India: Delhi HC Slaps Interim Deposit Of 54Cr. To Patent Infringer

Last Updated: 23 August 2019
Article by Debopriya Mukherjee

A Patent infringement lawsuit was filed by Communication Components Antenna INC against alleged infringer Ace Technologies Corp and its related entities and subsidiaries in relation to its patent which was titled "Asymmetrical Beams for Spectrum Efficiency".

The plaintiff claimed that the patent was for a novel antenna having a unique feature i.e. an asymmetrical beam pattern detailed in its specification. However, the Patent did not really comply with the technical standard to be considered to be patented and rendering dole ownership to the plaintiff and also has been licensed by the plaintiff to various other parties. Approximately two years ago it was found by the plaintiff that their Patent was being infringed by the defendants. In order to protect their patented invention from getting infringed a suit was filed by the plaintiff. The Court passed an interim injunction on the sale of the patent in question to any cellular operators in India by the defendants till the matter was heard next. Although orders for imports was allowed only on the condition of filing the accounts of the same.

In this matter a Single Bench Judge of the Delhi High Court Justice Prathiba M Singh based on the prima facie or the first impression of the case passed an order directing the alleged infringer to make an interim deposit of approximately Rs. 54 crores to be able to carry on with further sale of the manufactured products through the Patent in question High Court Registry. It was further directed by the Judge that if the alleged infringer does not comply with the interim order, he shall be prohibited from activities such as manufacturing, selling, or offering for sale any such products which are manufactured through the suit patent.1

The plaintiff represented by Senior Advocate CS Vaidyanathan with Advocates Sidhant Goel, Mohit Goel, Samik Mukherjee, Deepankar Mishra, Aditya Goel and Anirudh Gupta submitted and argued that their antenna was a "smart antenna" and that the design of the same was unique and novel with the aim of achieving greater effectiveness without quality compromise. Further submissions by the plaintiff stated on grounds of validity of patent, that the grant of the patent claiming to be a "smart antenna" was justified as it introduced new and unique asymmetrical beam patterns in split-sector fixed beam antennae.

It was further submitted that even though a large number of the "smart antennas" were supplied by its predecessor in India, the indulgence of third parties in the supply chain of the same not only infringed the plaintiffs' patent in India but also drastically hampered the plaintiff's market.

The defendants represented by Senior Advocate Arun Kathpalia with Advocates Shantanu Tyagi, Dev Robinson, Apoorva Murali and Surabhi Bhandari alleged that the plaintiffs did not reveal all the material information to the court. The defendant submitted that the patent in question was lis pendens, wherein, the Court could not grant an injunction as the validity of the patent was challenged. The suit was further challenged by the defendants stating that the patent which was in question in the suit was not a valid Patent under Section 3(a),(c),(d) and (f), of the Patents Act and should hence be revoked under Section 64 of the Patents Act. Furthermore, the defendants further argued that the "asymmetrical beam patterns" already constituted prior art when the patent was granted in India.2

The defendants denied the plaintiff's claim of having "worldwide protection" on the basis that "additional limitations" had been made to the corresponding patent claims in the United States which consequently makes the Patent registered in India "obvious".

Thus, seeking the injunction order to be vacated.

The Court after hearing contentions from both the sides rejected the defendant's contentions in regards to suppression of facts, as the plaintiff had already placed the judgment before the Court of the pending suit on record.

The Court addressing the issue of "additional limitations" in the US patent with respect to the determination of the true purport, meaning and purpose behind the invention in India, it observed that the language of the patent claims in different jurisdictions, after it is granted in various domestic jurisdictions, would usually never be identical.

Consequently, the court was of the view that additional language in the claims of the US patent could not be considered as a limitation but merely highlighted another feature of the patented invention and that a patent specification and the claims should be interpreted literally and not purposively.

The defendants also faced rejection of their contention on prior art as for an invention to be prior published, and to be hit by prior art, it has to be viewed from the point of view of a skilled addressee as to whether the document would by itself, without the disclosure in the patent specification, be sufficient to anticipate the invention.3Also, the defendants were unable to reveal to the Court the beam patterns of the antennae that were sold by them. Based on the perusal of the claims, complete specification, and the beam patterns and two expert reports, the Court prima facie found the defendant guilty of patent infringement and thus came up with the opinion that the defendants are liable to deposit the said amount for continuation of sale of their antennae in India. The next hearing for the matter is fixed on October 17.





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