Ace Technologies Corp v Communication Components Antenna Inc (2023)

Summary

“The appellants have filed the present appeal impugning the judgment dated 12.07.2019 (hereafter ’the impugned judgment’) rendered by the learned Single Judge” (para 1) in the respondent’s suit “seeking a decree of permanent injunction restraining infringement of Indian Patent numbered IN240893” (para 2). “The respondent’s suit is premised on its claim that it is the holder of the Suit Patent, which is being infringed by the appellants by manufacturing of the antennae overseas and supplying the same in India.” (para 3) Under the impugned judgment (see Communication Components Antenna v Ace Technologies (2019)), “In the event of non-compliance of the said directions, the appellants would stand restrained from manufacturing, selling, offering for sale any models of antennae which infringe the Suit Patent.” (para 4) “The title of the Suit Patent is ‘Asymmetrical Beams for Spectrum Efficiency’.” (para 50) The appellants contended that “the Suit Patent is vulnerable on the ground of credible challenge to its validity” (para 19).

The Bench rejected “the contention that the impugned judgment is required to be set aside on the ground that this Court does not have the jurisdiction to entertain the suit” (para 35) and held: “Prima facie, we are unable to accept the view that the Suit Patent is vague or otherwise incapable of being patented under the Act.” (para 75) It found no error “in the method of comparing the beam patterns” (para 89) and “no fault with the learned Single Judge in drawing an adverse inference” (para 96). It granted the appellants “one more opportunity to produce the allegedly offending antenna for examination of a court appointed expert” (para 98) and permitted “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) “The appeal is disposed of in the above terms.” (para 102)

What the court decided

1. Jurisdiction over a foreign manufacturer. “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.” (para 31) “It is also material to note that if infringing products were imported to India by any person other than the appellants, the respondent would also have the right to interdict such imports as well.” “Considering that it is not in dispute that the appellants have been selling their products to customers who are located in India and are carrying on activities in the country, the onus to show that no part of the transaction of sale and purchase of antennae was consummated in India, rests with the appellants.” (paras 31, 34)
2. Claims, specification and embodiments. “We agree with the contention that the embodiments cannot be read to expand the scope of the Claims. 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.” (para 42) After quoting Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1979) (para 43), the Bench held: “The claims cannot be read in isolation. It is necessary that the same be read in the context of specifications and the description of the patent.” “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.” (paras 42–44)
3. A known product configured anew. “Thus, the necessary question to be addressed is not whether an antenna emitting asymmetrical beams was disclosed by prior art; it is whether an antenna with the given configuration, which enhances subscriber capacity in a cellular wireless communication system, was disclosed by the prior art. A mere discovery of a new use of a known process of a product would not be patentable under Section 3(d) of the Patents Act. However, 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.” “Prima facie, 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.” (para 60) “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.” (paras 60–61)
4. The Mobi Antenna judgment. “In view of the above, the judgement of the learned Single Judge in Communication Components Antenna Inc. v. Mobi Antenna Technologies (Shenzhen) Co. Ltd. & Ors. (supra), would be of little assistance to the appellants. The same was set aside and on the second round the issue framed was decided against the defendant.” (para 66)
5. Sufficiency and the skilled person. “The question whether the complete specification sufficiently and fairly described the invention and the method by which it is to be performed, is required to be viewed from the standpoint of a person possessing skill in, and average knowledge of, the art to which the invention relates.” (para 67) “The contention that only the Claims have to be read for the purposes of adjudicating the challenge under Section 64(1)(h) or Section 64(1)(a) of the Patents Act, is unmerited. 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.” (para 71) “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.” (paras 67, 71, 73)
6. Objections of foreign patent offices. “We are unable to accept that the queries raised by patent offices overseas are sufficient to, prima facie, accept the said observations to be correct. 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.” “The fact that a patent has been granted in some countries and revoked in another, underscores the point that the question whether the Suit Patent is liable to be revoked, is required to be considered by the Court independently.” (para 70)
7. The United States amendment. Of the contention that the Single Judge “had erred in holding that the additional explanation, as added in the claim before the United States Patent Office, was only clarificatory”, the Bench held: “We are unable to accept that the view of the learned Single Judge is patently erroneous and therefore, warrants any interference in these proceedings.” (para 74) “Prima facie, we are unable to accept the view that the Suit Patent is vague or otherwise incapable of being patented under the Act.” (paras 74–75)
8. Models not pleaded in the plaint. “Plainly, the plaintiff cannot be granted any relief unless the necessary foundation for seeking such relief has been pleaded and the defendant has had an opportunity to contest the same.” (para 81) “There is no provision in the CPC” (“Code of Civil Procedure”) “, which permits the plaintiff to press an actionable claim by filing an affidavit during a subsequent stage in the suit, without amending the plaint.” (para 82) “We are unable to accept that filing an affidavit during the pendency of the suit can be a substitute for amendment of the pleadings. A prayer for relief, which is not supported by pleadings and evidence, cannot be granted. It is also well settled that interim relief is in aid of final relief; if final relief cannot be granted, there is no question of granting any interim relief.” (paras 81–83)
9. The safe distance rule. “Having stated the above, it is also material to mention that the plaintiff had sought a blanket order restraining the appellants from infringing the Suit Patent.” “It is also relevant to note that a party that suffers an interim injunction, in respect of the subject matter of the suit, is required to follow the safe distance rule.” “It is not open for the party to try and overcome court orders by continuing its infringing activity in another form or manner.” “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.” (para 84) “The Court has merely put the appellants to terms and directed that they deposit specified value of the sale proceeds (10%) with the Registry of this Court.” (paras 84–85)
10. Comparing beam patterns. “The contention that the specifications of the Suit Patent do not disclose power and phase weightings is, prima facie, erroneous. A reading of the embodiments, as explained, do show power and phase weightings.” (para 88) “Figure 3 of the Suit Patent was only an illustration to explain the invention and not the actual beam pattern derived from the given power and phase weightings” “The scope of the patent is broader than the drawings used for describing the embodiments. The appellants did not produce any expert evidence to effectively counter the opinion as tendered by Mr. Mark Cosgrove.” (paras 88–91)
11. Adverse inference from non-production. “Clearly, it was necessary for the appellants to fairly produce the beam pattern of the antennae manufactured and dealt with by them.” “However, 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.” (para 95) “We find no fault with the learned Single Judge in drawing an adverse inference on the failure on the part of the appellants to produce the antenna and agree to examination by a court appointed expert.” (paras 95–96)
12. Appellate interference with discretion. “The learned Single Judge had exercised her discretion and granted the interim relief. We do not find that the exercise of discretion to be arbitrary or capricious. We also do not find that any settled principles of law have been disregarded. Thus, on the test laid down in the case of Wander Ltd. & Anr. v Antox India P. Ltd.: 1990 Supp SCC 727, we do not find that the impugned judgment, placing the appellants to terms, warrants any interference in this appeal.” (para 99)
13. Disposition. “In view of the above, we consider it apposite that the appellants be granted one more opportunity to produce the allegedly offending antenna for examination of a court appointed expert.” (para 98) Finding that “the learned Single Judge had examined a royalty agreement entered into between the respondent and another licensee for use of the patent and had apparently, determined the terms based on the said agreement”, the Bench considered it “apposite to modify 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.” (para 100) “The appeal is disposed of in the above terms.” (paras 98, 100, 102)

What the court did not decide

“In any view of the matter, the disputed questions relating to the appellants’ activities in India are a matter of trial.” (para 33) “Before concluding, we consider it apposite to clarify that nothing stated in this judgment, or the impugned judgement would influence the final decision on the merits of the suit.” (para 101)

Subsequent treatment

• Followed — In Telefonaktiebolaget LM Ericsson v Lava International (2024) the Delhi High Court, on reading a specification from the standpoint of the person skilled in the art, recorded that “The Division Bench of this Court in Ace Technologies v. Communication Components, has also made similar observations”, reproducing paras 71 and 73 (para 104).