The Division Bench of Delhi High Court passed a landmark judgment in the Patent Infringement Matter. Here’s a detailed understanding of all the undercurrents of the order.
In a landmark judgment on Patent Law in India, a Division Bench of the Delhi High Court comprising of Justice Vibhu Bakhru and Justice Amit Mahajan dismissed an appeal filed by Ace Technologies Corp. against Communication Components Antenna Inc., thereby upholding the findings of infringement in the order passed by the learned Single Judge. The Hon’ble Division Bench also rejected all grounds of invalidity raised by the Appellants/ Defendants, thereby holding that no credible challenge to the validity of the patent in question had been raised at the interim stage.
Some of the salient features of the judgment are provided below:
The Hon’ble Division Bench has provided an extensive analysis on the interplay between the claims and the specifications, as also the interplay between claims and the preferred embodiments disclosed in a patent. Specifically, the Hon’ble Division Bench held:
“42. … The question whether the appellants have raised a credible challenge to the Suit Patent is required to be considered in context of the Claims because the patent rights are in respect of the Claims and are broader than the preferred embodiments. However, the description of the Suit Patent and the preferred embodiments are relevant to interpret and understand the Claims.
44. … There is no dispute that the specifications and description of the patent are necessary for interpreting and understanding the claims. However, the specifications cannot broaden the claim. As stated above, the monopoly that the Patents Act grants is in respect of the specific claims and not the preferred embodiments.”
In a watershed moment in Patent Law in India, the Hon’ble Division Bench has delivered key findings on what constitutes patentable subject matter under Indian law. Specifically, the Hon’ble Division Bench held that “a known product, which is specifically modified and configured to provide a specified result of an economic value, would be considered to be patentable as it would be a new product.”.
In the facts of this case, the Hon’ble Division Bench held that “if the said product is novel and a distinct improvement over the known technology, its patent would not be vulnerable to challenge on the ground that antennae emitting asymmetrical beams were disclosed by prior arts”. The Division Bench further held that “It would be erroneous to assume that a patent in respect of such a product is required to be denied on the ground that it is covered under the broad classification of antennae that emit asymmetrical beams.”.
In view of the findings arrived at by the Hon’ble Division Bench as regards the scope of claims being broader than the preferred embodiments disclosed in a patent, the Hon’ble Division Bench rejected the contention that an erroneous test was applied for ascertaining “whether the beam pattern of the antennae manufactured and dealt with by the appellants, are similar to the beam patterns as disclosed in the Suit Patent.”.
Based on this, the Division Bench concluded that “Prima facie, we do not find any error in the method of comparing the beam patterns for ascertaining whether the Suit Patent was infringed.”.
Another momentous aspect of this judgment is the law laid down by the Hon’ble Division Bench on the “Safe Distance Rule” that a party, who has suffered an interim injunction, has to follow. The Division Bench noted that infringement is claimed against a “party”, and consequently, a restraint order against infringement of a patent is also claimed against a party. In this view of the matter, the Hon’ble Division Bench held as follows:
“84. … It is necessary for the party suffering an order interdicting it from doing any act in relation to the subject matter of the suit, to ensure that it does not commit any other acts which could be construed as violating the court order. It is not open for the party to try and overcome court orders by continuing its infringing activity in another form or manner. As an illustration, if the court finds that the defendant’s trademark infringes the plaintiff’s trademark and interdicts the defendant from using it; it is not open for the defendant to slightly modify or tweak its trademark and continue using it. It is incumbent upon the defendant to ensure that it does not use any trademark that can be construed as infringing a plaintiff’s trademark. Similarly, if the appellants were interdicted from manufacturing or dealing with Model- 1 on the ground that the same infringes the Suit Patent; it would not be open for the appellants to launch another infringing model by slightly modifying or tweaking Model-1.”
Based on the above, the Hon’ble Division Bench held that if the Appellants/Defendants did not comply with the directions issued by the learned Single Judge in the judgment in appeal, it “would stand restrained from manufacturing, selling, offering from sell any models of antennae, which infringe the Suit Patent”. On the strength of this finding, the Division Bench concluded that it was “unable to accept that the said order – that is, the order restraining the appellants from infringing the Suit Patent – travels beyond the scope of the plaint.”
As regards the ground of insufficiency of disclosure for invalidation of a patent, the Hon’ble Division Bench has held that in the absence of any evidence of an expert to support the allegation of insufficiency of disclosure, it was not possible to render any finding on that ground. In this regard, the Hon’ble Division Bench relied on the findings of a learned Single Judge in the case, titled Communication Components Antenna Inc. v. Mobi Antenna Technologies (Shenzhen) Co. Ltd. and Ors., where it was held that “the determination whether the specifications, as disclosed, is sufficient to enable a person possessing average skill in the art, to which the invention relates, to work the invention, necessarily requires the parties to lead evidence of a person skilled in the art”. Based on the above, the Hon’ble Division Bench concluded as below:
“73. As stated above, we are of the view that the question whether the specifications fully disclose the method of working the Suit Patent – including the construction/configuration of the sub-sector antenna is required to be determined after the parties have had the opportunity to lead expert evidence/ evidence of a person skilled in the art.”
The Hon’ble Division Bench rejected the submission of the Appellants/ Defendants that for the purpose of adjudicating a challenge on the grounds of invalidity under Section 64(1) (h) and Section 64(1)(a), only claims have to be read, and held that “The Claims have to be read along with the specifications. The embodiments also aid in understanding and interpreting the Claims. The question whether the Suit Patent sufficiently discloses the method for working the patent is required to be examined with reference to the specifications.”
In another noteworthy finding, the Hon’ble Division Bench held that “The question whether the specifications sufficiently disclose the method for working the patent is a matter of evidence and is required to determined independent of any observations made by the patent office of any other country.” Thus, the Hon’ble Division Bench rejected a blind following of observations made by patent offices around the world for the purpose of any prima facie finding on insufficiency of disclosure.
The Hon’ble Division Bench further dismissed a challenge raised by the Appellants/Defendants on the ground that the additional explanation added in the corresponding US Patent had the effect of adding an additional limitation. The Hon’ble Division Bench found that “We are unable to accept that the view of the learned Single Judge is patently erroneous and therefore, warrants any interference in these proceedings.”.
The Hon’ble Division Bench also upheld the findings of the learned Single Judge as regards the adverse inference drawn for non-production of the beam patterns of the antennas alleged to be infringing. The Division Bench concluded that “it was necessary for the appellants to either produce the actual beam patterns emitted by the antennae manufactured and dealt with by them or produce the antenna for examination by an expert as suggested by the Court.”
Another aspect of the Judgment, which deserves mention is the finding on territorial jurisdiction of Indian Courts in cases where the manufacture and sale of the impugned products is alleged to take place outside the territorial limits of India.
Firstly, the Division Bench relied on the averments made in the Plaint to establish territorial jurisdiction, and held that “At the pre-trial stage, unless the admitted facts establish that the court does not have the jurisdiction to entertain the suit, the averments in the plaint are required to considered as correct for the purposes of determining whether to entertain the suit.” Based on this, the Hon’ble Division Bench proceeded to conclude that it had jurisdiction to try the Suit.
Secondly, the Hon’ble Division Bench held that the nature and extent of the activities of the Appellants/Defendants in India were disputed questions that required trial. In this regard, the Division Bench held that “the onus to show that no part of the transaction of sale and purchase of antennae was consummated in India, rests with the appellants.”.
In this regard, the Hon’ble Division Bench held that jurisdiction of Indian Courts was made out at least based on the offer for sale in India as well as the incorporation of Indian entities.
In view of the findings given, the Hon’ble Division Bench held that on the test laid down by the Supreme Court in Wander v. Antox, the exercise of discretion could not be said to be arbitrary or capricious.
However, keeping in mind the difficulty expressed by the Appellants/ Defendants, the Hon’ble Division Bench modified “the impugned judgment to a limited extent of permitting the respondents to deposit a bank guarantee for a sum of 10% of the sale proceeds instead of depositing the same in cash with the Registrar of this Court.”.
Ace Technologies Corp. was represented by Mr. Sandeep Sethi, Senior Advocate and briefed by a team of Mr. Vineet Rohilla and Mr. Rohit Rangi from Remfry & Sagar, whereas Communication Components Antenna Inc. was represented by Mr. Gaurav Pachnanda, Senior Advocate and briefed by Mr. Sidhant Goel, Mr. Mohit Goel, Mr Aditya Goel and Mr. Deepankar Mishra from Sim And San – Attorneys at Law, and Ms. Avni Sharma and Mr. Kaustabh Kapoor.
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