Validity and infringement of a Patent:

Introduction

In Communication Components Antenna Inc v. Ace Technologies Corp. and Ors [CS (Comm) No. 1222/2018], the Plaintiff had sought a permanent injunction restraining infringement of one of its patents. A single Judge of the Delhi High Court, vide a recent interim order, directed the Defendants to deposit an amount proportional to the total value of sales of some of its products, as they appear to be infringing the Plaintiff’s patent.

The Ld. Judge has given a reasoned and detailed analysis as to why the Plaintiff’s patent appears to be valid and as to why the Defendants appear to infringe the Plaintiff’s patent.
 
Brief Facts

The Plaintiff is involved in the business of manufacturing and selling products relating to the telecommunication industry, such as antennae, amplifiers, and low loss combiners. The first Defendant – M/s Ace Technology Corporation – is also in the business of manufacturing and selling antennae for the telecommunication industry.

The Plaintiff has a patent in India numbered 240893 (hereinafter, the ‘893 patent) and titled “Asymmetrical Beams for Spectrum Efficiency”. The ‘893 patent discloses a split-sector antenna for use in a sectorized cellular communications network having a base station supporting at least one sector. Each sector has an associated sector antenna that has a critical coverage area extending therefrom. The split-sector antenna is constructed and arranged for replacing the sector antenna and has a plurality of sub-sector coverage areas extending therefrom. At least one sub-sector coverage area is asymmetrical. A total critical coverage area provided by the plurality of sub-sector coverage areas is substantially equivalent to the critical coverage area of the replaced sector antenna. The asymmetrical sub-sector coverage area reduces overlap with neighboring sub-sector coverage area as compared to overlap of the replaced antenna.

The application for the ‘893 patent was originally filed in India on August 5, 2008 as a national phase application of a PCT application. Subsequently, the ‘893 patent was granted on June 9, 2010. The corresponding US patent numbered US 8311582 (hereinafter, the ‘582 patent) was granted on November 13, 2012 and the corresponding European Patent Application, numbered 07710762.1, is pending, and yet to be granted.

The Plaintiff contended that some models of antennae of the Defendants infringe the ‘893 patent. The Plaintiff issued letters to the Defendants calling upon them to obtain a license for the ‘893 patent. However, the Defendants did not respond. Therefore, the Plaintiff filed the suit seeking permanent injunction against the Defendants.

The Defendants argued that the validity of the ‘893 patent was challenged in Ten XC Wireless Inc v. Mobi Antenna [CS (Comm) No. 977/2016] and Ten XC v. Andrew Comm Scope [CS (Comm) No. 1072/2016]. Further, vide its order dated November 4, 2011 in the first suit, a single Judge of the Court opined that there appears to be a credible challenge to the validity of the ‘893 patent and declined interim injunction to the Plaintiff.

The Defendants also relied on various prior art documents to contend that the ‘893 patent is invalid and that the ‘893 patent is not a patentable invention under Sections 3(a), 3(c), 3(d), and 3(f) of the Patents Act, 1970. The Defendants challenged the validity of the ‘893 patent based on various statements made by the Plaintiff in the prosecution of the corresponding patent in USA and on the fact that the corresponding European patent application is not yet granted.
 
Contentions of the parties

The Plaintiff submitted that the novelty of the ‘893 patent lies in the fact that by changing the beam pattern of antennae, greater efficiency is achieved in the usage of spectrum. The ‘893 patent provides asymmetrical beam patterns in split-sector fixed beam antennae. According to the Plaintiff, any split-sector antenna that emits asymmetrical beams that result in asymmetrical sub-sector coverage area(s) such that the total critical coverage area of the sub-sector coverage areas of the split-sector antenna is substantially equivalent to the critical coverage area of a sector antenna that it replaces, is covered within the scope of the ‘893 patent.
As for the suit Ten XC v. Andrew Comm Scope, the Plaintiff submitted that Andrew LLC, against whom this suit was filed, was a subsidiary of CommScope Technologies LLC, which opposed the ‘582 patent before the US Patent Trial and Appeal Board (hereinafter, the ‘PTAB’). The validity of the ‘582 patent was upheld by the PTAB, and CommScope Technologies LLC took a global license for the Plaintiff’s patent. Therefore, the said suit was disposed of. As for the suit Ten XC Wireless Inc v. Mobi Antenna, the Plaintiff submitted that various developments have taken place since the order declining interim injunction was passed. The developments include upholding validity of the US ‘582 patent by the PTAB and the opponent to the ‘582 patent obtaining a global license for the Plaintiff’s patent.

The Plaintiff further submitted that the slight difference in the language of the claims in the ‘582 patent from that of the ‘893 patent is merely clarificatory in nature and does not make any difference in terms of the scope of exclusivity. The Plaintiff added that the Defendants did not raise any new grounds for validity more than what was considered by the PTAB.

The Defendants contended that the addition of an additional limitation in the claims of the ‘582 patent shows that the ‘582 patent would have been obvious without the limitation. Therefore, the Defendants argued that the ‘893 patent, without the additional limitation in the claim, is obvious.

The Defendants also argued that the presence of the words ‘replacing’/‘replacement’ in the claims of the ‘893 patent means that the claims would be infringed only when an existing antenna is replaced with the split-sector antenna and not if a new antenna is used or installed. Since the Defendants are involved in the manufacture and sale of antennae, and not in replacement of existing antennae, the Defendants argued that they do not infringe the ‘893 patent.

The Defendants relied on certain graphics to argue that the total coverage area of the ‘893 patent is not comparable with that of their antennae. The Defendants also relied on a technical opinion of an expert to submit that the beam patterns shown in the plaint do not reflect the beam patterns of the ‘893 patent. The Defendants further submitted that they need not disclose their beam patterns because the Plaintiff had failed to discharge its own onus.
 
Analysis and findings of the Court

The Court observed that the wordings of the claims in different jurisdictions may be different due to the subjectivity in the prosecution of the patent application. The Court also held that the language of claims in the foreign jurisdictions can be looked at to ensure that the invention is broadly the same and that, for determining infringement in India, the variation in the language of the claims in different jurisdictions need not be examined in a minute fashion.

Addressing the issue of the difference in the language of the ‘582 patent and the ‘893 patent, the Court observed that the independent claims of the ‘582 patent has the below language in addition to the features in the independent claims of the ‘893 patent:

wherein said at least one asymmetrical sub-sector coverage area reduces overlap with said neighbouring sub-sector coverage area comparing to overlap of the replaced antennae while maintaining the critical coverage area of the replaced antenna.

The Court held that the above language is not a further limitation when viewed in the context of the invention. Specifically, the Court held that the feature of ‘reduction of overlap’ in the above language is part of the ‘893 patent as well. Therefore, Court rejected the Defendants’ contention that the ‘893 patent was obvious without the above additional language.

The Court also rejected the Defendants’ argument that the word ‘replacing’/ ’replacement’ in the claims refers to an actual replacement of an existing antenna with a new antenna. The Court rejected such a literal reading of the claim. The Court, relying on Catnic Components Ltd. V. Hill and Smith [1982 RPC 183] and F. Hoffman-La Roche Ltd. v. Cipla Ltd. [225 DLT 391], held that the claims have to be interpreted not literally, but purposively. By analyzing the purpose of the sub-sector antenna in the invention, the Court observed that replacement does not mean only replacement of existing antennae – even the use of a new sector antenna with an asymmetrical sub-sector coverage would also be covered under the invention. This is because the new sector antenna would still be an antenna where a sub-sector coverage area is replaced from a symmetrical one to an asymmetrical one. To sum up, the Court held that, in the context of the invention, replacement is used to denote the purpose for which the sector antenna having a symmetrical sub-sector coverage area is being replaced with a sector antenna having an asymmetrical sub-sector coverage area. Therefore, according to the Court, any telecommunication network where a sector antenna having an asymmetrical sub-sector coverage area is used, would be covered by the ‘893 patent.

The Court also took note of the fact that the Defendants had not produced beam patterns of their antenna to argue that they do not infringe the ‘893 patent, even though it was convenient for them to do so. The Court observed that, once the Plaintiff has established a prima facie case of infringement, it was up to the Defendants to disprove the same. Considering the fact that the Defendants did not produce their beam patterns to disprove infringement and that it would have been convenient and easy for the Defendants to do so, the Court concluded that the Defendants had deliberately chosen not to produce their beam patterns, which were crucial aspects in this case.

The Court rejected the contentions that the ‘893 patent is not patentable under sections 3(a) and 3(c) of the Patents Act, 1970, as the claims are not vague and are not discoveries. The Court also held that the ‘893 patent relates to newer technology developed based on existing technology and achieves better efficiency and is therefore allowable under section 3(d). The Court further held that the invention is not a mere arrangement/re-arrangement of known components and rejected the challenge based on section 3(f).

Similarly, the Court rejected the Defendants’ contention that the ‘893 patent was invalid in view of some prior art documents, as the prior art documents seemed insufficient to anticipate the disclosure of the invention.

Addressing the order in Ten XC Wireless Inc v. Mobi Antenna, in which the Court had held that there was a credible challenge to the validity of the ‘893 patent, the Court observed that an important factor considered by the Court to determine that there was a credible challenge to the validity was the rejection of the ‘582 patent by the US Patent and Trademark Office (USPTO). However, this factor is no longer valid, as the ‘582 patent has been granted and upheld. Another factor considered by the Court to determine that there was a credible challenge was that the ‘893 patent was a recent one (the ‘893 patent was granted in June 2010 and the suit was instituted in September 2010). This factor was also no longer valid, as the ‘893 patent is more than 9 years old. In this period, the Plaintiff’s patent has not been revoked or held invalid in any jurisdiction. The Court also considered the judgment in Sandeep Jaidka v. Mukesh Mittal & Anr [CS (OS) No. 1900/2010], in which it was concluded that if a patent is of long standing, then a case is made out for grant of an injunction. In view of the above factors, the Court rejected the Defendants’ contention that there is a credible challenge to the validity of the ‘893 patent by merely due to the order in Ten XC Wireless Inc v. Mobi Antenna.

In view of the above findings, the ‘893 patent was found to be prima facie valid and being infringed by the Defendants. Since the first Defendant claimed that it did not have any assets in India, to continue sales of antennae in India, the Court ordered the Defendants to deposit an amount approximately equal to ten percent of the sales made.
 
Conclusion

The instant judgment has emphasized on the importance of purposive construction of claims to ensure that the claims are not construed too narrowly. The judgment has also made it clear that, for determining infringement in India, the Courts will primarily consider the claims granted in India, while the corresponding claims in foreign patents will be looked at only to ensure that the invention is broadly the same. The judgment also makes it clear that an older patent will be considered more favorably for injunction.

[The authors are Principal Associate and Principal Partner respectively in the IPR practice, in Lakshmikumaran & Sridharan, Chennai]