S. Horowitz & Co | Intellectual Property Disputes

Described by one legal directory as “one of the most muscular litigation forces in Israel”, we are widely acknowledged for the strength, depth and range of our contentious intellectual property practice. In addition to being ranked in the top tier by Legal 500 and Chambers Global, our IP litigation group is the only full service law firm in Israel to be ranked first for patent litigation, trademark litigation, copyright litigation and licensing litigation by IAM Patent Litigation 250, World Trademark Review, IAM Magazine and Managing Intellectual Property.

We represent a wide range of international and domestic claimants and defendants from a wide spectrum of industries, including pharmaceuticals, biotechnology, genetics, medical devices, biomedical products, security and defense, fashion, publishers, film and television production companies, brand owners, authors, electrical engineering, chemical engineering, mechanical engineering, telecommunications, computer software and computer implemented inventions and agro-chemicals.

The firm has extensive experience appearing before the Israel Patents, Designs and Trademarks Office and all levels of Israeli civil courts and arbitration tribunals on IP cases and assisting clients in co-ordinating their cross-border IP proceedings claims. Our lawyers are specialists in the full range of claims, disputes and proceedings relating to all intellectual property rights, including patents, service patent royalty claims, trademarks, brand protection, licensing disputes, copyright, design, trade secrets, rights in semi-conductor chips, appellations of origin and geographical indications, plant breeder’s rights, right of publicity and parallel imports. We also handle major, complex, multi-jurisdictional disputes where key IP rights are being litigated in parallel proceedings in different countries.

Representing Teva, the world’s largest manufacturer of generic medicines, on numerous patent litigation cases relating to a wide array of generic versions of various blockbuster drugs (drugs having annual sales in excess of US$ 1 billion) including patent opposition proceedings against:

(i) Merck, in respect of the blockbuster JANUVIA for the treatment of diabetes and in respect of Fosamax Once Weekly (an osteoporosis drug);

(ii) Novartis, in respect of the blockbuster GLIVEC for the treatment of various types of cancers, and in respect of the blockbuster EXFORGE for the treatment of high blood pressure;

(iii) Gilead, in respect of the blockbuster TRUVADA and TRIPLA for the treatment of AIDS; and

(iv) patent opposition proceedings relating to other drugs including LIPITOR, PLAVIX, EFFEXOR and AVANDIA

Representing Teva on numerous patent infringement actions, including two major patent claims filed against it by Aventis in connection with the anti-allergy drug Telfast/Alegra and representing Teva in the enforcement of its rights in the blockbuster COPAXONE (the leading treatment for MS) and acting for Teva on the enforcement of its patents in the medical device sector
In perhaps one the most important IP dispute cases in Israel during the past decade, successfully represented Iscar (one of the world’s largest producers of cutting tools for metalworking and a wholly owned subsidiary of Berkshire Hathaway) in proceedings instituted by a former employee, Gideon Barazani, before the Compensation and Royalties Committee (a statutory committee appointed under the Patents Law, 1967), relating to whether certain patents held by Iscar in its patent portfolio were invented by him and whether, accordingly, he was entitled to royalties by virtue of such patents being “service inventions”. The Committee’s decision is a precedent in this field of law as it removed the doubt raised in previous decisions as to whether employees can effectively waive their rights to receive compensation, in addition to their salary, for service patents
Representing Neurim Pharmaceuticals Ltd. before the Registrar of Patents in disputed patent extension proceedings for Circadin, a drug that is used to treat insomnia, in two rounds of litigation. Parallel proceedings were also commenced in the English courts and in the European Court of Justice and in other major jurisdictions in the world
Representing Raytheon Company on one the largest trademark disputes to reach the Israeli courts relating to the worldwide proceedings between Raytheon and Lockheed Martin concerning the right to use “PAVEWAY” as a trademark on certain military products. Raytheon is claiming, via its trademark, the exclusive right to use this term. The main arena for proceedings concerning this dispute is in Israel – the reason being that Israel is one of the only jurisdictions in the world that allows cross examination of witnesses during the evidential stage of proceedings conducted before the trademark office. This case is one of the largest (in terms of evidence and costs) trademark cases in Israel’s recent history
Representing Anheuser-Busch Corporation of the United States, the world’s biggest beer producer, in the Israeli litigation in coordination with the worldwide trademark dispute over the name “Budweiser”
Representing Allergan Inc., on various matters including:

(i) the re-assignment of the Hebrew BOTOX domain name from its bad-faith registrant to Allergan; and

(ii) conducting trademark opposition proceedings before the Israeli Trademarks Office against an application for the registration of the “ALLERGIKA” trademark

Representing BDO International Ltd. (the fifth largest accountancy network in the world) in an international trademark dispute concerning the logo and use of the word “BDO” by Banco de Oro Unibank, the largest bank in the Philippines (which has a presence and a registered trademark in Israel). We are acting for BDO in proceedings in Israel for the cancelation of the trademark issued in the Bank’s favour
Representing Endemol International B.V – the world’s largest independent television production company in its successful proceedings commenced against the Israeli broadcaster (“Channel 10”) for infringement of Endemol’s copyright in the format of the program, “Big Brother” (the first claim of its kind in Israel)
Representing Yediot Aharonot in its successful defence of a claim relating to whether the client’s compilation, and subsequent publication on a web portal, of information used in the classified sale pages of print media, was protected by copyright (the first claim of its kind in Israel)
Representing Cellcom along with Logia Group Ltd., a developer of mobile phone applications and content, against a claim filed by E GO Strategic Marketing Ltd., for the alleged infringement of its copyrights in the format of an online marketing event
Representing Wix.Com Ltd., on a copyright infringement, misappropriation of trade secrets and commercial information matter. Wix is a technology company that engages in online website creation. We are representing Wix on two interrelated court proceedings commenced by it against certain former employees alleged to have unlawfully misappropriated and used confidential information and know-how belonging to Wix for the purpose of promoting, building and designing a competing website
Representing Bank Hapoalim, in a trade secret dispute in which the plaintiffs are alleging that the Bank had wrongfully used and incorporated trade secrets of the plaintiffs into a smartphone “app” with similar design and payment functions than those which the plaintiffs allege they had originally presented to the Bank
Representing Teva US Inc., Teva Canada Inc. and Teva Pharmaceuticals Ltd. in court and arbitration proceedings relating to Teva’s termination of its licence agreement with Lycored Inc. concerning Velafaxine (a drug with annual sales of over $2.8 billion)
Representing Fujitsu in litigation concerning intellectual property rights in integrated circuits (ASICS) which it developed
Representing Photothera Inc., a California-based company, which develops medical devices for the treatment of strokes, in multi-jurisdictional litigation in Israel and California
Representing Tel Aviv University and its commercial arm, Ramot, against Cisco and a professor of the university, in the successful settlement of its claim concerning the unlawful removal from the university and sale to Cisco of patented inventions

Intellectual Property Disputes

Overview

Practice Contacts

Tal Band

senior partner

Avi Ordo

partner

Ran Vogel

partner

Dovev Apel

partner

Experience

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