Innovation Patent

Innovation in the first class: Virgin v. Jet/Contour


Sumathi had recently discussed the Virgin Airways case and had very neatly summarized the proceedings at the Chennai patent office.  This post analyzes the decision in further detail, and provides key claim construction issues and drafting style pointers as discussed in the decision.  My take on the “concept level rethink” issue is that the inventor had approached the problem of providing best possible seating arrangement in a constrained space by changing both the seat (first opposition) and the arrangement (second opponent) that it went way beyond the then established methods.   
     
Brief Facts:  Virgin Atlantic Airways Ltd. (hereafter “Virgin”) applied for a patent in India related to passenger seating in an aircraft.  The object of the invention was to provide improved passenger accommodation for a business-class section of a passenger aircraft, where the accommodation incorporated a flat sleeping surface of maximal length and/or maximal width.  Jet Airways (India) Ltd. (hereafter “Jet”) opposed the grant of patent to Virgin’s application on the grounds that the invention was not novel (anticipated) and was obvious in view of prior art submitted.  Over the course of prosecution of the patent application, the applicant made and submitted to the patent office, several changes to the claim set after the First Examination Report (FER).

Jet opposed the inclusion of an amended set of claims because it felt that Virgin was encompassing new matter not fully described in the originally filed specification and hence the changes (to the claims) were going beyond the scope of the specification, which is not allowed under section 59(1) of the Patents Act.  Virgin argued that for an invention to lack novelty, its complete subject matter must be derivable from the prior art in a single document.  Virgin also argued that the examination of the inventive step should include the preamble of a claim as well.  More importantly Virgin argued that two prior art documents could not be combined to yield a particular result if their teaching is contradictory.  In response to the obvious argument raised by Jet, Virgin argued that Jet had adopted an “ex-post facto” claim analysis, and hence could not be the correct standard for judging claims.  Jet tried to introduce new citations some time in 2010 (original opposition was filed in 2008!!) but the Controller correctly did not allow the same to be taken on record as it did not destroy novelty.
After the First pre-grant opposition, Virgin made certain amendments to the claims including combining certain independent and reiterated their stance on the opposition grounds made earlier.  The Controller considered the resubmitted claims and found them to be both novel and unobvious in view of the art submitted by Jet.  In late 2010, Premium Aircraft Interiors UK Limited, later on renamed as Contour Aerospace Limited (hereafter “Contour”) filed a second pre-grant opposition proceeding against Virgin’s application.  Contour did not oppose the complete claim set but only a partial one, 44-54 on the grounds of being anticipated and obvious in view of additional cited art.  After the first opposition by Jet, Virgin had grouped the claims according to a passenger accommodation unit (Group 1: Claims 1 to 14); a passenger seat assembly (Group 2: Claims 15 to 45); a passenger seating system (Group 3: Claims 46 to 54); a seat unit for a passenger seating system (Group 4: Claims 59 to 66); and omnibus claims (Claims 55 to 58), which were later deleted.  Contour was therefore challenging only the passenger seating system claims.  

The Controller decided that none of the cited documents by Contour contained all features of as disclosed by the Virgin because Contour had obviousness by selecting individual features from separate documents without saying (a) which document would serve as the basic starting point for combination with one or more of the other documents for the purpose of constructing of the present claims; and (b) what motivation the skilled person would have in selecting each feature.  The Controller also had occasion to discuss whether art (certain Airbus and American airline patents) submitted by Contour could be used against Virgin.  Virgin submitted that because both Airbus and American Airline patents had a priority date that was after the priority date of their application, both of them could not be used as prior art against them and the Controller agreed with Virgin. 
Both Jet and Contour opposition proceedings therefore failed because neither was able to show that the application was not novel and obvious. 

Key claim construction terms and claim drafting style discussed in the decision:
Characterized by:  The Controller briefly touched upon the term “characterized by” and commented on the usage in India and Europe.  In a claim which uses the words “wherein” and/or “characterized by,” etc., the features preceding the said word(s) are admitted to be known in the prior art.
Omnibus claims not allowed under Indian patent law:  An omnibus claims states whatever is disclosed in the description and drawings would also be the subject matter claimed.  Such claim usage is not allowed in Indian practice.
Novelty:  For an invention to lack novelty its subject matter must be clearly and directly derivable from the prior art and all its features – not just the essential ones – must be known from one single document;  Referring to the decision given by the Boards of Appeal of the European Patent Office –T411/98.
Examination of inventive step should also take account of the features in the preamble, since the invention was defined by the claims as a whole;  Referring to the decision given by the Boards of Appeal of the European Patent Office – T850/90.
When assessing inventive step, two documents should not be combined if in the circumstances their teaching is clearly contradictory; Referring to the decision given by the Boards of Appeal of the European Patent Office – T487/95.
Cannot approach obviousness by selecting individual features from separate documents without saying (a) which document would serve as the basic starting point for combination with one or more of the other documents for the purpose of constructing of the present claims; and (b) what motivation the skilled person would have in selecting each feature.
Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

5 comments.

  1. AvatarAnonymous

    really wonderful decision, it seems controller has analysed each and every fact in the file, person skilled in the art will not comment the judgement.

    Reply
  2. AvatarAnonymous

    Hi Rajiv,
    Good analysis on this one! Especially the drafting pointers. They are extremely good.

    I would like to agree with all the pointers except for one where the Controller has construed claims that use the word “wherein” should be accorded an interpretation- “the features preceding the said word(s) are admitted to be known in the prior art.”

    While practitioners may not dispute the construction accorded to the “characterized by” clause, they may have for for the “wherein” clause. Two quick points on why they may have.
    First, construction accorded to the “wherein clause” is definitely not true in mechanical cases, where to bring in more meaning to a given claim functionality of an element is tied up with that element by usage of “wherein clause”.
    Second, and again I would refer to to mechanical cases only, “wherein clause” may be written virtually at any place within the claim itself. So suppose if one drafts the claim in such a manner that the the “wherein clause” appears at the last of the claim, would it then mean that all the claim elements appearing before the “wherein clause” would be construed to be an admitted prior art? I doubt it.

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  3. AvatarRajiv Kr. Choudhry

    Anon @12:39: I agree that even though the decision is rather long, the Controller has taken pains to ensure that no point is left untouched. The parties made multiple representations and the Controller very ‘generously’ considered all of them.

    As regards multiple fonts: I think that there are at least three different writing styles in the decision-three parties(1 applicant, 2 opponents)..not a surprise there.

    This is a very welcome decision because it makes the proceedings totally transparent. We need more of such ‘transparent’ decisions.

    Reply
  4. AvatarRajiv Kr. Choudhry

    Anonymous @6:08: Thank you!

    As regards the construction of wherein, I agree with you that the use of wherein does not indicate that anything preceding it is prior art. I was trying to show that the Controller was following the European decisions. There is not a single US Federal Circuit case decision cited in the Controller’s decision!

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  5. AvatarAnonymous

    Controllers in Indian patent office can come up with such detailed decisions only if corresponding EP or US reports/decision are available.Generally EP decisions are preferred because they are easy to copy paste. US decisions are more elaborate and written on a claim by claim basis. Its difficult for controllers to copy paste US decisions as the claims may have been amended in India. To understand the truth about Indian patent office, read this feedback on DIPP website by Arijit Bhattacharya, former Assistant controller, to understand the real situation in patent office. http://dipp.nic.in/English/Discuss_paper/FeedBack_Restructure_CGPDTM.htm

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