Indian customs authorities recently held against Ramkumar in a legal saga involving a patented dual SIM technology. By way of background, Ramkumar asserted patent rights over dual SIM enabled cell phones against several importers including Hansum India, Samsung and Micromax. While many of the smaller importers caved in and paid Ramkumar to have their consignments released by customs authorities, bigger players such as Samsung refused to pay and challenged his claims before customs authorities.If Roche (in the Tarceva litigation) was hit with a cost of Rs 5 lakhs for alleged misrepresentations and inconsistent statements before the Indian patent office and the Delhi High Court, one wonders what kind of a “costs” figure is likely to befall poor Ramkumar at the end of this interesting legal saga that has already been tainted with one murder.
Mumbai Customs Order
After hearing the parties (Ramkumar and Samsung), the Mumbai Commissioner of Customs (imports), Mathew John, went to the extent of stating thus:
“From the foregoing facts, it is clear that the claim made by Mr Ramkumar is vexatious because the impugned goods are covered by Prior Art declared by him and are not infringing the patent granted to him. Demurrage and other warehousing charges arising due to suspension of clearance are liquidated amounts and are to be borne by the Patent Holder.”
In particular, the Commissioner relied on the following points pleaded by Samsung:
i) Unity of Invention under Section 10(5) of the Indian Patents Act which mandates that the claims shall “relate to a single invention or to a group of inventions linked so as to form a single inventive concept..”
ii) The All Elements Rule: A claim will not cover any device unless that device contains all elements of the claim.
iii) Dependency of Claims: Claim 1 is the omnibus claim and all other claims depend on this first claim. Therefore if claim 1 is not infringed, none of the other claims are infringed.
iv) File Wrapper Estoppel: Ramkumar’s first application filed in 2002 claimed dual SIM technology broadly. Owing to objections from the patent office, it was narrowed down to include only those dual SIM phones that also permitted simultaneous communication via multiple headsets (or bluetooth facility). Ramkumar now cannot claim what he had expressly given up to address concerns of novelty. (nb: The Commissioner relied on Chisum’s patent treatise while ruling on this aspect).
In pertinent part, the Commissioner notes:
“Though the advocate of the patent holder was present while these arguments were raised, he did not counter these arguments apart from just stating that each of the 20 claims made in his application is independent and infringement of any one would have the effect of infringing his rights under the Patent.”
and later:
“..the idea of a mobile phone with dual SIM cards is not an original invention of the Patent Holder. He has just wrapped it up with some additional features and claiming that any mobile phone with dual SIM cards violates his rights.”
Chennai Customs Order in Favour of Hansum
Samsung obtained a favourable order from the Chennai customs authorities as well. And so did Hansum India. Both the Mumbai and Chennai orders are quite detailed and well reasoned and once our SpicyIP website is up again (sadly some miscreants have hacked it), I will put this up for public consumption.
In an order favouring Hansum India, the Chennai Customs Commissioner held thus:
“From a plain reading of the above claim 1, it is seen that a provision for a plurality of SIM cards, a plurality of SIM sockets, a plurality of headphone/earphone jacks and a plurality of bluetooth devices should be present in the mobile phones. The reason for such a provision is also enlarged by the patentee that it is for the purpose of communicating simultaneously with the respective SIM cards. Therefore it boils down to the point that the sum and essence of the patent is for simultaneous communication by using the plurality of SIM cards”.
The only slight mistake in the claim construction above is that it ought to have been “… a plurality of headphone/earphone jacks and/or a plurality of bluetooth devices…”.
This however does not impact the merits of this case, as Hansum does not import phones that deploy either a “plurality of headphone/earphone” jacks OR “a plurality of bluetooth devices”.
In an earlier post, I’d noted that the lawyer representing Ramkumar threatened defamatory action against me and referred to my analysis of the patent claim as “juvenile”. It’s interesting that two detailed orders from customs authorities interpret the claim in the same “juvenile” manner. It would appear that “juvenile” is a favourite term of Ramkumar’s lawyers and they’ve used it in their submissions before the customs commissioner as well. I quote:
“Therefore the burden of proof lies with Samsung to establish that their goods do not infringe my patent right and they cannot escape their liability by putting forth juvenile contentions that my patent is part of prior art.”
Incidentally, Ramkumar’s lawyer reacted to my earlier post (documenting his threat to take defamatory action against me), insinuating that I was a “failed lawyer turned academic”. Once again, let me exhort him to desist from resorting to ad hominem attacks. Rather, let us engage with the substantive merits of this dispute.
The tide is slowly turning against Ramkumar and his misrepresentations of the scope of his claims are now returning to haunt him. At the end of all these legal proceedings, it is likely that the importers will prevail over Ramkumar. The question then is: does our law provide for any penalties for such a fraudulent attempt at misrepresenting the scope of one’s claims? More importantly, what of all the small importers that paid huge sums to Ramkumar to have their consignments released?
The bigger players like Samsung will walk away after winning this legal battle. But what of the smaller players: will they be able to recover moneys paid to a patentee who blatantly misrepresented the scope of his claims? Does our law provide for the return of such moneys under theories of unjust enrichment or restitution?
Just wondering, under what powers can the commissioner of customs decide on the merit of patent and if it is infringement or not?
Agreed that this was a clear case and simple technology involved that even a ‘juvenile’ could understand, but what will happen if other complex cases come up, where even the HC ends up giving biased judgment without looking up on the claims.
Now how many more authorities will be required to do such patent claim analysis.
You raise a very valid concern IPA,
Under the current customs regulations and the IP enforcement rules, they have the legal power to do so, But policy wise, should customs adjudicate IP disputes? I’m not a huge fan of having other authorities with no specific institutional competence adjudicating these technically complex disputes and had opined thus in an earlier post (http://spicyipindia.blogspot.com/2009/03/customs-seizures-in-india-patently.html)
“…even if India wishes to institute border control measures for patented goods, it ought to do so in a manner that is likely to provide a fairer and more equitable result. Let the onus be on the party claiming patent infringement to secure an order in this regard from a court of law. After all, section 104 makes very clear that it is only a court of law that can make an assessment of patent infringement.
And if the court finds in favour of patent infringement, this order could be acted upon by the customs authorities i.e. they could seize any “imports” that violate patent rights.
One will appreciate that as per the current regulations, goods that allegedly infringe IP rights can be seized by the customs authorities without even hearing the importer and the onus is then on the importer to move the court and have it released. The better and more equitable policy option would be to flip this the other way around. Let the onus be on the patent owner to agitate this issue before a court and if the court decides in her favour, the customs authorities could then seize infringing goods.”
IPA,
To add to my earlier response: the paradox of course is that while the DB in the Roche case did a pathetic job of reasoning/analysis (without even referring to the claim once), these orders by customs commissioners appear relatively more sophisticated.
People still seem to be haphazardly referring to ‘prior art’ as if the term itself somehow implied ‘public domain’ and this is simply not the case.
As commented on in the previous post, Indian patent 201960 is prior art to the Ramkumar patent and is currently in force. Indeed, every phone held by the comissioner in the Ramkumar case would still be held today had Claims 1 and 6 of the ‘960 patent been asserted against them. I challenge anyone to argue otherwise.
Shamnad, since you originally made the assumption that there was no Indian patent that covered ‘Dual Sim’ broadly, I would think it appropriate that you pass comment on ‘960 and it’s broad application to ‘Dual Sim’, or not, as the case may be.
Dear Anon,
Please read the post again carefully. It does not conflate prior art with public domain material. As for the ‘960 patent, it is owned by someone else and has no bearing on the current pending proceedings. I will study it when I have time and comment on it. For the moment, hold your horses-lets focus on the current dispute.
Hi Shamnad,
As a reply to IPA you mentioned that under the current customs regulations and the IP enforcement rules the commissioner would have power to hear IP infringement cases.
I guess im missing some statute here. these are the rules and standing order that I found
NOTIFICATION No. 47/2007-CUSTOMS (N.T.)
STANDING ORDER NO. 54/2007
is there any other piece of legislation???
on a first reading I did not find any rules suggesting that the customs can hear IP fringement related issues on merits. Can you please confirm this, and point us the specific laws as you mentioned.
dear shamnad,
i am extremely happy with the 2 customs’ rulings- not because of any negative feelings for ramkumar, but because its a sign of growing maturity of indian authorities, vis-a-vis product patents.
from the account that you have given of your ‘engagement’ with ramkumar’s lawyers, it leaves me in li’l doubt as to where lies the propriety. i do support you on this aspect and exhort our professional brethren to desist from such ‘ad hominem’ attacks and, instead, stick to the issue-at-hand.
due to some reasons, i cannot comment on your roche (tarceva) observation, but i would certainly like to comment on another aspect of ur article. i tend to agree with ur observation that despite the powers, non-patent related authorities should not be adjudicating on matters of patent. however, it is easier said, than done. there may be situations where the non-patent related authorities/fora have to decide, perforce, patent issues, but in such cases, they should exercise utmost restraint and care while attempting to adjudicate on patent-related issues. in fact, they should, at the most, attempt to adjudicate only on the ‘issues connected to patent’; but they should certainly desist from deciding, effectively, the patent/patentability/validity, per se. this is true not only for the customs authorities, but also for drug controller (i am hinting at the recent attempt to ‘linkage’) and even the high courts. given the dismal lack of judges trained specifically in patent matters in the country, it would have been lot better if the judiciary would ve taken help of the ‘experts/scientific advisors’ (u/s-115 of the Patents Act) while deciding the patent/patentability/validity, at least during the initial learning phase. I foresee that once the higher judiciary gets the requisite exposure/expertise in patent matters, the judgments no more would be found lacking in application of sound juridico-patenting principles, as is currently the situation.
Shamnad you have raised a very valid point regarding unjust enrichment (AIR 2000 SC 862) restitution (Section 144 CPC).
Since doctrine of unjust enrichment would necessarily involve an element of benefit by play of any statute and restitution as coded in CPC would involve reversal of aright which was already enjoyed.
I would add a foot note to your proposed remedies that action would lie under law of torts and Supreme Court recently in Re: Destruction of Public & Private Properties case laid the following :
Damages in the law of torts in India include
(a) damages based on the concept of restituto in interregnum to enable total recompense; and
(b) exemplary damages”
The basic principles as suggested by Nariman Committee are as follows which we find to be appropriate:
(1) The basic principle for measure of damages in torts (i.e. wrongs) in property is that there should be `restituto in interregnum’ which conveys the idea of “making whole”.
(2) Where any injury to property is to be compensated by damages, in settling the sum of money to be given for reparation by way of damages the Court should as nearly as possible get at that sum of money which will put the party who has suffered, in the same position as he would have been in if he had not sustained the wrong for which he is now getting his compensation or reparation.
(3) In this branch of the law, the principle of restitution in interregnum has been described as the “dominant” rule of law. Subsidiary rules can only be justified if they give effect to that rule.
In actions in tort where damages are at large i.e. not limited to the pecuniary loss that can be specifically proved, the Court may also take into account the defendant’s motives, conduct and manner of committing the tort, and where these have aggravated the plaintiff’s damage e.g. by injuring his proper feelings of dignity, safety and pride – aggravated damages may be awarded.
Aggravated damages are designed to compensate the plaintiff for his wounded feelings-they must be distinguished from exemplary damages which are punitive in nature and which (under English Law) may be awarded in a limited category of cases.
“Exemplary damages” has been a controversial topic for many years. Such
damages are not compensatory but are awarded to punish the defendant and to deter him and others from similar behaviour in the future. The law in England (as restated in Rookes v. Barnard affirmed in Cassell v. Broome) is that such damages are not generally allowed. In England they can only be awarded in three classes of cases
(i) where there is oppressive, arbitrary or unconstitutional action
by servants of the Government;
(ii) where the defendants conduct has been calculated by him to make a profit for himself which may well exceed the compensation payable to the claimant; and
(iii) where such damages are provided by statute.
The second foot note I add is the rights of the injured under the criminal law on the touchstone of Extortion.
Shamnad you have raised a very valid point regarding unjust enrichment (AIR 2000 SC 862) restitution (Section 144 CPC).
Since doctrine of unjust enrichment would necessarily involve an element of benefit by play of any statute and restitution as coded in CPC would involve reversal of a right which was already enjoyed.
I would add a foot note to your proposed remedies that action would lie under law of torts and Supreme Court recently in Re: Destruction of Public & Private Properties case laid the following :
Damages in the law of torts in India include
(a) damages based on the concept of restituto in interregnum to enable total recompense; and
(b) exemplary damages”
The basic principles as suggested by Nariman Committee are as follows which we find to be appropriate:
(1) The basic principle for measure of damages in torts (i.e. wrongs) in property is that there should be `restituto in interregnum’ which conveys the idea of “making whole”.
(2) Where any injury to property is to be compensated by damages, in settling the sum of money to be given for reparation by way of damages the Court should as nearly as possible get at that sum of money which will put the party who has suffered, in the same position as he would have been in if he had not sustained the wrong for which he is now getting his compensation or reparation.
(3) In this branch of the law, the principle of restitution in interregnum has been described as the “dominant” rule of law. Subsidiary rules can only be justified if they give effect to that rule.
In actions in tort where damages are at large i.e. not limited to the pecuniary loss that can be specifically proved, the Court may also take into account the defendant’s motives, conduct and manner of committing the tort, and where these have aggravated the plaintiff’s damage e.g. by injuring his proper feelings of dignity, safety and pride – aggravated damages may be awarded.
Aggravated damages are designed to compensate the plaintiff for his wounded feelings-they must be distinguished from exemplary damages which are punitive in nature and which (under English Law) may be awarded in a limited category of cases.
“Exemplary damages” has been a controversial topic for many years. Such
damages are not compensatory but are awarded to punish the defendant and to deter him and others from similar behaviour in the future. The law in England (as restated in Rookes v. Barnard affirmed in Cassell v. Broome) is that such damages are not generally allowed. In England they can only be awarded in three classes of cases
(i) where there is oppressive, arbitrary or unconstitutional action
by servants of the Government;
(ii) where the defendants conduct has been calculated by him to make a profit for himself which may well exceed the compensation payable to the claimant; and
(iii) where such damages are provided by statute.
The second foot note I add is the rights of the injured under the criminal law on the touchstone of Extortion.
Sidharth & IPA
I would suggest that Shamnad is talking about, Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 .
Especially Rules 3 and 7 are very clear about adjudication by custom authorities. I reproduce R 7.1.a
7. Suspension of clearance of imported goods.-
(1)(a) Where the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, based on the notice given by the right holder has a reason to believe that the imported goods are suspected to be goods infringing intellectual property rights, he shall suspend the clearance of the goods.
………………………………………………………….
And clearly when the DC or AC can pass the above order a strong element of ADJUDICATION of “infringing intellectual property rights” is involved.
i would rather express myself exactly in terms of shamnad, regarding theories of unjust enrichment or restitution. however, i would remain very circumspect whether they actually offer remedies. wish as much as we can, but i ve serious doubts. on several grounds, i dont think that IndianIPR.com’s reference to Supreme Court’s judgment in Re: Destruction of Public & Private Properties provides a productive legal strategy. that case can be distinguished from that of ramkumar’s so easily and vastly.
A patent expert who wishes to remain anonymous writes:
“I have gone through the Ramkumar Patent and have the following opinion.
“In your blog posting you were generous enough to refer to him as an overzealous Inventor ,where
as in reality he is a fake inventor .
in the opening part of the specification he says that the circuitry (the Electronics part) of a conventional mobile phone has to be completely changed in order to accommodate the dual Sims.
Instead he describes about a Modified SIM card in the specification. (strictly speaking “Modified Sim card” falls into different invention and should have been allowed under the single inventive concept ,only if there were to be detailed disclosure as per Section 10 about the Circuitry of the Dual Sim phone).
Even the disclosure about Modified SIM card doesn’t go beyond a mere workshop improvement. And description ends with no mention about the circuitry.
Also, there is no mention about plurality of headphones etc etc. The Claims as originally filed were having no reference to the plurality of headphones capable of allowing plurality of
conversations etc etc.
They are mere functional i.e they describe what
is desired to be achieved rather than how the objective of the invetion is going to be achieved.(as required u/s 10(4)c. claims shall define the scope of the invention).
To substantiate that the claims are functional and the disclosure to be insufficient ,let me compare this application with a cited document WO0130097 (of the international search report ) which kills
the novelty and inventive step of this application .
Out of the 2 cited documents which kill the novelty and inventive step i have chosen the second one because at least the claims were available in English for the second application,where as specifications for both were in German.
As per EPO practice all granrted Europaen applications shall have claims in the 3 official languages though this is going to change
soon.
The specification and Fig2 discloses the various blocks(i.e the circuitry) needed for a Dual Sim phone .
The claims clearly identify the means for achieving objective of the invetoin.
Neither Ramkumar’s specification nor the Claims disclose the invention( if one can afford to call it so) as one skilled in the field needs to understand the disclosure, to perform the invention
(requirement of Section 68) compared to the cited prior art.
With such lack of disclosure Ramkumar seeks protection for functional claims and when faced with the international search report (ISR) ,amends them with such Claims which dont have any mention, forget support and are broad(Plurality of so and so..to communicate simultaneous incoming and outgoing calls). the patent is a bad one and will most likely be invalidated…
To mnbvcxzaq1
I suggest tort as a remedy for the wrongs done to importers.
Since in India, we do not have any codified law of torts, except to some extent Consumer Protection Act, so we will have to depend on interpretation of tort, damages etc in the realm of judicial pronouncements. This branch of law is totally judge made, it is in this context I cited the latest and relevant SC judgment.
@IndianIPR.com
the reference that you provided to section 7(1)(a) of notification no. 47/2007 Customs (NT).
particular mentions only suspension in importation of the goods. the wording used is ‘reason to believe’, the interpretation of these words in such a way as to allow the customs commissioner to rule on infringement based on claim analysis on the merits is giving too much authority to the customs.
in this respect i would directly reference point 4 of the standing order no. 54/2007 which reads as follows
‘It is pertinent to mention that while the mandatory obligations under Articles 51 to 60 of the TRIPS dealing with border measures are restricted to Copyright and Trade Marks infringement only, the said Rules deal with Patents, Designs and Geographical Indications violations as well, in conformity with the practice prevailing in some other countries, notably EU countries. While it is not difficult for Customs officers to determine Copyright and Trade Marks infringements at the border based on available data/inputs, it may not be so in the case of the other three violations, unless the offences have already been established by a judicial pronouncement in India and the Customs is called upon or required to merely implement such order. In other words, extreme caution needs to be exercised at the time of determination of infringement of these three intellectual property rights’
may be this seems to a more valid point…where the customs officials are required to be extremely cautious….However i dont think this allows them to hear infringement cases.
another point I would like to raise is, in this case the Madras High court had issued an ex parte restraining order. I am not too sure if this was done on merit…i guess not….but may be prima facie….in that case the customs ruling non infringement….isnt that undermining the the legal status of the court system….seems to me like this is direct contravention to the courts orders….court ordered customs to seize goods…customs are required to sieze goods…not allowed or required to hear any case on its merits…
the aim of border enforcement measures is to provide a easier way to avoid infringing goods from being sold in a land where a person already has such proprietory rights….and not the formations of another parallel judicial process.
I would still require some expert to convince me that the actions of the customs officials was not in contravention to courts orders.
Siddhart,
You’re forgetting an important fact. The Madras High Court suit by Ramkumar does not ask to restrain “imports”. I’m not sure if this was a deliberate omission by Ramkumar or a careless mistake.
Compare this with the customs orders which are only dealing with Ramkumar’s right to prevent “imports”. Even otherwise, as you will appreciate, the Madras High Court order is an ex parte non speaking order.
Dear Shamnad,
If you do have a copy of the order from the madras high court please do pass it on to us, so that we could also have an informed view on this.
As I see it the following happened, the Madras high court issued an order saying these goods are infringing (this is an assumption since Shamnad mentioned that the High court does not ask to restrain imports). then Ramkumar goes to commission of customs asks him to restrain imports coz high court said these goods are infringing. Samsung asks commission to revoke the restraining order. Commissioner rules the case on the merits and says I am sorry your honour I dont think you have any idea wat u talking about, I think this is not infringement so I dont care what you ordered. This seems interesting doesnt it.
What the commissioner should have done is sent Samsung back to the High Court, with the reasoning that he believed to be correct. I still stand by what I said before, I dont see any part of the law that reads the commissioner of customs can hear cases on merit and there is no implied reference suggesting this either.
Good points Siddhart,
From a policy perspective, I prefer a flipped around version of what you suggest. In other words, let the onus be on the patent owner to first approach the courts. Based on the court order, customs can restrict imports.
This takes care of the institutional competence issue that we’ve raised several times on this blog re: linkage issues.
Dear Anon,
I’ve just read the EP version of the ‘960 patent.
As I’d mentioned earlier, claim 6 (covering multiple SIM sockets) is dependent on claim 1. Claim 1 covers an authentication system in a remote communication apparatus (eg a mobile phone). Claim 6 merely extends this authentication system to cell phones with multiple SIM sockets.
I haven’t seen any of the imported phones and am not aware of their make. If they do not deploy the identity authentication system in claim 1, they do not infringe.
i agree with siddharth’s reading of the role/extent of customs commissioner’s powers regarding adjudication on IPR related issues. in this regard, i have already in sync with shamnad’s suggestion regarding placing the onus on the patent owner in such circumstances. i had already pointed this out in my earlier comment that, at the most, the non-IPR related authorities should restrict their rulings to IPR ‘realted’ issues only and not to strictly IPR issues (e.g. validity, infringement, etc.), per se. as siddharth has correctly read, “reason to believe” does give the customs authority a very limited scope of enquiry. they should not be enlarging the scope to include prima facie infringement/validity.
tc
Shamnad,
If they did not ” deploy the identity authentication system in claim 1 ” there would have been little point in my drawing your attention to ‘960 in the first place.
An example embodiment of claim 1 would be the Java card applicaition commands and management system on the majority of phones delivered today and dating back to 2001. Stating the obvious does not answer the original question raised by your original assumption, namely that you thought “Dual SIM” was in the public domain. The question posed to you is this; does the 960 patent, unlike Ramkumar’s, have the scope to claim all “Dual Sim” in India, or not? You promised an opinion and have seemingly avoided giving one, I am disappointed. In any event, the point is lost.
i suppose we will need to see if ‘960 actually turns up in some future enforcement or not.
Dear Anon,
Do you speak any other language other than English. Let me know which ones–and if I am proficient in that language as well, I will try and communicate in that language.
I haven’t seen Samsung’s technology deployed in their version of the dual SIM. If as you say, then do deploy the identity authentication mechanism, then they infringe. If not, they do not. Perhaps we ought to wait for someone from Samsung or Hansum to post their view here.
In any case, in response to your last point, let me once again reiterate that the claim does not cover all dual SIM’s or phones with dual SIM sockets, as you suggest. Rather it is only attracted in the case of phones with dual SIM sockets and the claimed authentication mechanism. Clear?
Shamnad,
All Dual Sim phones that I am aware of today conform to either the ETSI GSM specifications or the newer 3GPP specifications or both. These specifications are mandated sets of requirements concerning functionality along with optional sets. Authentication mechanisms relating to Sim cards are for example dealt with in GSM 11.14 and 11.19 specifications. Within these specifications lies an infringement of claim 1.
I am not aware of any phone with Dual Sim (GSM enabled) that is for sale today that does not use and have enabled at point of sale, said authentication features which fall within the scope of the claim set of ‘960.
If what I have just written is true, then your claim that ‘960 does not cover all Dual Sim phones is false.
I challenge your assumption that the Venn diagram Set B of all phones on sale today in India with Dual Sim is not entirely within the Set A of phones infringing claim 1 and 6 of ‘960. You boldly claim the existence of a non-infringing Dual Sim phone by stating categorically that the claim does not cover all Dual Sim’s. You do this with no facts, only assumptions. The fact that you require to support your statements should be easy for you to produce, simply name a non-infringing product that was the subject of Ramkumar’s injunctive relief. I am confident you will find no such product. While I am sure you have assessed the scope of claim 1 in ‘960 accurately,I feel you do not have an appreciation as to the breadth of devices captured by the claim, perhaps when you go looking for a Dual Sim product that falls outside the scope, and don’t find one, then your assumptions will change.
We started this thread with your assumption that ” Dual Sim ” was public domain in India, you appear to be unwilling to let go of this assumption despite my presentation of ‘960. I claim on the other hand that ‘960’s scope covers all the product under discussion in the Ramkumar case. It should be easy for you to prove me wrong,just one non-infringing example Dual Sim product will do it. I do not expect you to find one,
All Dual Sim phones have at their core the claimed authentication mechanism.Clear?
I feel that all those small players who have paid a lot of money to Ram kumar should get their money back.
Dear Anon,
Subject to my further analysis of the patent, ‘960 is likely to suffer a serious invalidity challenge.
Dual SIM phones have been in use at least since ’89. The Benefon product sold in some European countries has been using Dual SIM technology before the date of the ‘960 patent.
Shamnad’s assumption seems to be correct that Dual SIM phone technology was published and used prior to Ram Kumar’s patent application.
I look forward to your thoughts on the validity of the ‘960 patent, in view of the pre-existing technology in the area.
Best,
Varun
Varun,
Assuming claim 6 was an independent claim, your assertions as to a lack of novelty would be correct. Claim 6 however, is a dependent claim, “as in claim 1”. If validity is to be challenged it is claim 1 you need to assert prior art against and not claim 6. If you find prior art that the examiners have not already seen and considered I would be interested to see it.
Claims 1 and 6 taken together,( as they must be), have no pre-existing technology. The fact that ETSI wrote the practical implications and embodiments of claim 1 of ‘960 into the standards around 2001 and we now take the same for granted, only points to novelty given ‘960’s priority of 1998.
To be clear, ‘960 only claims Dual Sim if it happens to have the authentication mechanism of claim 1. It just so happens that ‘960 appears to capture all Dual Sim phones on sale today…… not because of Claim 6, because of claim 1. Validity is not challenged in any way by pre-existing Dual Sim devices at all as none of them have the integers of claim 1. This is why I expect no response to my call for an example Dual Sim phone that does not infringe, people don’t seem to appreciate the bredth of devices captured by claim 1 which on its face appears narrow in scope.
Shamnads assumption still needs evidence of prior art or non-infringing product to stand…… where is the evidence?
Dear Anon,
In effect, you’re arguing that all dual SIM Phones use the authentication system claimed in claim 1 of the ‘960 patent. So then why restrict your claim of infringement to dual SIM phones only. It should extend to all cell phones!
If what you state is correct: “Authentication mechanisms relating to Sim cards are for example dealt with in GSM 11.14 and 11.19 specifications. Within these specifications lies an infringement of claim 1”
THEN
all cell phones complying with these specifications infringe claim 1. Not just dual SIM phones?
Somehow it seems far fetched to me. For if this was the case, the owners of ‘960 should have been raking in the moolah by now and the fact that these GSM standards encoded a patent that was being enforced against all cell phone manufacturers would have made some news at least?
Shamnad,
Rim vs. NTP was far fetched. No-one noticed that one till it was in the Appeals court…… for the second time. Speculating as to the motivations of the owners is more liberal arts than science, how about addressing the patent? Put ‘960 to the test, it is a granted and unopposed patent. It claims what it says it claims. I have merely stated it covers all product injuncted by Ramkumar, either I am right, or it should be easy for you to challenge.
The scope of claim 6 either encompasses all Dual Sim product for sale in India, or it does not. Why is it so hard to get this assertion tested? Could it be true? Evidence is always more convincing than information and belief. Got any?
Anon,
You’re being deceitful and taking people for a ride here.
I am a communications engineer and familiar with the GSM 11.14 and 11.19. They do not contain any specs that infringe claim 1 of ‘960. Please explain as to how these specfns infringe.
Since you are the one claiming an infringement, you must prove this. And not the other way around!
Anon,
Actually, I was just trying to set up a hypothetical so I really do not have anything to prove. As for 11.14 and 11.19….. clearly you have no understanding of what claim 1’s scope is, and I grow tired of this thread….. ‘960 is what it is… I have no reason to be deceptive, and have no desire to be insulted by people. I shall post no more on ‘960.
Hypothetical anon?
All your comments were geared towards a very specific patent (960) and you opined that all dual SIM phones would infringe this phone.
Its terribly dishonest of you to now claim its a mere hypothetical!
Since you’ve been hankering quite a lot on this patent (which as I’ve repeatedly mentioned is not in issue in the Ramkumar suit), why don’t you take the challenge and answer the query put to you:
How exactly does claim 1 of the 960 patent implicate the GSM specifications referred by you? I agree with the anonymous commentator: if you’ve claimed that it infringes, its upto you to prove it. And not the other way around!
Shamnad,
Sorry, was my frustration showing?
I did not even get to the hypothetical question I had in mind because it requires an assumption of’960’s applicability to the Ramkumar case, we never got there.
As to the Java specs in 11.19 and EAP contained therein. My frustration is that anyone familiar with the Java Virtual Machine and the “Extended Authentication Protocol” specified by 11.19 would see claim 1 is infringed. You described claim 1 as an authentication mechanism yourself, even though I think that is a bit narrow,….. 11.19’s purpose is exactly claim 1…. EAP stands for Extended Authentication Protocol….. do I have to draw pictures. If I do, and have to put up with being indiscriminately called dishonest and deceptive….. then perhaps I will go be abused elsewhere.
Dear Shamnad and Anon,
With refernce to patent960 and its equivalent please find below my view points:
INVENTION:
COMMUNICATION METHOD AND APPARATUS .—-NOT DUAL SIM TECHNOLOGY
BACKGROUND OF THE INVENTION
1. It is conventional that a person requiring the services of a network shall enter into a contract with a network provider who then provides a subscriber identification
module which is inserted within a mobile phone and which is thereafter able to be accessed by the network provider to establish that use of the network is authorised
and continues to be authorised for access to that network. It is the subscriber identification module which is accessed by the network provider that provides the
identification and authentication necessary for charging or other regulatory process as far as a selected network service provider is concerned.
2.Currently, access to that authentication information is controlled entirely by the network provider who for commercial and contractual reasons will wish to maintain the absolute confidentiality of such information
3.This leaves the position as seemingly to be strongly in the control of the providers of the networks and the mobile phones.
It is an object of this invention to provide an arrangement which will reduce the above problem.
It is known that a SIM is able to be inserted or removed from a receiving socket with a mobile phone. This has to be a publicly accessible or consumer accessible facility and it has, of course, electrical contacts that are needed to connect with an inserted SIM.
.
OBSERVATIONS:
1.First of all the invention is COMMUNICATION METHOD AND APPARATUS-
for acceesing the SIM parallelly from the mobile phone with out the knowledge of the network service provider who has supplied the SIM.
2.So there is no dispute with respect to SIM technology at all.
This is being very clearly mentioned in paragraph 1.
3.The invention is a method or apparatus which can be added or inbuilt to the existing mobile phone with a SIM provided by the network provider and try to get the signals received or sent by the SIM from or to the network parallely and once received ,the details can be stored in an external memory as well send the status to the other agencise thro SMS or IF or RF transmission mode.
The whole IDEA is to identify the SIM location and the indentity(same like the network provider does) and then use the same information for commercial purpose or for any other purpose without the knowledge of the network/SIM provider.
4.With respect to claim 6,the mobile phone with the above communication method and also with dual sim socket is mentioned.It is not just dual sim technology.
“6. A remote communication apparatus as in any preceding Claim further characterised in that there are sockets to receive a plurality of subscriber identification
modules. “
Conclusion:
So the above patent is entirely different from SIM technology or dual sim technology.It is mainly to collect identification details from the SIM to the external agencies without depending on the network/SIM provider.
So no need to go in to technical details like GSM or JAVA which is irrelevant to this patent.
Enjoying the blog.
Ads,
Actually, the IDEA is more clearly stated in claim 1 and is more focused on the “intermediary processor” and how that processor talks to both the Sim and other memory for identification or purposes. This is what makes the Java running on the “intermediary processor” very relevant to infringement.
In any event, how you capture infringement is irrelevant to the point of my original post. The conclusion sought is either confirmation or refutation of the position that the Dual Sim phones injuncted by Ramkumar are also infringing ‘960 Claim 6…..just trying to get someone to take a position….. seems impossible. 🙂
Dear Anon,
Claim 6 states that
6. A remote communication apparatus as in any preceding Claim further characterised in that there are sockets to receive a plurality of subscriber identification modules.
It is very clear that a remote communication apparatus say mobile phone as claimed in claim 1 to 4 is what covered in claim 6.So it is a dependant claim on the claims 1-4.
Claim1>
1. A remote communication apparatus (1; 30) adapted to receive interrogation from time to time with respect to the identification of a user of the apparatus and including means (20; 21) to hold a subscriber identification module within the apparatus which can provide for that authentication of the user to an external interrogation from time to time, characterised in that the apparatus includes intermediary processor means connected to electrical contacts (32; 34) adapted to connect with an appropriate subscriber identification module, the intermediary processor means being configured to receive any interrogation signals and adapted, in the case that the interrogation signals are appropriate for seeking identification of and from a network providers subscriber identification
module, to effect a direction of such incoming inquiry signals to the attached subscriber identification module whereby appropriate identification can be provided in reply, and, in the event of an interrogation other than from the network provider for identification or other purposes, as appropriate to direct such further interrogation to alternative memory
means.
Normal mobile phone DOES NOT HAVE an INTERMEDIARY PROCESSOR CONNECTED to electrical contacts (32; 34) adapted to connect with an appropriate subscriber identification module,
Even without this intermediary processor the functioning of SIM with the network will be functioning.
>>>The intermediary processor means being configured to receive any interrogation signals and adapted, in the case that the interrogation signals are appropriate for seeking identification of and from a network providers subscriber identification
module, to effect a direction of such incoming inquiry signals to the attached subscriber identification module whereby appropriate identification can be provided in reply,<<< The above function is what normal SIM phones will be doing with its own CPU and without the intermediary processor. >>and, in the event of an interrogation other than from the network provider for identification or other purposes, as appropriate to direct such further interrogation to alternative memory means. << Only for this above function the patent is done specifically.This will not be available in any of the existing mobile phones. This is for identification for other purposes thro alternative memory . Claim 2-4 depends on claim 1 only.
So general mobile phones with single SIM as well with dual SIM are not at all covered in this patent.
Cheers
Dear Anon,
I am amazed at your persistence. Why would you insist repeatedly on confirmation or refutation of an irrelevant and tangential matter of infringement?
I thought the debate here was quite clear–do Dual SIM Phones infringe Mr. Ram Kumar’s patent?
The Mobilevpt patent has NOTHING to do with Ram Kumar’s patent. It is your own case that Claim 1 and not Claim 6 is the relevant claim to decide if a product infringes the patent. Why, then, do you persist in raising this issue over and over again?
Obvioudly, you are someone with a special interest and knowledge in the Mobilevpt patent/technology, but could you please save this discussion for a Guest Post on this blog rather than cluttering up the comments section with this debate that borders on a monologue?
Further, on a reading of ‘960, it looks like authentication systems are necessary for service providers, and not for manufactureres of phones.
To be covered by the patent, phones need to have additional hardware referred to in the patent. Please could you explain to us (either here or in your future EXHAUSTIVE guest post) why you think that ALL dual sim phones have this additional hardware?
Its only fair that you explain this, since you have raised this issue which has nothing to do with the post.
Best,
Varun
Dear Shamnad, Ads, and Varun,
My original post was to refute the “public domain ” assumptions made with respect to Dual Sim. As such I thought ‘960 to be more than relevant to the topic at hand. Sorry if that reasoning got lost.
Ads, the main CPU of the phone can be the “intermediary processor”, see claim 2, hence all “normal” phones DO have this integer of claim 1. GSM 11.11 is the exact mandated Sim connection method to a host processor, I will explain later in a detailed post if you can’t get it from claim 2 yourself.
Varun, I agree, a separate post has become appropriate should Shamnad choose to publish it that is. Claim 2 likewise makes your additional hardware requirement false, as original equipment is specifically claimed.
In any event, the relevance of all this would have been clear to anyone who for just 1 second had put the rights to this patent…..hypothetically….. in the hands of Ramkumar. Point lost long ago though. At a minimum it would have given him a ” no harm on foul ” defence.
Dear Varun and Ads,
Thanks very much for your informed and insightful responses to this. I had an inkling early on that anon was a mere mischief monger attempting to take all of us for a ride. But didn’t have the time to delve further into the technology or check the GSM specs etc. Now that I’ve checked all of this and read your comments, it is quite clear that this anon commentator is indeed deceptive and dishonest. And has caused all of us a considerable waste of time!
Anon–please do not waste our time further on this supposed “hypothetical” of yours!
Ads, the main CPU of the phone can be the “intermediary processor”, see claim 2, hence all “normal” phones DO have this integer of claim 1. GSM 11.11 is the exact mandated Sim connection method to a host processor, I will explain later in a detailed post if you can’t get it from claim 2 yourself.
With reference to the above again I am repeating the same explanation:
Third part of the claim 1 as below:
>>and, in the event of an interrogation other than from the network provider for identification or other purposes, as appropriate to direct such further interrogation to alternative memory means. << Only for this above function the patent is done specifically.This will not be available in any of the existing mobile phones. This is for identification for other purposes thro alternative memory . The technology used is same as what the network provider will be using.That is why the patent holder does not make any infringement case with any of the SIM or cell manufacturer. Since Claim 2-4 depends on claim 1no need to give much importance to that. Anyway you made many of us to study and know more details about the different patents and the technologies used. Let us put a full stop for this issue. Let us try to support Mr.Basheer sir to continue his good intentional work of bringing many patent related issues in this blog with out dragging him too much in to the comments argument. Cheers.