Those in Kaluga are seeking the phase” — that was the heading of the article published in No.3, 2002 of “Za Roul’yom” — popular Russian magazine for drivers. The article reported that Avtopribor Works (in the city of Kaluga) had started to market the “24.3847” phase sensor for GAZ motor vehicles (the sensor adjusts the injection of fuel into vehicle engines). The article also stated that the sensor design had been protected by a utility model certificate. Avtopribor Works thereafter marketed the modified sensor for VAZ vehicles — sensor “26.3847”.

These circumstances were the background to quite lengthy and interesting proceedings, where the interests of the plaintiff were represented by lawyers of Gorodissky & Partners branch office in Ekaterinburg.

The Ekaterinburg office of Gorodissky & Partners was approached by Lantan-1 (Ekaterinburg), a company whose speciality is the development of high technology — and which working with the Urals State University, develops and sells components for the automotive industry. The reason why Lantan-1 had to resort to lawyers was that, in their opinion, Kaluga Avtopribor Works illicitly used the invention of “A sensor of position of a gear tooth” (patent No. 2207575, priority of 10.04.2001), owned by Lantan-1, in “24.3847” and “26.3847” phase sensors manufactured by the said Works.

The investigation conducted by the patent attorney in Gorodissky & Partners’ Ekaterinburg office showed that the client’s arguments were well founded. The evidence proved that an infringement by Avtopribor Works had been committed; there had also been an attempt to settle the matter with Kaluga Works out of court. The negotiations for a settlement did not produce results, and the parties had to face one another in the Arbitration Court of Kaluga Region. Lantan-1 in their statement of action demanded that Avtopribor Works cease to manufacture, use, offer for sale and sell, or introduce into circulation the said “24.3847” and “26.3847” phase sensors, and also cease storing them for these purposes. In the course of proceedings the following issues of the Russian Patent Law were broached:

1) settlement of a dispute — in case the disputing parties have their own patents protecting the design of the sensors;
2) settlement of the matter concerning the use of the plaintiff’s patented invention in the defendant’s products;
3) ascertainment of the defendant’s actual right of prior use with respect to the sensors manufactured by him.

It should be noted that the issue of interference between two patents in patent-related disputes is considered in the draft of the Information Letter published by the Supreme Court of Arbitration the Russian Federations, entitled “On certain issues emerging from the examination of arbitration cases relating to the application of intellectual property laws”. The draft, in the options for settling such interference, essentially provides for the procedures the plaintiff and defendant adopted in the case of phase sensors for VAZ and GAZ vehicles. For this reason the Case examined at Arbitration of the Kaluga Region is of a certain theoretical and practical interest.

Thus Avtopribor Works in their plea to the statement of action pointed out that in the phase sensors they manufactured, they utilized their own paten ted technical solutions (Patent on invention No. 2244309, Utility model patents Nos. 19921, 41371). A further specific feature of this dispute also consisted of the defendant’s utility model patent No. 19921 for “A ferro-magnetic sensor” which has the same priority date as that of the plaintiff’s Patent on the invention entitled ”A sensor of position of a gear tooth”, i.e. — 10.04.2001.

In the defendant’s opinion, the plaintiff should have first attained annulment of the said patents according to the relevant administrative procedure at the Chamber for Patent Disputes, and as such annulment did not take place, Arbitration should reject the action claims.

The defendant’s second argument was his assertion that the phase sensors of his product did not use the invention owned by Lantan-1 according to patent No. 2207575. This argument of the defendant was based on the opinions of the experts he employed, inclusive of patent attorneys from Moscow.

Our objections were that said arguments did not rebut the contention that the defendant’s product was using the plaintiff’s invention, and, accordingly, the proceedings had to clarify the following matters:

1) whether the defendant was using the plaintiff’s invention,
2) if such was the case, then whether such use is illicit.

The matter of use in “24.3847” and “26.3847” sensors of any other patented objects not related to the grounds and subject-matter of the claim in action, and its settlement, is not capable of affecting the juridical category assignable to this controversy. Besides, we referred to provisions of paragraph 1 of Article 10 the Russian Patent Law, according to which “nobody has the right to use any patented invention without the patentee’s consent”.

For the purpose of proving the fact that the defendant’s phase sensors had used the invention owned by Lantan-1, we presented in court a petition to appoint experts to determine such use. The petition was sustained, and an official examiner of the Russian Patent Office was assigned to the said examination.

The examination resulted in confirmation that the plaintiff’s invention of “A sensor of position of a gear tooth” had been used in the defendant’s “24.3847” and “26.3847” phase sensors. All attempts undertaken by the defendant and specialists employed by him to cast doubt on the soundness of the conclusions made by the Court’s expert, and to cause any additional or repeated examination, were to no avail.

Then Avtopribor Works put forward another argument: they allegedly had the right of prior use of the phase sensors which they manufactured. The defendant caused the proceedings to be suspended, and used this adjournment to prepare a set of documents that, in his opinion, would prove that he had the said right of prior use. Examination of the proofs produced by the defendant allowed us to conclude that his plea of prior use was not substantiated, for the conditions under provisions of Article 12 of the Russian Patent Law were not met in their entirety. We are of the opinion that the defendant tried to substantiate the fact of prior use by the fact of manufacture of phase sensors of another modification 21.3855 at his Works.

Adjudication of Case No. A23-6704/05Г-8-288 made by the Arbitration Court of Kaluga Region on 29.01.2007 sustained all the claims of action brought by Lantan-1.

The defendant lodged an appeal against the said adjudication, in which he iterated his view on the case and pleaded alleged breaches of procedure at the court of first instance.

The Arbitration Court in the city of Tula in its Ruling of June 6, 2007, did not reverse the adjudication made by the Arbitration Court of Kaluga Region and refused the appeal. The Defendant filed a cassation appeal against the court decisions. The Federal Arbitration Court of Central District (the city of Bryansk) in its Ruling of October 9, 2007, supported the previous court decisions and dismissed the appeal.

Evgeny Dedkov