Infringement and invalidation of patents is now money for old rope and people who know the ropes can make a killing. For those who are yet to learn the ropes of the subtle art of a calculated infringement, walking a tightrope is the safest option lest they end on the ropes. A “knotty” case from the Gujarat High Court involving a patent on gabions with synthetic ropes could probably show us the ropes of a near-successful infringement-and-invalidation bid. I call this near-successful because the order, which was given in an interlocutory proceeding (rather, in an appeal to an interlocutory proceeding), and which ostensibly claims to have been decided on “prima facie” basis, has all but passed the final verdict on the substantive issues in the case (though this does not mean that the judgment is a sound one). I fully agree with Mr.Basheer when he says that the spirit of a prima facie analysis must be maintained and a balance has to be struck between prima facie analysis and proper appreciation of the issues and stakes involved. For quite sometime now, SpicyIP has been recieving generous scoops on IP-related news and judgments from its readers and well-wishers; a prominent name among them is Sandeep Rathod of GenericIPguy blog and we thank him for for bringing such judgments, including the present one, to our notice.
A Prodrome to the Technology Involved and Details of the Patent
Gabion (sounds a bit like Corleone because it’s Italian) is a double twisted wire mesh cage filled with ballast (crushed stone or gravel). Gabions have partitions or baffles to separate the inner area filled with a hard durable material like ballast. Usually they are interconnected and form flexible, monolithic structures to retain earth and control soil erosion and floods.
The most common kind of gabions used typically comprise a basket filled with rocks. The basket serves to hold the rocks in place and the combination of the basket and rocks together form the gabion preventing erosion or acting as liners in multifarious applications. These are used as effective substitutes for concrete facings as they perform the additional function of a natural filter in addition to a barrier. Other forms of gabions are gabion mattresses and sack gabions. In addition to this, the manner in which the mesh of the container is formed affects the strength, durability and flexibility of the gabion. Common techniques include knotting, inter-lacing, inter-looping and inter-meshing.
Following are the details of the patent, which relates to the technology explained above and which is the bone of contention in the present case:
Title of the Patent: “Rope Articles Used in and as Gabions and/or Groynes for Preservation of River Bank Shores Sea Coastal Protection and the Like”
Patentee: Garware Wall Ropes Ltd.
Application Number: 459/BOM/99 (The copy of the order, consistent with the rest of the order, erroneously states the application number to be 455/BOM/99)
Patent Number: 195352
Date of Filing: June 22, 1999
Date of Publication: September 18, 1999
Date of Sealing of the Patent: May 13, 2005 (Out of sheer curiosity, I checked to see if May 13, 2005 was a Friday and lo! it was!!! No wonder the patent is headed towards invalidation. Paraskavedekatriaphobia probably does have some truth in it…)
Forum: Gujarat High Court
Appellants- Plaintiff- Patentee: Garware Wall Ropes Ltd.
Respondents-Defendants: M/S. TECHFAB India
Date of Order: 25-04-2008
Decision: Appeal Dismissed
Facts of the Case
The present case involves two manufacturers of synthetic ropes, twines, yarns and various rope products such as gabions. The first of them are the appellants/patentee Garware Wall Ropes Ltd. and the other, the respondents M/S Techfab India who have been accused of infringing the appellants’ patent on a certain “Synthetic Rope Gabion” (referred to as SRG in short). The judgment doesn’t explain what exactly are the features of SRG but for a vague mention that it is a gabion which uses synthetic rope, as opposed to a metal wire, as the meshing element that forms the outer body of the gabion (neither is the specification of the patent available on any of the patent websites). Accordingly, the appellants claim that the use of synthetic rope imparts greater flexibility to the gabion, which helps overcome the disadvantages associated with a rigid metal frame.
According to the appellants, an agent of theirs in Gujarat informed them of the infringement of their patent by the respondents early in October 2005 and on the 17th of the same month, an infringement suit along with a prayer for ad-interim relief was filed in the District Court, Surat, which was granted ex-parte the next day. Following this, the respondents filed for an appeal in the Gujarat High Court against the injunction, exactly a week after the grant of the injunction. The following day, the injunction was vacated by a Single Judge, with the observation that “in case the respondents feel that the impugned gabions are different than (from) the patented SRG invention of the appellant, the respondents were free to manufacture and sell the impugned gabions”. The respondents were then directed to maintain accounts of such manufacture and sale.
Consequent to the filing of a counterclaim by the respondents for revocation of the patent, the suit was transferred to the High Court (under proviso to s.104) along with an application by the appellants to quash the Single Judge’s order.
Issue(s)
To cut a long story short, the issue before the High Court was:
“Does the instant case merit the grant of an ad interim injunction?”
This may be further broken down into the following sub-issues each leading to the other:
1. Was the Single Judge justified in interfering with the order of the district judge? Leading to…
2. Was the decision of the district judge in line with the well-established principles for grant of an injunction? Leading to…
3. Have the appellants established a prima facie case of infringement? Leading to…
4. Does there exist a serious controversy with regard to the validity of the patent thereby negating the need for an injunction?
5. The questions of balance of convenience and irreparable harm are subsumed in the last two sub-issues.
We shall seek answers for sub-issues 3, 4 and 5 in that order, which in themselves would resolve sub-issues 1 and 2.
Dilemma
Before I move on to the issues, I must admit that I am tempted to discuss the question of validity first, before establishing prima facie infringement for that seems to be more logical to me.
If the premise of the argument is the validity of the patent and the validity of the patent is itself in question, shouldn’t the patentee/appellants irreducibly prove the reducible premise first before proceeding to the conclusion, which is the infringement? From a stand-alone perspective, may be the answer lies in the affirmative; but then, this would mean that every time the patent is “infringed”, the patentee would per force have to establish its (patent’s) validity over and over again before he moves to the issue of infringement and this certainly is not a justified burden. If this is so, “presumptive validity” does exist, but at which stage is the question? Certainly not when the substantive issues are being discussed in detail, because during that stage if the primary contention is the validity of the patent itself, how can one claim the benefit of “presumptive validity”??? To put it in Mr.Basheer’s words, one would be literally begging the question. However, presumption does exist in every case in favour of the defendant (or in this case, the person against whom a counterclaim is filed- the patentee) so long as the plaintiff does not produce clear and convincing evidence. This presumption is a part of the general burden of proof which exists in every suit, so strictly speaking, to classify this as “presumptive validity” of the patent may be misleading, if not totally incorrect.
On the other hand, when it comes to an interim stage, the primary focus is speedy expedition of the issue at hand, which is a stay order to ensure that the loss to either party is minimal. Such being the case, the patentee ought to be given the benefit of doubt temporarily since the patent application has passed through the official conduit presumably adhering to the conditions stipulated therein before maturing into a patent grant. However, this is again subject to the nature and gravity of evidence produced by the respondent/defendant to contest the validity of the patent apart from prior history of challenge to the patent/application. A proper and purposive interpretation of s.13(4), s.47, s.48 and s.113 leads one to conclude thus.
Having said this, my natural inclination is to see if the modus operandi of the Gujarat High Court in this case complies with the principles explained above.
Prima Facie Infringement of the Patent
On the issue of prima facie infringement, the appellants contended that the features of the respondents’ products were identical or substantially similar to the appellants’ patented invention. Apparently, at this juncture the respondents pointed out that they manufactured their ropes by intermeshing as opposed to weaving by the appellants and so the process and the product obtained thereby were entirely different. This line of defense seems to have received the endorsement of the Court, which too opined that since the appellants’ patent mentioned weaving as the process of netting and this was different from intermeshing as used by the respondents, the latter could not be accused of aping the patent. One must admit that this contention does have merit since, generally the durability and strength of the material used in the final product differs significantly depending on the type of netting technique used. However, this issue cannot be resolved without knowing if the appellants’ claim included the netting technique used in the manufacture of the gabion or if it broadly claims the mere use of a synthetic rope of a particular material in the gabion.
As I had stated in an earlier post on the Bajaj-TVS judgment, atleast in cases involving patents, any decision without an attempt to understand and list out the rudiments of the technology and embodiments of the patent in question as understood by the Court, is bound to suffer from logical fallacy. Upon reading the judgment in this case, the first thing that struck me was the absence of a single paragraph comprehensively or atleast crisply explaining what the Court has understood of the patent. Bits and pieces of the technology are scattered in unrelated pages and one gets the feeling that the driving force of the judgment was a preset notion. Coherence-that’s the keyword- and that seems to be lacking here. Even assuming that the Court has reached the right conclusion, it is legitimate to expect the judgment to reflect the same.
Interestingly, 5 of the 6 defendants were ex-employees of the appellants who according to the appellants were closely connected to the development of SRG. One of them was a senior marketing executive with the appellant and the other was in Quality Assurance (QA) and yet the respondents denied having obtained any know-how from them. The respondents have also gone on to state that defendants 4 and 5 have rejoined the appellants! No evidence for all these denials is mentioned in the judgment.
The discussion on prima facie infringement was restricted to the aforementioned points, but could have certainly received further attention and articulation. Purportedly, the reason the Court has moved on to the issue of prima facie invalidity of the patent is the existence of overwhelming anticipatory prior art and affidavits submitted by the respondents.
Prima Facie Case of Invalidity of the Patent
Assuming that the prior art cited was so substantial that the Court was inclined to treat the issue of prima facie infringement with such tantalizing brevity, one would have expected the judgment to give convincing reasons for the same. According to the Court, the invention in question, Synthetic Rope Gabion (SRG), was a mere admixture of known integers in the prior art and did not amount to more than a workshop modification i.e. separate use of synthetic ropes in hydraulic applications was known and so was the use of gabions. Consequently, according to the Court, the invention had to be nothing more than a 1+1 solution thus failing to rise to the standards of non-obviousness as laid out in s.2(j) of the Patents Act. Even otherwise, the use of synthetic ropes in gabions, according to the Court, was anticipated by prior use in the Water Resources Department of Patna as borne out by a letter from an employee of the said department. The appellants were also accused of suppression of relevant prior art which, according to the Court, is the duty of an applicant for a patent.
On the authenticity of the affidavits submitted by the respondents and the veracity of statements made in them, the Court was of the opinion that these were matters of evidence which had to be addressed in detail and could wait until substantive issues were mulled upon. Ironically, affidavits of experts submitted by the appellants were not considered.
On the ground of anticipation, according to the appellants, their claim is not on the whole concept of a gabion, but one that uses a particular kind of synthetic rope which is flexible, non-corrosive and can adapt to the contours of the ground. This was dismissed on the grounds that gabions with ropes made of resins and other polymers were well-known in prior art and so there was no inventive step in the patent (this was based on a list of 15 patents cited by the respondents). The logic is not complete; merely because polymers have been used in gabions in the past, one cannot conclude that the use of new kind of synthetic material lacks novelty. It could very well be that the appellants’ claim was with specific regard to the kind of synthetic material in question, probably irrespective of the kind of netting technique used. Assuming that the patent office had come across these 15 documents and yet had decided to go ahead with the grant of the patent, “presumptive validity” comes into picture. To this, it was pointed out that the appellants had concealed material facts and relevant prior art in their patent application; this issue calls for elaboration.
The pertinent question here is if the applicant for a patent has any duty in the first place to disclose prior art, material or otherwise? If yes, where in the Patents Act does it say so, explicitly or impliedly? The duty of the applicant with respect to disclosure of related matter has been laid out in s.8 and s.138 of the Patents Act, but is it restricted to these provisions? To answer these questions, we may have to go back to the basics. Generally speaking, the Act does not bind the applicant to disclose prior art in the specification; all that the applicant needs to disclose is the invention and the metes and bounds of his claim on it, to an extent that it fulfills the all-important criterion of enablement for the target audience i.e. persons skilled in the art. Such a proposition is subject to the ingenuity of the “invention” in question i.e. if the invention is so novel and non-obvious that it leaves the prior art way behind it that for all practical purposes there virtually exists no prior art (“relevant” prior art is as redundant as “granted”patent), it doesn’t make sense to demand disclosure of prior art from the applicant.
On the other hand, if the field of technology to which the “invention” relates is so dense that on a cursory reading of the application, the examiner is tempted to term it obvious or non-novel, for his own benefit, it becomes imperative for the applicant to disclose prior art so as to distinguish himself from the rest of the pack. There could be another way of looking at this; since a patent is granted to a technical solution (what is “technical”/”technological” is another raging controversy, lets leave it for another post) to a technical problem, the applicant has to disclose the problem his “invention” seeks to solve and in the process, per force discloses prior attempts to solve the problem. This means that in the natural course of things, to safeguard his interests, if the disclosure of prior art works to his benefit, the applicant may disclose the same, but it is certainly not mandatory for him to do so. The extreme exception to this would be in a situation where the applicant has himself or through those related to him, published anticipatory material and yet does not reveal it to the examiner, which would certainly amount to suppression of material facts. Strictly speaking, even such suppression does not amount to failure to disclose prior art, since there exists no such duty; however, such suppression would certainly qualify as breach of trust/confidence.
Again, without delving into these issues, the Court has said that when the validity of the patent has been challenged, the extra burden lies on the appellants to prove its non-obviousness and with this the Court proceeded to dispose the issue of validity.
Irreparable Harm and Balance of Convenience
In the opinion of the Court, since there existed a serious controversy as to the validity of the patent, grant of an injunction was out of question. In addition to this, since the patent was a recent one and had not gone through an agnipareeksha in a judicial proceeding earlier, it was yet to prove its validity. On the issue of the patent being a recent one, this has been discussed in earlier posts on SpicyIP where the six-year rule based on the Manika Thevar decision was debunked and yet it continues to dictate decisions. Notwithstanding the fact that the patent was a recent one, the appellants have been manufacturing the products since 1999 (after the filing of the patent) and had gained a sizeable market and reputation. This, in my humble opinion, should have been the motivating factor rather than the temporal proximity from the date of grant of the patent. Interestingly, at one point during the proceeding, it appears that the appellants gave the exact figure of the market share of the respondents. Using this very data, the Court said that since the appellants had such an accurate estimate of the respondents’ market share, the harm caused to the appellants was not irreparable and they could be sufficiently recompensed at a later stage! This is a typical Catch-22 situation for most petitioners seeking an injunction; if the damage caused can be quantified, then it is not irreparable and if it cannot be reduced to numbers, their claim stands the danger of being termed vague! However, the appellants can take joy from the fact that the respondents were asked to deposit half a million Rupees as guarantee.
Conclusion
It is not my stand that the appellants were wronged, but that the judgment could have been more reasoned (and hence the Kantian title- a synthetic judgment) and yet could have stayed within the bounds of a “prima facie” analysis.
