Patent

Brin Panna Goes to Court- II


For those who came in late, here’s the story thus far. Before we continue with the story, I would strongly recommend reading Prashant’s brilliant post on the fundamentals of Indian patent litigation.
The Story…

….And so Brin Panna, after having earned his patent on “Spin-ster” technology (which still cannot be presumed valid under Indian law) now finds himself knocking the doors of the High Court of Bhagyanagar in the year 2012, to seek remedy against infringement of his patent by Peeve Jobs. (Here the assumption is that a civil suit may be filed directly in the HC of Bhagyanagar, if it is valued at Rs.19,99,999/- only, which works out to approximately USD 45,000).
Under Section 64 of the Patents Act, Panna’s nemesis, Peeve Jobs, has two options- (1) he could either choose to file a suit for revocation of Panna’s patent “120420” as a counterclaim to Panna’s suit for infringement before the HC, or (2) he may file a revocation petition before the IPAB.
From a cost point of view, Jobs is in two minds because filing a counterclaim for revocation of the patent before the HC could be a much more expensive exercise than filing a revocation petition before the IPAB.
But then, Jobs realizes that his primary objective is to make as much noise as possible; the bigger the forum the better it is for his benefactors, so there’s no way he can let go of the HC option.
The IPAB option too is important for Jobs because it serves his larger objective in a different way i.e. once an expert tribunal like the IPAB is seised of the issue of validity of the patent, it usually (and invariably) deters a Court from granting to a patentee what he needs most in an Indian context- an interim injunction.
Jobs knows that if an interim injunction can be thwarted, his job is more or less done-why? Because Jobs is aware that, conservatively speaking, the trial wouldn’t begin for a good 4-5 months from the date of filing of the suit. Disposal of the suit is anyways light years away, so all Jobs has to do is to prevent the grant of an interim injunction.  
Now that his goal is crystal clear and he is flush with funds, Jobs decides to use both the HC and IPAB options (although the Act requires him to choose between the two). So, Jobs files a counterclaim of revocation of Panna’s patent before the HC and creates a competitor of Panna (let’s call him “Orchard Pauseman”) or pays one to file a revocation petition before the IPAB.
Jobs understands that the filing of the revocation petition by an “independent” competitor lends a veneer of objectivity to the petition, and to that extent puts a question mark on the validity of Panna’s patent.
The Court


It is in the Court on the first day of hearing that Panna acutely feels the pinch of the lack of presumptive validity. If Panna’s patent had been presumed valid under the Patents Act by virtue of grant, or atleast by virtue of the fact that it had survived oppositions, Panna could have directly proceeded to the issue of infringement and subsequently, irreparable harm and balance of convenience, all of which are essential ingredients to prove need for an interim injunction. 
But, since Indian law does not provide for presumptive validity, the onus of proving validity would first lie on Panna. In other words, Panna again goes through the rigmarole of proving why and how his patent has been validly granted.
In addition to submitting why his invention is novel and non-obvious, Panna draws the attention of the Court to the fact that his patent has been granted pursuant to a pre-grant opposition, and has survived post-grant opposition.
Panna desperately points out to the Court that in the absence of an interim injunction, the suit would be rendered infructuous considering the fact that a patent is granted for a limited term. Further, since the technology has a short shelf life, one cannot equate term of the patent to the life of the technology.
Panna also submits that an interim injunction ought to be granted because the actual benefits of the grant of the patent, such as offering licenses to a statutorily-protected proprietary technology to third parties, can be meaningfully derived only after grant. He submits that infringement of the patent by Jobs and the counterclaim of revocation have created a cloud over Panna’s title to the invention, and have adversely affected his prospects of commercially exploiting the technology.
Jobs smugly rebuts Panna’s arguments and points out to the Court that unless the validity of a patent is tested in “judicial proceedings”, a patent cannot be presumed valid. According to Jobs, “judicial proceedings” cannot include post-grant opposition, and must necessarily mean “proceedings in a Court of law”. Therefore, Jobs submits with utmost humility, that Panna’s patent cannot be presumed valid merely because it has survived unlimited oppositions.
Jobs draws the attention of the Court to his own counterclaim of revocation and a pending “independent” revocation petition before the IPAB, to assail the validity of the patent. Jobs submits that both the counterclaim of revocation and the revocation petition before the IPAB cite prior art, which were not considered in either of the opposition proceedings; consequently, unless the validity of the patent is tested against these “untested” prior art, grant of an interim injunction would be improper.
Jobs, finally introduces a fire-and-forget missile by the name “public interest”. He proclaims that if Panna had his way, the elected representatives of this country would never be able to afford the sacred Indian fabric, Khadi. Jobs, a foreign national, passionately argues that Khadi, whose cause was espoused by the Father of the Indian Nation, Mahatma Gandhi, would also be out of the common man’s reach if Panna was granted an interim injunction. Therefore, grant of an interim injunction is against the interests of the whole country!
Jobs goes a step further and thunders that if it were in his power, he would include any and all technologies related directly or indirectly to Khadi as unpatentable subject matter under Section 3 of the Patents Act, since a “monopoly” over anything related to Khadi goes against the Gandhian spirit!!
Judgment

Does the Court grant an interim injunction? I leave this to the readers’ imagination.
Thoughts

I am sure the posts could reek of hyperbole to a few, but the sentiment behind the posts is to merely convey that although the system of oppositions is intended to act as a check against frivolous patents, opposition proceedings by themselves don’t constitute the entire Act, or the very purpose of the legislation.
If the mechanism of patents has been introduced to provide a framework to incentivise innovation, it would help, if at times, we try to understand the innovator’s (and this includes the one who commercialises the technology) point of view of as well.  
Patenting is just one aspect of a larger business canvas, and if the innovator or the one who commercialises the patented technology is expected to engage in fire-fighting round the clock, then the spirit behind the very system of incentives is relegated to the side lines. Imputing presumptive validity to the grant of the patent at some stage, either before or after opposition, could go a long way in setting the balance right in an otherwise skewed system.
Also, why is it that the Patents Act does not contain a special jurisdiction clause such as the ones found in Section 62 of the Copyright Act and Section 134 of the Trademarks Act? Shouldn’t the patentee too legitimately expect a provision to institute a suit for infringement at a place where he conducts his business, just as a copyright holder or a trademark owner can? After all, a patent is for a shorter term, with attendant limitations on the right which are provided for in the Act…such being the case, why shouldn’t the patentee have the same privilege, which copyright and trademark owners enjoy?
SpicyIP Wishes All its Readers a Safe and Happy Diwali! Fiat Lux (Let There Be Light) !
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6 comments.

  1. AvatarAnonymous

    Dear Deepak,

    Merely trying to paint ‘hyperbolistic’ scenarios without looking at a vast majority of ground reality oppositions is really not the right way to argue that our oppositions system needs a major re-think. I am fully aware of how a very small minority of pharmaceutical opponents are misusing the system for multiple opposition filings… but that is the extreme exception.. not the norm!

    Let me start with Spicy IP’s own study from 2009 (or thereabouts I guess).
    That study has clearly pointed out that in approx. 3/4 of the cases in opposition, the Opponents had been able to get the patent application rejected.

    Now, this real life factoid does not go well with your story.

    Before I sign out, let me also tell you that the patent holders are NOT above board. If you look at the kind of applications being filed and constant divisionals being filed, without a multiplicity of invention objection, you will be aghast.

    Last but not the least, take a look at the recent Roche/ Matrix case, again reported very promptly on the SpicyIP site. The Chennai action is interesting on 2 grounds… Roche has been fighting against FOUR companies at Delhi and in all cases, no injunction on sale was granted in favour of Roche, so it now goes to Chennai against the fifth Company. The second thing to see in that order is how Patent holder has completely hidden the fact that Indian patent law allows activities within Bolar provision, from the single Judge and was able to get a blanket order on ALL activities being injuncted. Because they had ‘excellent’ legal support.

    So, lets not be to jingoistic for the so-called unicorn/ small inventor…. Let’s remember – people who oppose patents (in a very large majority of cases) have valid grounds for doing so.

    Also, with Ramkumars (again, well reported and analyzed on your site for the Cellphone / dual sim patent) and Roche’s of the world, painting the patent holders as saints and opponents as sinners (while an over whelming majority of whom is not) … does not make a great debate.

    Regards,
    Freq. Anon.

    Reply
  2. AvatarAnonymous

    Dear Deepak,

    Very intresting post.

    In my opinion high court would granted an Interim Injunction in the circumstances sated by U.

    But still I am wondering how job managed to find new prior art that were cited either by the examiner or by Job himself during Pre & Post grant Oppositons procedings.

    This is a very hypothetical scenario.

    By the way at this point I am tempted to put up a question for U and our SpicyIP readers parallel to the present hypothetical situation.

    Q) Jobs files Revocation before IPAB, Under Section 64 of the Patents Act and he has not yet infringed the suit Patent and Panna files an appeal in the High court for an interim injunction against Job who has stated their intention to infringe the suit patent so as to qualify as intested person.

    Should the Court must grant interim injunction?, against Job who has not yet infringed the suit patent just on the ground of presumption/ imminent threat of Infringment in future.

    Regards
    Zuber

    Reply
  3. AvatarAnonymous

    It seems that few people have been hurt hard both mentally and spiritually by the recent interim ex-parte injunction.

    Just an advise to them….
    Every action has a reaction!!

    Reply
  4. AvatarJ.Sai Deepak

    Dear F.A.
    Thanks for the comment. There are two levels, general and specific, at which I would like to address the points you have raised.

    At a general plane, the attempt behind the posts was to specifically tackle the issue of “jingoism”, I should thank you for raising this point because I was hoping someone would do it and I couldn’t have asked for a better person to moot a discussion on these lines. My posts deliberately spoke of a non-pharmaceutical invention, and invariably, the comments have veered towards “pharmaceutical” opponents.

    This is probably symptomatic of discussions (most of which are more or less debates) on patents, more so in our (Indian) context. I am not saying this is the root of all that is bad about our discussions because as a developing nation, access to affordable healthcare remains one of our primary concerns and since patents have a real impact on this issue, we are justified in showering it with attention.

    That said, the flip side to such an approach is that slowly but surely, the patentee’s cause is becoming a politically incorrect cause, so much so that anyone can take any extreme stance about what a patentee ought to be entitled to and what he shouldn’t be, and get away with it because the discussions have demonized all patentees regardless of their area of business, even if the vilification is restricted to a certain field/branch of technology such as pharmaceuticals. Today, if a few patentees get together to brain storm on issues which commonly plague them, the very forum is given a jaundiced hue and conspiratorial motives are imputed to it.

    This is unwelcome because the corridors of power (and its off-spring law) aren’t totally free from the influence of polarized debates; these debates, in significant measure, hand more ammunition to those who already perceive patent/IP litigation as “luxury litigation” (borrowed words, not thoughts).

    What’s even more alarming is that some of these debates aren’t even policy debates, these are debates on law and yet they have a populist tone, not an objective one which behoves a legal discussion. Let me try and go a step further and clearly state what I mean; I strongly believe that policy rumination is not a spectator sport; therefore, it is all the more imperative that when a person propounds a particular line of thought, he or she ought to put sufficient effort in clearly demarcating policy arguments (“ought” arguments) from legal arguments (“is” arguments).

    Continued

    Reply
  5. AvatarJ.Sai Deepak

    Continued
    Moving to a specific plane, in my short stint, at the expense of sounding immodest, I have represented both patentees and defendants, so neither am I neither pro-patentee nor anti-defendant/opponent; I am merely for the patentee’s right to be heard objectively.

    All I intend to convey through the posts is that the framework, as it exists on paper today, is susceptible to a lot of subterfuge without a defendant having to put his creative juices to work. In fact, I am not even saying that only opponents (who are not innovators) in a particular filed of technology can use the system to their advantage; my short point is that the system is capable of being employed by and between 2 patentees who are competitors. In other words, the picture, in its default mode, is lopsided.

    A sharp friend of mine pointed out a hypothetical which shows how the opposition mechanism can be pressed into service even by unscrupulous patentees/applicants. In the hypothetical, an applicant can keep planting opponents to prolong the examination of his application; in the interim, he can derive value out of “patent pending/applied” for whatever it is worth.

    Therefore, if serving public interest is the objective behind multiple layers of scrutiny, multiple layers need not be the only way of doing it; we could probably think of rationalized alternatives to achieve the same goal.

    Please let me know your thoughts.

    Best Regards,
    Sai.

    Reply
  6. AvatarAnonymous

    Dear Sai Deepak,

    If the plan was to get people to talk from a patentee’s perspective as well.. then, frankly, the current hypothetical was too lopsided which resulted in comments which tended to take the debate.. in the typical ‘current’ one sided party/ manner. You saw.. both sides were trying to prove their point 🙂

    So, let’s come back to the concern that you have… the multiple attacks that are face/ open to the Patentee/ Applicant.

    I do think that some restraint, in the form of a time limit to filing pre-grant oppositions will be a very effective anti dote to the majority of frivolous/ malafide oppositions filed. This basic implementation by amending the rules will alleviate a large part of the concern you raised.

    Finally, coming to the observation of your friend, filing a ‘friendly’ opposition to keep the App alive is some thing that we are aware of.. but a practise that is increasingly rare in today;s time.

    Regards,
    Freq. Anon.

    Reply

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