Patents: Invalidation of a patent by court during discussion concerning an infringement

The plaintiff (Hereafter: Ana Lotan) was in the business of producing and marketing of cosmetics and is the proprietor of a registered patent (no.106392) for skin peeling creams. The plaintiff argued that the defendant (Balmon) was producing a product for scrubbing and peeling of the skin, and by this is infringing the registered patent.

The district court rejected the claim and argued as follows:

1. The invention was not patentable due to already existing American patents which destroyed the invention's novelty, and hence should have not been registered as a patent (Articles 3-5 Israeli Patent Law).
2. According to Article 3 of the Israeli Patent Law, an invention worthy of a patent must be novel, i.e was not presented publicly, world wide prior to filing date, and be considered as an "inventive step", namely that an ordinary person skilled in the art would have been able to create the invention, based on the existing knowledge in the relevant field.
3. In a previous case (CA/4867/92) discussed by the Supreme Court, it was held that when an infringement of a patent right is considered, the court not only examines the extent of the patent's claims, but also looks into whether the allegedly infringing patent contains the same core of the invention as the allegedly infringed patent. Similar, when novelty of a patent is examined, the court can look not only into publication which contains the invention's components but also one that includes the core of the invention.

In this case, there were two patents registered prior to filing date of the complainant's patent application. In both patents information that could have lead to a person skilled in the art to allegedly infringed invention was disclosed. In addition, the core of the invention was identical in both patents (i.e. an abrasive component), and the fact that the chemical structure was different in both of them was found to be irrelevant.

District court 1179/00 -Ana Lotan vs. Balmon

Plant Varaieties: Breeder's consent for use of varaiety is not required after sale

The plaintiffs are in the business of varieties breeding. The plaintiffs argued that according the Israeli law of Variety Breeding 1973, (hereafter: the law), they have registered varieties as to Gerbera varieties which were breaded by them. In addition it was argued that the defendants were using these varieties without permission of the plaintiffs. The Israeli district court ruled that the proprietor of varieties is entitled for payment for using the registered variety. However, after selling the variety, the breeder's consent is not required for purposes of additional use of that variety, unless this additional use is defined as reproduction of the variety (Article 36 of the law). The argument that the defendant admitted that reproduction of the varity took place for the purpose of establishing an infringement of registered variety.
(Flouriest de Quakel BW vs. Hajag Baruch, District Court 25 October 2007)