Communication Components Antenna Inc v Mobi Antenna Technologies (Shenzhen) Co Ltd (2022)

Summary

“In the judgment dated 10th August, 2021, the Court while rendering findings on Issue No. (i), rejected all grounds urged by the Defendants and upheld the patent. However, at the same time, the Court on its own, proceeded to analyse whether the subject patent was liable to be revoked under Sections 64(1)(h) and (k) of the Patents Act, 1970” and “it was concluded that the subject patent i.e., ‘IN240893’ - was invalid and liable to be revoked under Section 64(1)(h) and (k) of the said Act.” (para 2) “When the matter was carried out in appeal, the Division Bench vide order dated 1st December, 2021, set-aside the Single Judge’s judgement” and “an additional issue was framed” (para 3). The Defendant’s counsel “subsequently took discharge” and “despite service, there is no appearance on their behalf.” (para 3) “Concededly, there are no pleadings or evidence led on grounds of insufficiency of disclosure by the Defendants.” (para 8)

“The question that arises for consideration is whether the additional issue can be argued as question of law and whether the patent can be revoked on basis of terms of the patent itself.” (para 9) The Court held that “it cannot be said that insufficiency of a patent is purely a question of law that could be decided by the patent specifications” (para 13), and that “since the additional issue was premised on a question of fact, it was necessary for the Defendant to make a specific pleading to that effect and lead evidence in support thereof. In the absence of such pleadings and no evidence having been led in this case, this Court cannot conclusively hold that IN240893 is insufficiently disclosed. Therefore, the issue has to be answered in favour of the Plaintiff, and against the Defendant.” (para 14) “This brings us the issue of infringement of patent. List for further consideration on 16th March, 2022.” (para 15)

What the court decided

1. Claims read with the specification. “A claim in a patent is required to be construed in light of accompanying complete specifications.” “The sufficient disclosure of the invention in the patent specification is the consideration for which a patent is granted.” Citing F Hoffmann-La Roche v Cipla (2009), the Court held: “The Court would be generally slow to construe patent specifications against the patentee” (para 10)
2. The burden on the challenger. “The suit patent was not challenged by the Defendant in the pre-grant or post-grant stage. Now, faced with the infringement suit, the Defendant has set-up a plea of invalidity - which must be established by clear and conclusive evidence. Thus, the onus is on the Defendant to establish that the suit patent is liable for revocation on the ground of invalidity.” (para 11)
3. Grant and suspicion. “Although, the mere grant of a patent is not necessarily a prima facie indicator of its validity, it does not mean the patent has to be read as ‘inherently suspicious’. To dislodge a patent before a court of law, the scrutiny of claim construction for revocation of patent would have to be tested on a different footing.” “The applicant - seeking revocation of a patent - has the onus to explain in its pleadings as to how the claim construction renders it liable for revocation.” (para 12)
4. Pleading insufficiency. “This would necessarily mean that a party seeking revocation of a patent - must allege and show insufficiency of disclosure and specifically point out such deficiency and/or inadequacies in the patent specifications. Pertinently, while assessing the sufficiency of disclosure, the patentee should be afforded an opportunity to demonstrate that the ground of revocation is not sustainable on facts by leading evidence, and thus arises the requirement of specific pleadings.” (para 12)
5. The skilled person and the expert. “For claim construction, parties may also rely upon the opinion of an ’expert’ or ‘person skilled in the art’, to assist the Court for determination of patentability. The alleged insufficiency of disclosure has to therefore be tested, or seen through, the eyes of a person having the traits described in Section 64(1)(h) of the Act. This means that the opinion of an expert/ a person” “skilled in the art, may become relevant to conclude whether a patent is insufficient or not.” (para 12)
6. Not a pure question of law. “With no evidence led on the grounds of insufficiency of disclosure, determination of the grounds of revocation would not be feasible for the Court, as pure a question of law. Such grounds for revocation cannot be determined plainly by reading the patent specifications.” (para 12) “Thus, it cannot be said that insufficiency of a patent is purely a question of law that could be decided by the patent specifications, rather, at best, by reading the patent claim specifications; a doubt may be raised qua the validity of the patent. The same would still require determination and enquiry into further facts, on which no final opinion can be formed only on the basis of a prima facie view.” (paras 12–13)
7. Terrell and the Ayyangar Report. Relying on Terrell that “Whether or not the teaching of a specification is sufficient to enable the invention to be performed across the full width of the claim is a question of fact”, the Court found it “apposite to rely upon the extracts from the ‘Report on the Revisions of Patent Law’ by Justice Shri. N. Rajagopala Iyengar”, including: “I consider that the iteration of this requirement would induce foreign applications for patents to pay heed to this feature and also focus the attention of the courts to have regard to the state of the art in this country in judging of the sufficiency of description.” (para 13)
8. The additional issue. “In view of the foregoing, the Court is of the view that since the additional issue was premised on a question of fact, it was necessary for the Defendant to make a specific pleading to that effect and lead evidence in support thereof. In the absence of such pleadings and no evidence having been led in this case, this Court cannot conclusively hold that IN240893 is insufficiently disclosed. Therefore, the issue has to be answered in favour of the Plaintiff, and against the Defendant.” (para 14)
9. Procedure. Further directions. “This brings us the issue of infringement of patent. List for further consideration on 16th March, 2022.” “On the said date, the Court would also consider Mr. J. Sai Deepak’s submission regarding the issues of a certificate of validity of specifications under Section 113 of the Act.” (paras 15–16)

Subsequent treatment

• Followed — In Ace Technologies v Communication Components Antenna (2023) the Division Bench, on the same patent, recorded that on remand “the said issue was decided in the negative” and that “The learned Single Judge held that the question whether a patent was liable to be revoked under Section 64(1)(h) of the Patents Act was required to be interpreted from a standpoint of ‘a person possessing average skill in, and average knowledge of, the art to which the invention relates’” (para 65), and held that the earlier single-judge judgment “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)