Contributed By Gilat, Bareket & Co., Reinhold Cohn Group
The necessary parties to an action for infringement are the patentee and exclusive licensee who are the only ones that can file an action for infringement. Therefore, non-exclusive licence owners cannot file an action for infringement. In cases of a jointly owned patent, each partner is entitled to bring action for infringement.
The plaintiff must join co-patentees and exclusive licensees (who choose not to join the action for infringement with the plaintiff) as defendants. A person who was joined as a defendant but did not take part in the proceedings will not be required to participate in the payment of litigation costs.
Direct infringement is expressly defined in the Patents Act as the right of the patentee to prevent any other person from exploiting the invention, either as defined by the claims or in a similar manner that involves the essence of the invention.
Israeli courts also recognise infringement by joint tortfeasors (such as aiding or inducing infringement) who are then jointly and severally liable. Liability as joint tortfeasors is based on the provisions of the general Torts Ordinance concerning joint tortfeasors.
Furthermore, the courts have recognised a court-made doctrine of contributory infringement. Contributory liability does not require a showing of concerted action between the direct infringer and the contributory infringer. The concept of contributory infringement has been applied under the following accumulated conditions:
In instances of liability, it has not been definitively ruled whether a specific instance of a direct infringement must be shown, and it remains an open issue whether the direct infringer must be joined in proceedings.
Remedies for indirect infringement are the same as for direct infringement.
The Patents Act defines infringement as exploitation of the invention in the manner defined by the claims or in a similar manner that in light of the claims involves the essence of the invention.
Thus, in addition to protection against literal infringement, the Patents Act also confers protection against infringement of the 'essence of the invention' (gist) sometimes also referred to as the 'doctrine of equivalents'.
In addition, the Supreme Court emphasised the principle of reading the patent document as a whole. As such, the specification cannot be used to broaden the scope of the claims and cannot be used selectively and it is the rule that interpretation of the claims should be purposive. It has been decided that claim construction aims at ascertaining the inventor’s intention expressed in the patent document, as understood by a person having an ordinary skill in the art in the relevant field, given the knowledge existing on the determining date.
A patentee is expected to formulate the patent claims with a reasonable degree of clarity. The Supreme Court enunciated several criteria to assist in determining whether the reasonable degree of clarity was achieved:
Where the proper interpretation of the patent document is unclear, the Israeli and foreign file wrappers may aid in the interpretation. It should be noted, however, that the Supreme Court left open the question of whether or not the doctrine of file wrapper estoppel is applicable in Israel.
Claim construction is an issue of law.
The available defences against infringement are (this is not an exhaustive list):
Experts engaged by the parties: experts are frequently engaged by parties to proceedings, both in Patent Office litigation and in infringement litigation before district courts. Foreign experts may file their opinions in English. During trial, the experts will be cross-examined on their opinions.
Court appointed experts: in proceedings before the Patent Office, no experts are appointed by the Registrar. If necessary, the Registrar is aided by one of the examiners.
A district court trying an infringement action may appoint an expert. The court-appointed expert may be cross-examined by both parties (plaintiff and defendant). The default rule is that a court-appointed expert renders parties' expert opinions inadmissible. Pending final judgment, the parties will typically be ordered to share the costs of the court-appointed expert.
The District Court also has power to appoint an assessor (a scientific adviser) who assists the judge in taking evidence and may render advice to the judge, but shall not take part in rendering the judgment. The costs for the court-appointed scientific adviser are paid by the State Treasury.
In Israel there is no Claim Construction Hearing ('Markman hearing') in which the judge examines the evidence of the parties in order to understand the appropriate meaning of the key words of the patent claims.