The Delhi High Court in a crisp, well reasoned, 13 page Order dated 19th April, 2010, has dismissed an interim injunction application in a patent infringement suit filed by Asian Electronics Ltd. v. Havells India Ltd. The patent at suit is unfortunately not available on the IPIRS system. Both Asian Electronics and Havells India are big players in the Indian electronic markets. While Asian Electronics was led by Mr. Gaurav Barathi, who is also counsel for NATCO in its patent dispute with Roche, Havells India Ltd. was represented by Ms. Neha Kapoor. The presiding Judge was Mr. Justice Ravinder Bhat, one of the leading IP judges of the Delhi High Court, as is once again demonstrated through this Order.
(a) Details of the Patent
Patent Application No.: No.544/BOM/1999
Patent No: 193488
Date of Grant: 27.02.2007
Inventor: Suresh Hiralal Shah (Chairman of Asian Electronics Ltd.)
Patentee: Asian Electronics Ltd.
Abstract: “Conversion Kit to change the fluorescent lighting units inductive operation to electronic operation”.
Number of other countries where such a patent has been granted: 26
(b) Brief description of the claimed invention
The invention aims at converting fluorescent lighting units, such as tube-lights, from working on an inductive operation mechanism to an electronic operation mechanism without the need for any re-wiring. According to the Plaintiff company, its inventors discovered that fluorescent lighting units operating on an inductive operation mechanism were ‘energy inefficient’ as they used to flicker while starting and also discharge invisible gas.
The conversion kit invented by the Plaintiffs is claimed by the suit patent in the following manner:
Claim No.10
Conversion kit to change the fluorescent lighting units – from inductive operation to electronic operation as claim in claim 1 comprising alternatively as a modification.
“a. straight fluorescent lamp having at least two contact pins at its each end
b. first and second adaptors mountable on the ends of said lamp, each said adaptor having a pair of internal contacts for mating with said lamp contact pins and also having a pair or external contact pins for mating with contacts in the lighting fixture;
c. connection lines provided in a line channel for electrically connecting the said first adaptor to the said second adaptor; and
d. an electronic ballast.”
(c) The Defendant’s arguments
The Defendant’s put forth four main defenses:
(d) Justice Bhat’s Order: Justice Bhat starts of his excellent analysis of the case by noting that the Plaintiffs are not claiming an invention in any of the individual components of the conversion kit. Instead he rightly notes that the invention was claimed for a conversion kit which comprised of several individual components such as the adaptors, the ballast etc.
In the backdrop of this observation he then reviews certain basic concepts of the Indian Patent Act such as the definitions of ‘invention’, ‘inventive step’, ‘new invention’ & ‘patent’ as also the scope of Section 3 which defines what is not patentable subject matter. In particular he stresses of Section 3(f) which states that the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way is not patentable subject matter. The Judge also makes reference to the bar of Section 3(d) which states that a mere use of a known process, machine or apparatus unless such known process results in a new product will not be considered to a patentable invention.
The judgment then carries out a very concise review of English case law on the grant of patents for combination and the “law of collocations”, both of which state the same concepts that are found in Section 3(d) and Section 3(f) i.e. no patent can be granted for the mere re-arrangement of known components unless such re-arrangement leads to a radically different result i.e. not obvious to a person skilled in the art. In light of the statutory provisions, as also the weight of common law, the Judge made a prima facie finding of not only obviousness but also one of non-patentability on the basis of Section 3(d) and Section 3(f).
The Court also found the suit patent to be anticipated by the prior U.S. Patent cited by the Defendant since that one document described the entire invention that was being claimed by the suit patent.
Although the above findings were more than enough to dispose the interim injunction application the Court went ahead to state that by not filing any documents to show the working of the suit patent, the Plaintiff had failed to even demonstrate that the patent was being worked in the Country. On this count the Court found even the balance of convenience in favour of the Defendant company and dismissed the application for interim injunction. A note of warning therefore to all future patentees would be to file statements of working along with interim injunction applications, failing which, it is likely that the Delhi High Court would not find the balance of convenience in the favour of the patentee.
Sumathi, thanks for bringing this case out.
Freq. Anon.
Dear Prashant,
Nice analysis.
Was a bit surprised by use of wikipedia articles as background/ explanation to concepts.
Also, though the .pdf files from Del HC are great, its not good to have typos in the file… the Del HC staff should look into this.
Regards,
Freq. Anon.
Dear Prashant,
This Asian Electronics Ltd has earlier also obtained a stay against JUMBO ELECTRIC COMPANY in CS (OS) 1177/2008 from Delhi High Court. Justice Reva Khetarpal found strong prima facie case has been made out by the Asian for the grant of an ex parte ad interim injunction order in its favour and balance of convenience is also tilted in their favour and was pleased to pass an order:
“IA No.7337/2008 (u/O-39 R-1 and 2 read with Section 151 CPC)
……
It is submitted by the plaintiff that the infringement of its patent by the defendant, embodying the plaintiff’s patented technology, has resulted in the defendant riding piggy back on the investments and efforts made by the plaintiff in developing, obtaining patent protection and publicizing its products, which have a huge market in India as well as in the USA, Canada and Europe.
Considering the averments made in the plaint and on perusal of the
documents filed by the plaintiff, I am of the considered view that a strong prima facie case has been made out by the plaintiff for the grant of an ex parte ad interim injunction order in its favour and that in the event an interim
injunction is not granted to the plaintiff to protect the patent granted to the plaintiff, irreparable loss and injury is likely to be caused to the goodwill
and reputation built up by the plaintiff, apart from monetary loss. The balance of convenience is also tilted in favour of the plaintiff.
Accordingly, till the next date, the defendant, their directors,
officers, servants, agents, etc., are restrained from manufacturing, selling, distributing, offering for sale, advertising, and directly or indirectly dealing
with the lighting system or the conversion kit embodying the plaintiff’s registered patent bearing No193488 or from in any manner passing off or attempting to pass off the said lighting system or conversion kit as the
products of the plaintiff.”
Hi Sudhir,
Excellent observation. Do you have any idea whether this injunction is still in force?
If anything this merely underscores the fact that judges have to be absolutely certain before proceeding to grant ex-parte injunctions against defendants.
Cheers,
Prashant
Hi FA,
Thank you for your comments.
You are right – the wikipedia citations are rather strange. In fact Sumathi and me were having this discussion and we came across this Supreme Court judgement by Justice Sinha: http://indiankanoon.org/doc/1358324/
wherein he is rather doubtful of using Wikipedia. The pertinent part of the judgement is as follows:
Wikipedia, like all other external aids to construction, like dictionaries etc, is not an authentic source, although the same may be looked at for the purpose of gathering information. Where an express statutory definition of a word exists, a Wiki definition cannot be preferred. It cannot normally be used for the purpose of interpreting a taxing statute or classification of a product vis-`-vis an entry in statute. However, as a source of authority, Wikipedia is frequently cited by judges around the world. This is not restricted to India alone. The New York Times reports that beginning in 2004, more than 100 opinion in the States have cited Wikipedia, including 13 from federal appeals courts. Is this a good thing? There’s a split of authority. Let us notice some. 7 Said the Seventh Circuit’s Judge Posner, who recently cited the online encyclopedia in this opinion: Wikipedia is a terrific resource . . . Partly because it so convenient, it often has been 24 pdated recently and is very accurate. He added: It wouldn’t be right to use it in a critical issue. If the safety of a product is at issue, you wouldn’t look it up in Wikipedia. 7 Cass Sunstein, a visiting professor at Harvard Law who once fixed an error on Posner’s Wikipedia entry: I love Wikipedia, but I don’t think it is yet time to cite it in judicial decisions . . . it doesn’t have quality control.” He told the Times that “if judges use Wikipedia you might introduce opportunistic editing” to influence the outcome of cases. 7 Kenneth Ryesky, a New York tax attorney, says “citation of an inherently unstable source such as Wikipedia can undermine the foundation not only of the judicial opinion in which Wikipedia is cited, but of the future briefs and judicial opinions which in turn use that judicial opinion as authority. 7 Stephen Gillers, NYU law professor and legal ethics guru: The most critical fact is public acceptance, including the litigants, he said. A judge should not use Wikipedia when the public is not prepared to accept it as authority. He said it’s best used for “soft facts.”25 7 Lawrence Lessig, a Stanford law professor urges using a system such http://www.webcitation.org that captures in time online sources like Wikipedia, so that a reader sees “a stable reference” — i.e., the same material that the writer saw. These points must be kept in mind by us when we intend to rely on Wikipedia as a source of authority.
Cheers,
Prashant
Dear Sudhir ji,
I beleive this ex-parte injunction has been removed.
In an order dated November 12, 2009; J. Dhingra has vacated the ex-parte injunction has been removed.
Regards,
Freq. Anon.
I have checked from the database of the HighCourt. It reveals that an appeal being FAO(OS)34/2010 was filed by AsianEelctronics Ltd and by an order dated 15th January, 2010, the Hon’ble DB was pleased to order for stay of operation of the order of Signle Judge. Later by an order dated 6th May, 2010, the Hon’ble DB had modified the order by ordering respondent to maintain detailed accounts which should be filed before the learned
Single Judge every six months and which will be taken into consideration at the time of grant of final relief in case the Appellant succeeds. On 9th September, 2010, teh appeal was finally disposed off upon the parties agreeing that taking into consideration the fact that the matter pertains to infringement of patent and evidence would have to be recorded by the parties to establish the case, rather than any further hearing at interlocutory stage, the trial of the case itself be expedited. The interim marrangement dated 6th May, 2010 has been orrdered to be continued during the pendency of the suit. The trial of the suit has bene ordered to be expedited and Local Commisisoner has bene apointed to record and complete the evidence within three months.
Thank you for this update Mr. Vidhani.