Communication Components Antenna Inc v Ace Technologies Corp (2019)

Summary

“The Plaintiff has filed the present suit seeking permanent injunction restraining infringement of Indian Patent No. 240893” and “The patent is titled ‘Asymmetrical Beams for Spectrum Efficiency’.” (para 1) “The case of the Plaintiff is that the suit patent discloses a novel sector- antenna used by the telecommunication industry, which has an asymmetrical beam pattern and other features as detailed in the specification.” (para 3) “Defendant No.1 - M/s Ace Technology Corporation is a South Korean Company, which is also in the business of manufacturing and selling antennae for the telecommunication industry.” (para 4) By an order of 2 November 2018, “the Defendants are directed till the next date of hearing not to offer for sell any Antennae, the models of which are mentioned hereinabove to any cellular operators in India.” (para 7) The Defendants answered that “the validity of the suit patent was challenged in Ten XC Wireless Inc & Anr v. Mobi Antenna Technologies (Shenzhen) Co. Ltd.” and that the Court there “had expressed a prima facie opinion that there is a credible challenge to the validity of the patent” (para 8).

The Court found “there is no concealment by the Plaintiff” (para 33) and that “the additional language in US 582 claims do not affect the scope of the Indian patent in any manner.” (para 49) It held that “The difference, thus, sought to be urged between brownfield and greenfield use is based on a misinterpretation of the claims.” (para 62) and that “at this stage the Court has no option but to draw an adverse inference against the Defendants.” (para 66) Finding that “Substantial change in circumstances has taken place since the first judgment of the Ld. Single Judge dated 4th November, 2011” and that “the Defendants can be put to terms” (para 77), the Court directed the Defendants “to give a Bank Guarantee for a sum of Rs.40 crores” (para 81) and to deposit a sum “ten percent of which is approximately Rs.14.5 crores”, adding: “If the Defendants do not comply with the above directions within one month, the Defendants shall stand restrained from manufacturing, selling, offering for sale any models of antennae which infringe suit patent number IN 240893.” (para 82) “All three I.A.s are disposed of in the above terms.” (para 83)

What the court decided

1. Procedure. Concealment of the earlier judgment. “A perusal of the plaint, however, shows that the earlier proceedings are fully pleaded and the judgment is also annexed.” “While, there was a necessity to point out the same during oral arguments, the fact that the Plaintiff has pleaded it and filed the judgment on record shows that there is no concealment by the Plaintiff. Thus, this is not a case for disentitling the Plaintiff to relief on the ground of suppression.” (para 33)
2. Statements made during prosecution. “While patent applicants ought to be held bound by the broad statements made during prosecution of their patents in various jurisdictions, there is bound to be differences in the wording of claims which may happen.” “These statements are sometimes substantive in nature, and sometimes are merely clarificatory in nature. Deletion of a claim, for e.g., to overcome the objection of a prior art, would be a substantive change. Adding or deleting language within a claim may also be clarificatory in nature.” “In each and every case therefore, the statements made during prosecution of either the subject patent, or corresponding patents internationally, need to be seen in order to arrive at a conclusion as to what is the effect of the said statement on the extent of monopoly enjoyed, which is governed by the claims of the patent.” (para 38)
3. Specification and claims. “The specification has to be read as a whole, even though it is the claims that define the monopoly. The specification has to contain an enabling disclosure i.e., it should enable a skilled addressee to perform the invention. It is in return for the enabling disclosure that the monopoly is granted as a quid pro quo.” (para 39) “The claims have to be read to determine infringement, but in case of any ambiguity in interpretation of the claims, reference can be made to the complete specification for the true purport and meaning, as also the purpose behind the invention.” (para 40) “The principle that the claims determine the monopoly is well settled.” “However, in the facts of the present case, this Court is of the opinion that the claims are sufficiently precise and monopoly being sought is as per the claims.” (paras 39–40, 68)
4. Claims of corresponding foreign patents. “While determining infringement in India, the variation in the language of the claims in different jurisdictions, cannot be examined in a minute fashion.” “The language of the claims in corresponding foreign patents can be looked at to ensure that broadly the invention is the same and no substantive claims have been either deleted or withdrawn.” “However, the granted claims in foreign jurisdictions cannot be read as though they are etched in stone.” “The unique nature of grant of patents in various jurisdictions or the wording of claims in various jurisdictions would only have a broad impact on the Indian claims, and not more.” (para 41)
5. The United States amendment. “This language, does not in any manner, restrict the claims of IN 893, but in fact adds an additional feature of ‘reduction of overlap’.” (para 43) “This addition of language does not render the suit patent invalid, but in fact strengthens yet another novel feature of the suit patent.” (para 44) “It is the well-settled position in law, that a patent specification and the claims have to be interpreted not literally, but purposively.” (para 45) Citing the Division Bench in Cipla v F Hoffmann-La Roche (2015), the Court held: “It is also now a settled position in law that, statements made after the grant of a patent, would not be relevant in interpreting grant of a patent.” (para 47) “Thus, the additional language in the claims of US 582 cannot be read as a limitation but is merely highlighting another aspect of the patented invention.” (paras 43–48)
6. The article of March 2006. “Out of the prior arts referred to by the Defendants, the Article dated 1st March, 2006 is a publication related to the patented invention itself.” “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.” (para 57) “At this stage, this court is of the opinion that the article per se, could not have by itself, been sufficient to anticipate the disclosure in the invention. The article at best may have given a hint as to what was coming. Nothing more.” (paras 57–58)
7. The word ‘replacing’. “A patent claim cannot be read in such a literal manner. The purpose of this sub-sector antenna, is set out in the claim - replacement would be physical, but it does not mean that only existing antennae have to be replaced.” “Thus, any telecommunication network wherein a sector antenna which has an asymmetrical sub-sector coverage area is used would be clearly attracted. The difference, thus, sought to be urged between brownfield and greenfield use is based on a misinterpretation of the claims.” (para 62)
8. Preferred embodiments and equivalence. “In any event, the claims of the invention, and the beam patterns attached in the patent specification, show that the beam patterns need not be identical to the drawings accompanying the specification. Minor variations would not obviate infringement. Equivalence would also apply. The preferred embodiments of an invention are what they say, i.e., they are only the ‘preferred’ embodiments. They are not the only embodiments. The claims are broader than the preferred embodiments and have to be read as such.” (para 64)
9. Withheld beam patterns. “The bare denial being given shows that the Defendants have deliberately chosen not to produce the beam patterns.” (para 64) “The withholding of beam patterns, by the Defendants, leads this Court to draw an adverse inference against the Defendants, as the Defendants have withheld and not disclosed the most crucial aspect of this case i.e., the beam patterns of their antennae.” (para 65) “In a patent infringement action, once the Plaintiff, prima facie establishes infringement, the onus shifts on the Defendants, to disprove the same.” “A perusal of the claims, complete specification, and the beam patterns read with the two reports by the experts, placed on record by both parties, clearly establishes infringement.” (paras 64–66)
10. The objections under section 3. On section 3(a): “A reading of the claims shows that the same are not vague in any manner. The objection is not tenable.” On section 3(d): “The objection under Section 3(d) is applicable when there is a ‘mere discovery of a new property or new use. This provision does not apply in cases where on the basis of existing technology, newer technology is developed and better efficiency is achieved.” On section 3(f): “This objection contradicts the objection under Section 3(d). The invention in the present case is clearly not a rearrangement but a change in the manner in which asymmetry is introduced in an antenna leading to greater efficiency which not compromising on quality.” (para 67)
11. Changed circumstances. “However, now there are several changed circumstances, such as:” “(a) IN 893 is no longer a new patent. It is more than nine years old.” “(c) Conversely, US 582 patent has been granted and upheld in the interregnum in the USA;” “(d) One of the Defendants has taken a global license to the patent i.e., the party which had itself raised the challenge in the US has now acknowledged the validity and has taken a licence;” “(f) The Defendants in the present case, themselves were notified of IN 893 since 2017, however, till date, they did not choose to either file a revocation, or even a counter claim in the present suit, seeking invalidation.” (para 70)
12. Procedure. Varying an earlier interim order. “It is the settled legal position that a previous order under Order XXXIX Rules 1 and 2 CPC can be varied in the same suit, owing to subsequent circumstances. Such an order does not operate as ‘res judicata’.” relying on Raj Rani Sharma v. Gayatri Kukreja and Karnataka State Financial Corporation v. N. Narasimahaiah (para 71). “These subsequent facts cannot be ignored by a Court, especially in a patent infringement suit, where the term of the patent is limited and with each passing day, the exclusive monopoly of the patentee is severely dented.” “In any event, an order in an interim injunction application is only prima facie in nature, and is rendered in the facts and circumstances pleaded in a particular case.” (paras 71, 73)
13. A patent of long standing. “Thus, in Sandeep Jaidka (supra), the Court concluded that if the patent is of long standing then a case is made out for grant of an injunction.” (See Sandeep Jaidka v Mukesh Mittal (2014).) “As on date, the suit patent is one of long standing unlike when it was considered in the earlier round of litigation in two other suits in Ten XC v. Mobi Antenna (supra).” “Merely relying on the findings of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra), the Defendants cannot claim that there is a credible challenge to the validity of the patent. The findings of the Ld. Single Judge were prima facie in nature, and did not conclusively decide on the validity of the patent.” (para 76)
14. The party notified of a patent. “When any party is notified of patent rights, there exists an obligation on the said party to either challenge the patent or rebut the allegations made in the notice. It cannot simply choose to wait for the Plaintiff to file a suit for infringement, and in the said suit, withhold crucial and relevant information and vital data;” (para 77)
15. Injunction or terms. “Patent rights are limited in nature - especially in the telecommunication industry, technologies are changing rapidly. The Defendants having not responded and having not disclosed crucial information to the Court, are liable to be put to terms;” “The fact that the Plaintiff has already licensed its patents, and the present patent not being a standard essential patent, the Plaintiff has a right to insist for an injunction once infringement is established.” “However, in a case where the Plaintiff was willing to license the patent and the Defendants have merely procrastinated, the Defendants can be put to terms.” (para 77)
16. Disposition. Having perused the licence agreement, which “contemplates an initial lumpsum payment and percentage of net sales as the royalty” (para 79), the Court held that “the Defendants are liable to deposit some amounts in the Court in order to continue the sales of these antennae in India.” (para 80) “Insofar as the sales made prior to date of suit to the tune of $64,405,583” “the Defendants are directed to give a Bank Guarantee for a sum of Rs.40 crores, which is approximately ten percent of the above amount.” (para 81) “Insofar as the sales made during the pendency of the suit are concerned, the total sales are to the tune of $21,835,000, which come to Rs.148,47,80,000/-, ten percent of which is approximately Rs.14.5 crores.” “If the Defendants do not comply with the above directions within one month, the Defendants shall stand restrained from manufacturing, selling, offering for sale any models of antennae which infringe suit patent number IN 240893.” (para 82) “All three I.A.s are disposed of in the above terms.” (paras 79–83)

Subsequent treatment

• Appealed — The Supreme Court, by its order of 20 September 2019 in SLP No. 21938/2019, “restored the Single Judge’s order”, as recorded in Communication Components Antenna v Ace Technologies (2022) (para 6). In Ace Technologies v Communication Components Antenna (2023) the Division Bench found “no fault with the learned Single Judge in drawing an adverse inference” (para 96), did “not find that the impugned judgment, placing the appellants to terms, warrants any interference in this appeal” (para 99), and modified it “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” (para 100).
• Followed — In Communication Components Antenna v Rosenberger Hochfrequenztechnik KG (2026) the Delhi High Court, on the same patent, recorded that the TenXc article “has also been considered by this Court in the interim judgement dated 12th July, 2019 in Ace Technologies (supra)” and held that “by itself, the TenXc Article would not satisfy the threshold required for anticipation of the subject invention” (para 180); on the United States prosecution history it held that “This ground has already been considered by this Court in Communication Components Antenna Inc. vs. Ace Technologies Corp. And Ors., 2019:DHC:3323”, reproducing paras 42–49 (para 198).