Patent

The Growing Promiscuity of Indian Courts in Granting "Ex Parte" Injunctions


In several earlier posts, I lamented the fact that some Indian courts are beginning to demonstrate a rather promiscuous propensity to grant “ex-parte” restraining orders (i.e. orders without even hearing the other side) at the drop of a hat in highly technical patent cases.

The latest example is the case of Ramkumar, an overzealous patentee who’s claimed much more than what he legitimately invented and squeezed illegitimate royalties out of many dual sim phone importers in the process. Our earlier post focussed on a writ petition filed by Samsung claiming that the customs rules sought to be invoked by Ramkumar are constitutionally flawed, as they vest Indian customs authorities with the discretion to label even legitimate imports as “prohibited goods” without even hearing the importer. This writ petition was heard last Tuesday (March 17th), and was withdrawn by Samsung with the liberty to refile, since Samsung’s goods were allegedly seized by the Delhi customs authorities as well and Samsung wished to add this key jurisdictional component to the writ. As far as my understanding goes, the writ has not been refiled as yet.

Today, the Economic Times reports that Ramkumar obtained an ex parte restraining order against several defendants that allegedly manufacture and sell dual SIM phones in India. It states:

“The Madras High Court on Monday restrained mobile phone manufacturers Samsung, Mirc Electronics and Spice Mobile and several retailers from manufacturing and selling multiple SIM holding mobile phones.

“On a petition filed by our client Somasundaram Ramkumar, Justice Jaypaul has issued an injunction whereby Samsung Electronics, Mirc Electronics and Spice Mobile were restrained from manufacturing multiple SIM holding mobile phones,” D Ferdinand, Ramkumar’s lawyer and a partner at legal firm BFS Legal, said.

Several retailers, including online retailers Ebay India and Rediff.com and importers were also restrained from selling such phones, he added.

Earlier, Ramkumar had accused the companies and retailers of infringing his patent for multiple SIM mobile phones.

The case will be taken for hearing April 13.”

Brevity is no doubt the soul of wit. But the judge in this case (Hon Justice Jeyapaul) takes this a bit too far when he deems it fit to dispense with the matter by merely stating that:

“Heard the submissions made by the learned counsel appearing for the applicant….

The applicant has produced Patent Certificate granted on 11.2.2008 for the invention of Mobile Phones with plurality of Sim Cards allocated to different communication networks:

…Therefore, there shall be an order against respondents 1, 4, 6, 7, 8, 10 and 11 that they shall not engage in manufacturing dual or plural sim card phone India till 13.4.2009.”

(please note that these are reproductions of the key parts of the order, a certified copy of which is still not available).

Given that this was an ex parte restraining order against several defendants, shouldn’t his Lordship have given us some inkling of how his brain worked in assessing the scope of the patentee’s claim and the fact that the defendants products’ necessarily fell within such claims? And more importantly, as to how he assessed the case, keeping in mind the 3 factor test for grant of injunctions: prima facie case, balance of convenience and irreparable injury. Or did his Lordship assume that like him, all of us are blessed with an innate “patent” sense and sensibility. Or perhaps, this is but a manifestation of Justice Stewart’s “I know it when I see it” approach…

In a previous post, I had highlighted the fact that Ramkumar’s patent scope is rather narrow:

“In fact, in the case at hand, it would appear that the patent does not cover all “Dual SIM phones” (as Dual SIM technology itself has been around and is part of the prior art), but only those Dual SIM phones that also provide for more than one headphone/earphone jack, so that two people can be on two calls at the same time via the same handset. However, most of the goods seized by customs (consisting of both Samsung’s products and a number of other imports belonging to several Indian importers) appear to be generic Dual SIM phones with just one headphone/earphone jack. In other words, the patentee is attempting to claim rights over technology that is part of the prior art and clearly outside the scope of his patent.”

Later in the comment section, I added:

“…the essential element of the patent is the fact that you could have multiple jacks on a Dual Sim phone. And the patentee has been wrongly instigating customs to seize all dual SIM phones and not just ones with multiple jacks. Interestingly the first international search report in relation to Ramkumar’s alleged invention states:

“The search has revealed that the concept of a mobile phone having provisions for utilizing at least two SIM cards allocated to different communication networks in order to simultaneously operate said mobile phone in said different communication networks according to the subject of independent claim 1 is NOT NOVEL since a mobile phone providing the same features as claims 1 to 6 of the present application are directed to is at least disclosed in German Offenlegungsschrift DE 199 19 389 A1 (SIEMENS AG) 2 November 2000.”

Perhaps after the parties are heard, the judge may come to realise the folly of his “innate” patent sense!

On a broader note, one hopes that our judiciary will refrain from readily assuming that an ex parte philosophy that evolved in the context of trademark counterfeiting and copyright piracy cases could just as easily be transposed to patent cases, where issues of validity and non infringement are often raised.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

2 comments.

  1. AvatarIndian Patent Agent

    Ridiculous!! With such a pathetic claim drafting, he goes ahead and sues MNC’s. I think someone should ask him to subscribe to SpicyIP, at least then he would know how bad his case is.

    The first thing I did was look up on BFS legal. There is a lawyer advising him?? or taking him on a ride?? There better be more to this case than what meets the eye, else it is just heights of stupidity.

    Here we have multinationals spending thousands of $$ drafting a high quality patent and then ending up with something unenforceable in India, and on the other hand we have this claim getting an ex-parte.

    Just read an update on this http://www.mydigitalfc.com/telecommunication/samsung-dual-sim-plea-dismissed-withdrawn-558 where the petition filed by samsung was dismissed on grounds of territorial jurisdiction.

    In fact the patentee has only started litigation after 1 year from grant(11.2.08 as in the HC decision) after passing the Post-grant opposition period. Clever!!

    Was just wondering if there was any surety bond made by the Patentee when the complain was made, to confiscate the goods, at the Commissioner of Customs as per the enforcement rules

    Patently Yours

    Reply
  2. AvatarADS MURUGESAN

    Exactly!! after one year they filed a writ in madras high court by WP 1570/2009 dated 11-2-09.

    They completed the formalities of registering with customs and obtained a permanent registration number.
    Then they made the customs officials to issue a suspension notice for all the dual sim mobiles imported.
    If you want to clear it you can pay Rs.25/pc and get a NOC letter from Mr.Ramkumar for the particular Bill of Entry in which(NOC letter) he states that —–

    “The above mobile phones are manufactured using my patented technology under patent Number214388 issued by Indian patent office.
    I hereby permit the import of the above goods by the above importer through Air/sea/land cargo in terms of rule 2 og the Intellectual property rights(Imported goods)Enforcement rules,2007.The importer can take delivery and comply with all further statuary requirements”

    With this letter you can clear the goods.
    This is new system created in the customs and Mr.Ramkumar is the authority to decide whether one can import the dual sim mobile or not.

    The suspension notice will contain
    “As ther is reason to beleive that the above goods have been imported in violation of the Intellectual property Rights of Sri.S.Ramkumar,the B/E has been suspended for clearance to determine whether the subject goods have infringed the intellectual property Rights of the above rights holder or not.
    You are requested to be present at the time of examination of the goods along with the right holder for the purpose of demonstarting and determining whether the imported goods are infringing Intellectual Property Rights or Not”

    At this stage when the importer explained very clearly either from the abstract of his patent or by the claims of his patent that the imported goods are not infringing his patented design (as explained by Mr.Shamnad also””In fact, in the case at hand, it would appear that the patent does not cover all “Dual SIM phones” (as Dual SIM technology itself has been around and is part of the prior art), but only those Dual SIM phones that also provide for more than one headphone/earphone jack, so that two people can be on two calls at the same time via the same handset.),the final answer from the customs is advising to get NOC from the patent holder or else they will not take any decision clearly.So the small importers have no other go but to get the NOC.
    So if this forum can present this case to customs or to the court and can get a clear result it will help small importers very much.

    Reply

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