Case Number

CA 345/87

Date Decided

7-2-1990

Decision Type

Appellate

Document Type

Full Opinion

Abstract

Appellant, the Plaintiff in the District Court below, sued the Respondents for infringement of a Patent owned by it, which concerns optical display systems utilizing holographic lenses. Respondent 1, the State of Israel, had ordered from Respondent 2, Kaiser Aerospace & Electronics Co., the manufacture and installation in certain aircraft of head-up display systems (HUD), which the Appellant contended infringed its Patent.

The HUD is an information display system installed in the airplane's cockpit that displays information to the pilot concerning the flight, firing and direction of armaments, radar picture, view of enemy aircraft, and the like. Normally, the pilot obtains such information by reading the various dials and other displays in front of him. The HUD displays this same information on the aircraft's windscreen, facing the outside world. The pilot can read the information without lowering his head toward the dials, while he is watching the outside world, with consequent significant advantage, especially in the case of military aircraft.

The Respondents defended against the Appellant's suit in the District Court on three grounds. First, they denied that they infringed the Appellant's Patent. Second, they contended that the Patent was invalid, arguing that the invention was not novel when it was patented, that it did not constitute an inventive step and that the Description of the invention in the Patent was insufficiently precise. The Respondents' third defense was that they were the beneficiaries of a license granted by the Appellant to the United States government.

The lower court held in favor of the Appellant that the invention was patentable, in that it satisfied the requirements of novelty and inventive step and that the Description was adequate. It also ruled in favor of the Appellant that the Respondents are not beneficiaries of the license granted by the Appellant to the United States. However, it decided the case against the Appellant on the ground that the Respondents had not infringed the Patent, based on its determination of the scope of the Patent as set forth in the Patent Claims filed by the Appellant.

The Appellant appealed this decision to the Supreme Court which, sitting as a court of appeals, reversed the lower court's judgment, in an opinion written by the President, and entered judgment in the Appellant's favor. The Supreme Court ordered the Respondents to abstain from infringing the Patent and returned the case to the District Court to hear evidence concerning the issue of damages. Among the various points of law passed on by the Supreme Court, it held that -

1. If the inventor wants to link a Patent to a specific result, he must claim that result in the Claims section of the Patent. The elements included in a combination patent must also appear in the Claims. In a patent limited by result, the result is one of the components of the invention so the inventor must claim protection for it in the Claims.

2. A Patent should be interpreted as an entirety. Although the patentee may not rely on the Description to claim a monopoly, and what is not included in the Claim is not included in the monopoly, the meaning of the Claim should be interpreted in light of that which is contained in the Description and accompanying drawings. This is so also when the Claim appears to be unambiguous on its face.

3. Even if the Respondents in this case did not infringe the Patent literally, they took the substance of the Appellant's protected invention.

4. The patentee bears the burden of proof on the issue of infringement of the Patent. On the issue of its validity, once registered, the burden of proof is on the party that denies its validity.

5. One may not piece together a claim of non-novelty by combining that which is contained in several earlier documents, unless such combination was obvious and would have been apparent to a person skilled in the an at the time the Patent was issued. The information in the public hands must have been sufficient to enable it to perform the invention. If performing the contents of the prior publication, in light of the knowledge possessed at the time by one skilled in the relevant art, constitutes an infringement of the Patent, then the invention is not novel.

6. The requirement of an inventive step is wider than the requirement of novelty. The invention must also make a material contribution to the field. In judging this issue, one must examine the total an in the field. One may put together different documents, if such joining would have been obvious to a skilled person at the time. On the other hand, the inventive step may consist of the very joining together of such different documents, when such combination was not previously apparent to a skilled person.

7. The skilled person to whom these tests are addressed is the average man of the art. He may be art individual or a team familiar with the field, that will be called upon to solve the difficulties on which the dispute revolves.

8. Various subordinate tests have been developed for judging the issue of inventive step, including: whether the invention satisfies a "long-felt need", if it meets with commercial success arising from the advantages of the invention rather than from external market forces, and the reaction of professionals in the field. An invention that satisfies a long-felt need may be art inventive step even if it does not meet with commercial success.

9. The purpose of the requirement of sufficiency of the Description is to ensure that the inventor actually had the invention at the time of the application and to inform the public how to perform it, so as not discourage further research in the field and to allow others its lawful use. The sufficiency of the Description is tested against the general professional knowledge existing in the relevant field at the time of the application. The inventor should include in the Description the data which will allow persons skilled in the art to perform it, without requiring of them any inventive step. This does not preclude the possibility of some trial and error, not exceeding that which is reasonable in the circumstances.

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