asked of the basis to her opinion, she responded:

“Based on a few things regarding the Patent Registrar, first of all, let’s go back to when I got the task to examine this patent, one of the first things I did was check what already exists in this field.  This is quite basic in the patent world, even if just a plain customer comes to me and tells me – I have invented this or that invention, I say – let’s see what is already in the field, what is going on in that area, after all we do not live in a vacuum and no one is going to reinvent the wheel so we check what is already out there.  The first things that came up were Holmatro’s, Nike and Rescue-Tech catalogues as well as all types of catalogues that present door-opening kits, and other devices of this kind.  They all do the same thing, more or less, just longer, shorter, greater or lower horse-power, hydraulics of this or that type, there are those little nuances and small differences between the devices, but they all do the same action.  I looked to find what is new in the patent, what was really innovative in the eyes of the patent examiner according to what I’ve seen when I ordered the examination file from the Patent Registrar, what the examiner saw with her own eyes, and I saw that in fact, she did not see anything, excluding the patents that were quoted in origin, and she was probably stressed out or something like that, she didn’t find any additional patents and as well, she was not given any information by the patent application submitters, as if no such devices ever existed before.”

It must be said that from the beginning, I was inclined to concur with this opinion, and the fact that the door opener subject matter of the patent was already known and marketed worldwide, even before an application was filed, and even after a few patents have been  already registered in its field,  is enough for me to use my authority according to Article 182 to the Law and order the cancellation of the patent, but eventually, due to the reasons I shall specify henceforth, I decided not to do so.

The reason for my abstaining from ordering the patent’s cancellation, and I do not intend to create a precedent on this matter, derives from the possibility that this patent may lead to some type of invention advancement, which might have qualified the registration of the patent in itself, under certain conditions.  And what do I base this assumption on?

It should be known that the patent registered by the plaintiffs includes, among the door-opener’s components, a rotating ring which does not exist in any of the known products, or in the patents registered in their regard in the past.

This rotating ring, which appears in the first claim of the patent, is fully and independently installed on the hydraulic cylinder unit of the door-opener in a way in which it can be removed, providing the door-opener with access to the key object to be opened, from different angles.

In Dr. Goldraich’s statement of opinion dated March 9th, 2010, she referred to this rotating ring while claiming that: “The only element that is allegedly new in the patent when compared with Holmatro’s door-opener is the rotating ring.”

In her testimony to the court, Dr. Goldraich was once again asked on this matter, and she says on page 52 of the protocol dated April 12, 2010:

“… The only thing that might constitute some type of invention, perhaps, is the rotating ring, really.”

And on page 53 to the protocol, she says:

“So in principle, what I found, which really may constitute an invention, is the rotating ring, and it was brought up in the first claim as well.  This means that the first claim is in fact limited to this rotating ring.”

On page 57 to the protocol, she was asked by the plaintiffs’ advocate on this matter, and her response was:

“Q:      Forget about us being in court.  If you hadn’t known Adv. Chaham and you are the plaintiff here and I had come to you a year ago with the moving hydro patent, and asked you to register it based on the rotating ring, would you have registered it?

His honor the Judge: If she were a patent registrar?

Answer:          Possibly.

Question:        Would you have registered it?

Answer:          If I were a patent registrar?

Question:        Yes.

Answer:          Possibly yes.”

Indeed, as the testimony continued, Dr. Goldraich said that despite the fact that the rotating ring may be in the form of an invention, it is not necessarily an invention qualified to become a patent, but to me, the fact that the aforementioned rotating ring, and the operating function included in it, constitute some type of ostensible inventive progress, is enough for me to withhold from ordering the cancellation of the patent.

It should be known that while the burden of proof  of the patent infringement lies with the patent owner who claims for infringement, the burden of proof regarding the validity of a patent lies on the respondent, since the essence of grant of patent status constitutes testimonial to its validity (see Civil Appeal 700/78, ISECO International Solar Energy Ltd. vs. Banita, Court Case 34(1) 757, page 763 and also Civil Appeal 345/87Hughes Aircraft Company vs. State of Israel et al., Court Case 44(4), page 45 and page 102).

Due to the possibility that the Patent Registrar, even if he had been exposed to the existing products and to the registered patents in the relevant field, would have regardlessly registered this patent or part thereof, only due to the invention involved in the rotating ring’s device, I am of the opinion that despite the great difficulty in registering the patent from the outset, ordering the cancellation of the patent as a whole in the frame of this procedure will not constitute an appropriate action.  As I have already said, and as will be understood later, there is no need to resort to determination regarding the patent’s validity, for the purpose of ruling on the infringement claim itself.

In any event, my withholding from ordering the cancelation of the patent’s registration shall not constitute any obstruction in the respondents’ way of directly attacking the registration of the patent, whenever and to the extent they desire to so.

Now, that the patent remains valid, we must deliberate on the second question, which is – did the respondents infringe the patent?  I shall already begin and say that right now, I believe the answer to this question is negative, and that the product that was produced by Respondent no. 1 does not infringe the patent which is the subject matter of the petition.

According to Article 49 of the Law: “A patent holder is entitled to prevent any other person from exploiting the invention for which the patent has been granted without his permission or unlawfully, either in the manner defined in the claims or in a similar manner which, in the light of what is defined by those claims, involves the essence of the invention which is the subject matter of the patent.”

The legal defense granted to the registered patent, known in the legal vocabulary as “patent’s monopoly field,” is determined according to the patent’s claims.

As was already stated throughout our deliberation regarding the validity of the patent, the patent holder limited his own claim, in claim no. 1, to the product in which the second breech block is installed on a rotating ring, and this claim was approved, according to this request, by the Patent Registrar.

The subject rotating ring allows the possibility of spinning of the product’s body and the “teeth” that sink in the aperture one is trying to open are rotating one towards the other thanks to an independent ring, which enables the rotation around the cylinder, and this enables penetration to the destined place from different angles.

It is proper to state that this detail was not conditionally claimed, but totally, in the patent’s independent claims.  And again, we already know from the discussion regarding its validity that this rotating ring is not a marginal, insignificant addition, but is, in fact, the invention and the innovation invented by the plaintiffs, since similar door-openers have already been out in the market for many years, but all without the rotating ring.

Therefore, the first question to be asked is – does the product of Respondent no. 1 contain a rotating ring, which, if such exists, may constitute a literal infringement of the patent.

The product of Respondent no. 1 was presented to me during the hearing, and I could quite clearly see that such a component of a rotating ring does not exist in this product at all.

Expert Dr. Goldraich referred to this matter in her first statement of opinion dated December 10, 2009, and on page 4 to her statement she says as follows:

“I have meticulously examined the San Hi-Tech door-opening kit, known as “the breaching product”, to find that the second breech block is installed on a ring which is installed on the hydraulic cylinder unit, while the ring does not rotate (was underlined at origin), and therefore it should be unequivocally determined that it does not infringe Claim no. 1 nor any of the patent claims.  This can be demonstrated and one could see a significant difference even without the eye of a professional […] with the absence of possibility of rotating in the product known as “the Infringement product”, the subject product absolutely does not infringe the patent.”

I agree with this conclusion of the expert, Dr. Goldraich.  Throughout the course of the hearing, the plaintiffs tried to persuade the court that that the breech block of the door opener of  Respondent no. 1 is twistable as well, by opening the screws that mount it to the cylinder, but the least that can be said about such proposition is that it was artificial, not to mention absurd.  One must examine the product which was regarded as infringing when it is assembled and ready for action, not as it is disassembled with its particles loosened.  When the product of Respondent no. 1 is assembled, it does not contain a loose rotating ring, and therefore it does not constitute a literal infringement of the unconditional claim included in the patent itself.

But this is not enough.  The law protects an invention that was lawfully registered as a patent not only from infringement of the patent, but also from an infringement of the “essence of the invention.”  This term, the “essence of invention,” is not interpreted by the Law, and the courts determined that it will be appropriate to cast some content in the term “essence of the invention” by adopting the doctrine of equivalents that was developed in the widespread rulings of the judicial courts in the United States.  (See on this matter: A. Fridman, “Patents – Comparative Law, Ruling and Precedents”, [Finkelstein-Ginosar Publishing House, 5771-2001], page 707 and court rulings brought in it].

According to this doctrine, the nature of the difference between the new product and the one described in the frame of the patent claim  needs to be explored,  as well as significant aspects in the new product that are similar to those recited  in the framework of the patent claim.

In our matter, I agree with the respondents’ argument, that if we view the “essence of the invention” of the plaintiffs as being the rotating ring, we will find that there is no infringement of the patent.

Indeed, the existence of the rotating ring in the plaintiffs’ patent enables the product subject of the patent to perform an application the product of Respondent no. 1 is not capable of.  As was explained before, the rotating ring’s “message” is that it enables access to the place one is trying to get into, both by releasing the handle, which can rotate relative to the block, and by releasing the block, which can rotate relative to the handle, therefore enabling access from different angles.  The product of Respondent no. 1 does not contain a rotating ring, as aforesaid, and therefore is not capable of performing the function enabled by the rotating ring, and this was even clearly demonstrated in the courtroom.

Therefore that being the case, the product of Respondent no. 1 does not infringe the patent, neither in the literal aspect nor in the Doctrine of equivalents aspect.

In conclusion – the petition is hereby dismissed.  The plaintiffs will pay respondents 1-4, jointly and severally, as well as Respondent no. 5, legal expenses in a total amount of NIS 30,000 plus tax, each.

Given today, August 22, 2010, in the absence of the parties.

Dr. Adi Zarenkin

(Dr. Goldraich expert witness)

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