Israeli Court Refuses to rely on Inventor/Expert Report in Hasin Esh

On February 20, 2011 the Tel Aviv District Court handed down a decision in a patent infringement suit between Hasin Esh Industries Ltd. v. Cuniel Antonio (Israel) Ltd.

The plaintiff, Hasin Esh, is the owner of a number of patents including the ‘826 and the ‘765 both covering a fire resistant tile and a process for the manufacturing thereof. The  plaintiff claimed the defendant infringed both the ‘826 and ‘765 patent.

The ‘826 and ‘765 patents claim various species of a ceramic roof tile and a method for making the same, the roof tile made of natural clays and contain in their crystallographic structure Gehlenite and Anorhite components shown by a specific X-ray diffraction pattern through d-value reflection.

The plaintiff developed the technology embodied in the ‘826 and ‘765 patents from 1995 with the help of the Ben Gurion University in Ber Sheva where Prof. Gal serves as the head of the Advanced Industrial Ceramics Lab. In 2003 when the plaintiff found the defendant was producing improved tiles which were similar to the defendant’s tiles, the plaintiff contacted Prof. Gal to perform some tests. Prof. Gal’s tests showed the defendant was using the plaintiff’s method and materials for making the tiles.

When the plaintiff filed evidence in this case it heavily relied on Prof. Gal’s expert opinion which analysed how the defendants tiles were infringing the patents in suit. The plaintiff also used Prof. Gal’s expert opinion when filing evidence in response to the defendant’s expert reports. Prof. Gal analyzed the prior art filed by the defendants and opined that these were not relevant in view of the essence of the invention embodied in the patents.

The court reiterated that section 49(a) to the Patents Act affords a patent owner wide protection since it allows the owner of a patent to prevent the exploitation of the invention as it is embodied in the claims or in the essence (pith and marrow) of the invention. In assessing whether the court should first consider invalidity or infringement, the court stated that in this case, the proper course of examination would be to first review infringement and if infringement is found a review of invalidity arguments is proper.

The court did not find infringement of the ‘826 patent because the essential elements of the invention, namely the materials and the manufacturing process, were not used by the defendant.

When addressing the ‘765 patent the court noted that the plaintiff failed to meet the burden of proof to show infringement.  When addressing this issue the court limits the ‘765 patent claims by statements made by plaintiff during prosecution, effectively  using a file wrapper estoppal.

In addition, the court states that the only evidence filed by the plaintiff are the expert reports by Prof. Gal (and a second expert whom Prof. Gal instructed). That the plaintiff failed to file specific percipient evidence showing infringement of the ‘765. The court states that since Prof. Gal is one of the inventors, with a stake in the success of the patents and plaintiff, his subjectivity is questioned and therefore places very little weight to his expert opinions. The court further decided not to rely on a second expert important because Prof. Gal provided information and his opinions to the second expert opinion. In view of the insignificant weight awarded to Prof. Gal expert opinions the court relies on the defendant’s evidence that it’s tile is not infringing. Moreover, the court adopts the expert opinions provided by the defendant showing prior art which invalidates the ‘765 in view of the fact that the expert opinions by the plaintiff were awarded very little weight. The court simply ignores the expert reports by Prof. Gal and effectively invalidated the relevant claims of the ‘765 patent.