In a major boost to Bajaj Auto Ltd. (“Bajaj”), the IPAB in a recent decision, upheld Bajaj’s patent IN189097 (‘097 patent) relating to an intake system for two-stroke engines in two wheelers with a monocoque chassis – in a revocation proceedings brought in by LML Ltd. (“LML”). Bajaj was represented by – M.K. Chakrabarti and LML was represented by – Prathiba Singh.
Around the time the ‘ 097 patent issued, Bajaj sent a cease and desist notice to LML, pursuant to which LML filed the revocation proceedings before the Delhi High Court. After the IPAB was formed, the DHC transferred the case to the IPAB.
The ‘097 patent: During the late 80s and early 90s, the two wheeler industry was looking for methods and techniques to improve the fuel efficiency of vehicles, and reduce emissions. Major drawbacks of two-stroke engines was that they high fuel consumption and high emission due to inherent design of two wheelers. Many ways to overcome these problems were looked at but they all created some additional disadvantages like increase in number of parts, increase in weight etc.
What the ‘097 patent did was to achieve the two objectives in a manner that did not result in the above mentioned disadvantages. And the ‘097 patent achieved this by creating a two-wheeler with a monocoque chassis and engine with transmission disposed at one side of the vehicle. Notably, the ‘097 patent placed a reed valve in a minimum space between a crank case and a carburetor housing in the intake system while keeping and maintaining monocoque chassis of the scooter and retaining the intake system, chassis shape and engine transmission positioning according to earlier designs.
LML argued that the ‘097 was not novel, was obvious (did not involve an inventive step), and the complete specification did not sufficiently describe the claimed invention. LML cited 12 different prior art documents to show that the ‘097 patent was not novel, and was obvious – these documents included patents, as well as service manuals, and engineering drawings.
LML argued that a few references completely anticipated the claimed invention in the ‘097 patents, and argued that a combination of various references rendered the claimed invention obvious. In response, Bajaj explained in detail the nature of the invention, and how it was different from each prior art document cited by LML. Notably, Bajaj was able to show that none of the documents completely anticipated the claimed invention nor their combinations rendered it obvious: “[N]one of cited prior arts discloses the claimed elements of the patent i.e. no prior art disclosed intake system comprising an air filter, a carburetor, carburetor housing, air filter being positioned on the said carburetor; carburetor and air filter being accommodated within carburetor housing and a reed valve being adopted and positioned between the carburetor housing for a two substantially on one side of the said vehicle.
The Board concluded that the LML had not cited even a single document which has all the claimed features of the invention but rather relied on different documents /specifications put together in the form of mosaic of citations which is not sufficient to prove anticipation.
As regards the issue of obviousness / inventive step, the Board agreed with Bajaj’s reasoning that it was not possible for one of ordinary skilled in the art that to simply adopt known (or off the shelf) shape and structure, mounting arrangement of reed valve. The arrangement rather depended on type of intake system, availability of space, result/function expected from reed valve, hence the invention is not obvious to average person skilled in the art….”We do not agree with the applicant that the claimed invention is mere workshop modification and arrangement. We agree with the respondent that one cannot adopt known (or off the shelf) design/shape of reed valve and its mounting arrangement to any or all types of intake system.”
The Board cited the case of Buchanan Vs. Alba Diagnostics Ltd., quoting “if the invention contained in a prior patent had been something which was made more useful or convenient by a subsequent patent, the latter was something which in ordinary language might be considered to be an improvement on the prior patent”.
As regards the grounds of insufficiency (in disclosure), the Board found that the specification has disclosed the invention sufficiently and fairly. “In absence of any evidence of the applicant to the contrary we are inclined to disagree with the argument of the applicant in respect of insufficiency. This ground therefore also fails.”
Challenge under Section 3(f) of the Patent Act: LML contended that the ‘097 patent referred to a mere arrangement or rearrangement or duplication of known devices each of which carry on their own functions in an independent manner. Bajaj countered by submitting that even though the parts per se are known but the combination function was different.
