Patent Litigaton Strategies in Israel

Reuven Behar, partnerFischer Behar Chen & Co

The relationship between filing the main claim and applications for temporary relief in patent infringement cases

Effect of the proceeding for temporary relief on the main proceeding

The majority of claims filed for patent infringements are filed together with a request for a temporary restraining order

The duration of proceedings for temporary restraining order is substantially shorter than the main proceedings

The grant of a temporary restraining order can result in protection for a significant fraction of the life of the patent

Resources of conducting the main proceedings versus the outcome of the proceedings for temporary relief

The fact that the court’s resources are limited creates pressure on the party that lost the proceedings for temporary relief to settle

The Effect of the decision during the proceedings for temporary relief on the main proceedings

Conclusion = the most significant factor influencing the judicial decision is whether the temporary injunction was issued or not

Choice of Judicial Forum Judicial pressure to have the dispute

submitted to arbitration Since the infringement generally occurs

in several districts of the country, the choice of forum is flexible

Flexibility with respect to other countries where an action for infringement can be filed

The effect of a foreign judgment on proceedings in Israel

Defense claims against patent infringement

The patent is invalid (except in exceptional cases, such a defense will not be decided in the proceedings for temporary relief).

Non infringement of the patent – 1. Literal infringement 2. The substance of the invention

Choice and Appointment of Experts

By the Parties Objective Reputable Clear and Simple

By the Court Decisive influence

on the results of the proceedings

Appointment of an expert as an important tool for the court battle

scientific advisor

Considerations of the court in granting a temporary injunction

Balance of Convenience - generally works to the favor of the plaintiff

Awareness of pro-competition considerations in weighing the balance of convenience.

Delay Clean hands and good faith Prima facie merits

Ex-Parte requests for a Temporary Injunction?

Meaning – Preliminary proceedings without hearing the defendant.

Benefit – immediate grant of the temporary injunction and the advantage for the plaintiff during the proceedings.

Risk – Loss of faith in of court in the event the arguments for the request are not convincing.

Note – the clean hands standard is higher with the filing of the request

Unlawful Enrichment and Intellectual Property and Patents

Case Law Trends

Ashir and Intellectual Property Law

Ashir decision – even an invention that is not eligible for patent registration can be protected so that it cannot be replicated

Today, patent infringement claims are filed based on both patent law and unjust enrichment law.

Ashir and Intellectual Property Law

Lack of protection prior to a patents registration on the grounds of unjust enrichment (Merck v Teva) – limitations of Ashir?

Patents and Antitrust Law

The weight given to pro competition considerations at the time the patent is examined by the court or at the time of deliberation concerning the balance of convenience

Influence on the Flexibility to settle the dispute