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In two separate decisions last month, the Intellectual Property Appellate Board (IPAB) has revoked three patents, one belonging to Ram Kumar and two belonging to Bharat Bhogilal Patel. Both patentees are classic ‘patent trolls’. I use the term ‘patent troll’ not in the sense of traditional ‘non-practicing entities’ but in the context of patentees who seek to exploit the weaknesses in the legal system to enforce equally weak patents. The IPAB orders can be accessed over here and here.
The mode of enforcement sought by both patentees in this case was the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. To the best of my knowledge, both patentees did not file any civil suits for patent infringement. Instead both patentees had filed complaints with Customs Commissioners at various ports of entry requesting the Customs Department to seize ‘import consignments’ on the grounds that the said consignments were infringing their patents. While Ramkumar had been granted a patent for dual SIM mobile phones that permitted simultaneous communications on both SIM cards, Bharat Bhogilal Patel was granted two patents: the first patent was for a ‘laser marking & engraving machine’ and the second patent was for ‘marking, etching & engraving by using laser beam on metals and non-metals’.
In the year 2009 after some initial hiccups, the Customs Departments started to seize several imported consignments of dual-SIM mobile phones in Chennai, Mumbai and Delhi on the grounds that these imports were infringing Ramkumar’s patent. The importers were some of the biggest names in the mobile phone industry such as Samsung, Spice, Micromax, Hansum etc. While some importers decided to pay Ramkumar the royalties he demanded, the rest of the companies kicked off a series of litigations across the length of the country, ranging from the District Court of Gurgaon to the High Courts of Punjab & Haryana, the High Court of Madras, the Customs Commissioners in Delhi, Mumbai & Chennai and the IPAB.
Eventually the Customs Commissioners in all three cities released the consignments, after hearing both parties, on the grounds that most of the imports did not infringe Ramkumar’s patent. By that time however Ramkumar had made quite the killing from the importers who had already paid him. Eventually money disputes within Ramkumar’s circle of associates resulted in the murder of one of Ramkumar’s associates. Shamnad had blogged extensively on all these developments over here & here.
On the other hand, Bharat Bhogilal Patel was not so lucky in enforcing his patents despite the Bombay High Court occasionally prodding the Customs Commissioners to follow the IPR Import Rules. Patel however did succeed in being quite the nuisance for several big ticket companies. For instance, the head of Raymond’s was almost subject to criminal prosecution for patent infringement because of Patel’s petition before the Bombay High Court. I’ve covered that case of over here. Several other companies such as L.G. etc. were also issued notices by the Customs on the grounds that they were violating Patel’s patents. However, as far as I’m aware nobody has actually paid Patel any royalties for the intervening period.
A brief summary of both decisions:
A. Spice & Samsung v. Ramkumar: In the present case, Ramkumar’s patent no: 214388 was sought to be revoked by two different mobile companies: Spice Mobiles, represented by S. Majumdar and Samsung India, represented by Pravin Anand & Archana Shankar of Anand and Anand.
(i) Amendments of the claims: The first argument addressed by the IPAB was the several amendments to the patent specification during the prosecution of the patent application. The extensive amendments during the prosecution resulted in the number of claims increasing from the initial 4 to 20 at the time of grant. Since almost all the claims appear to be dependent on Claim 1, I’ll reproduce only that claim:
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“A mobile phone is to be incorporated with a provision for a plurality of current simcards and/ or modified simcards, a plurality of current simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/ earphone jacks for accepting a plurality of headphone/ earphone plugs and / or a plurality of Bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective simcards.”
The applicants argued that as per Sections 57 & 59 of the Patents Act, 1970 a patent application or a patent specification can be amended only through an explanation or disclaimer or any other means which does not result in broadening of the original claims. As a result it was argued before the IPAB that the amendments were secured through fraud and also that the amendments were invalid since they were much broader than the original claims as filed by Ramkumar. In his defence Ramkumar tried arguing that all the amendments were a result of the clarifications sought by the patent office.
The IPAB accepted the arguments that the amendments were too broad and that “amended claims 1-20 do not fall wholly within the scope of the claims 1-4 as originally filed”. As a result the IPAB set aside the amendments to Ramkumar’s patent.
The IPAB also counselled the Patent Office to apply its “discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present case.”
(ii) Lack of Novelty under Section 64(1)(e): The second ground of challenge was the ‘lack of novelty’ in Ramkumar’s invention. Also referred to as the ‘anticipation’ argument, this ground requires proof that such an invention was already known either through its publication or through actual working. Towards this end, both Spice and Samsung supplied the IPAB with a list of prior art which they thought adequately anticipated Ramkumar’s patent.
The IPAB’s analysis on this point was slightly muddled, in my opinion, since in certain portions it appears to confuse ‘anticipation’ with ‘inventive step’ despite both grounds being distinct from each other. In any case the evidence pointing towards anticipation appears to have been quite overwhelming and it was not surprising that the IPAB agreed with Spice and Samsung that most elements of Ramkumar’s patents were anticipated by prior art.
(iii) Lack of inventive step Section 64(1)(f): The third ground of challenge was the ‘lack of inventive step’ in Ramkumar’s patent. The ‘inventive step’ argument challenges the validity of a patent on the grounds that the claimed invention “does not involve a technical advance as compared to the existing knowledge” thus making it obvious to a person skilled in the art.
Both Spice and Samsung were able to produce an entire tranche of prior art establishing the obviousness of most claims in Ramkumar’s patent, especially the prior art relating to ‘dual-SIM’ cellular phones. Once again the IPAB was in complete agreement with Spice and Samsung on this ground.
(iv) Section 8 Argument: The last ground involving a Section 8 challenge was not dealt with by the IPAB on the ground that the patent was in any case being revoked on the count of anticipation and lack of inventive step.
The decision ends with costs being imposed on Ramkumar and a direction to the Controller General of Patents to remove the patent from the Register of Patents.
The revocation order of the IPAB is reflected in the E-Register available on the website of the Patent Office.
B. Aditi Manufacturing Co. v. Bharat Bhogilal Patel: In this case the petitioners, represented by Rushvi Shah & Zahid Shaikh had initially filed the revocation petition before the Gujarat High Court which then transferred these petition to the IPAB. The two petitions in question sought to revoke two patents: Patent No.189027 granted for a process of manufacturing engraved design articles on metals or non-metals and Patent No. 188787 granted for an improved laser marking and engraving machine. The IPAB order can be accessed over here.
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According to the patentee the invention in both patents was in the following:
(i) “marking, etching engraving, scrubbing and cutting were done in one stroke. He submitted that all the prior arts are US Patents and they were used in a different voltage from the Indian one.”
(ii) “that the industrial application of the invention is much wider. There is a beam in the invention which is not found in the prior art. The range in the invention is wider to cover all materials from plastic to diamonds and it is therefore, cost efficient and effective.”
(iii) “that in the invention different sources of light may be used and the multi-step process for marking has been made into a single step process.”
(iv) “that the invention works in Indian temperature when compared to the prior art and even Small Scale Industries can use it and therefore, it has economic significance.”
(v) “that the invention is not a software by itself.”
The applicant seeking to revoke the patents, appears to have filed extensive evidence to establish prior art. Some of this prior art includes US patents, Japanese patents, trade magazines, expert witnesses affidavits of one professor & one engineer and bills and invoices to show how similar inventions were being transacted in the Indian marketplace even prior to the patent applications filed by the patentee. The key thrust of all this evidence was to establish that the invention claimed by the patentee was widely known in prior art and that the patents though granted failed to establish the improvements over prior art.
Unlike the Ramkumar case, the IPAB has carefully documented all of the evidence, including expert witness evidence, filed by the applicant while deciding the case in favour of the applicant. In pertinent part the IPAB held “In the present case, prior arts have the features of the invention and there is nothing new in the features that have been claimed as new. The three experts have testified to this. We have evidence before us that the very same machine has been purchased by others prior to the date of invention.”
Hence both revocation petitions were allowed with the conclusion that “The invention was already known and there is neither any novelty nor any inventive step and therefore, both the TRAs are allowed.”
Both patents are unavailable on the IPAIRS website and I’m unable to confirm whether they have been revoked from the patents register.
Conclusion: In conclusion, I estimate that with both these patents being revoked, not only has the IPAB reduced its caseload by two cases but also put an end to almost a dozen litigations across the country before several forums including the Madras High Court, the Delhi High Court, the Bombay High Court. These cases are classic examples of why India needs to have a much more efficient IP adjudication mechanism.
Although I recognize the inefficiency problem that the patent troll business model creates within the economy, nevertheless the NPE model is profitable, effective, and a legal exercise of IP rights. The problem is a systemic one; when NPEs win, on average, two to three times the damage awards that practicing entities reap from patent litigation, you can’t blame them for suing as aggressively as possible.