Here’s the third of Saahil Dama’s guest posts on interim injunctions in patent cases. Here, he examines the most notorious example of “injunction holdup” – the Ramkumar case. [Disclaimer: This is a fairly long post.]
Saahil is a student at National Law University, Jodhpur. He is currently in the fourth year and is pursuing Intellectual Property Law Honours at the University. You can find his previous posts here and here.
Interrogating Interim Injunctions: Ramkumar’s dual-SIM patent
By Saahil Dama
Some readers may remember the controversy this case threw up back in 2009, with SpicyIP even receiving a defamation notice for covering it. Hopefully the current post will be able to talk about it without the accompanying drama.
After a brief hiatus in our I-3 series, we return to showing the deleterious effects of ex parte injunctions on justice at large, through a series of cases.
In my previous posts (here and here), I’ve explained that while standards and safeguards exist for the grant of ex parte injunctions in IP cases, they are rarely followed. In this post, I’ll be covering the absurd saga between Ramkumar and mobile phone companies such as Samsung and Spice Mobiles to show that ex parte orders, often, completely fail to consider the standards for granting injunctions, viz. prima facie case, balance of convenience and irreparable injury.
I call it absurd for multiple reasons (the legal absurdities will be discussed in the post). It probably has the infamous label of being the only ‘patent murder’ case in the country, being called so because of the murder of Divakaran Sankaran, the CEO of Vikas Systems. Vikas Systems was started by Ramkumar, who was then the patent-holder for dual-SIM phones.
To avoid digressing into issues that aren’t relevant for the I-3 series, I will be limiting the scope of this post to ex parte injunctions only, while ensuring that it does not obfuscate or prejudice the analysis in any manner. Issues about seizures by the customs authorities have been covered by Prof. Basheer here, here and here.
Madurai-based inventor, S. Ramkumar, filed a patent specification in 2002 for a mobile phone that could incorporate two SIM (Subscriber Identity Module) cards. The four claims under the originally filed specification were for regular dual-SIM technology phones (p. 4 of the IPAB revocation order). The international search report categorically states that the claims were not novel since these features had already been disclosed in DE 19919389 A1 (Siemens AG). The report concludes that the requirement of unity of invention had not been complied with.
These four claims were amended in 2006 and were increased to twenty as granted in 2008. Some of these changes were integral to the very foundation of the original claims, such as –
- The title of the specification was changed from ‘Mobile Phone with Multiple Number of SIM Cards to Receive and/or send Multiple Number of Signals at a time’ to ‘Mobile Phone with a Plurality of SIM Cards Allocated to Different Communication Networks.’
- The new claims allowed for ‘plurality of current simcards’ along with a ‘plurality of headphone/earphone jacks.’
- The nature of the invention was completely altered from a normal dual SIM card phone to a phone capable of simultaneous communication.
The following table notes the differences between the two claims –
|Original Specification (2002)||Amended/Granted Specification|
|Title||Mobile Phone with Multiple Number of SIM Cards to Receive and/or send Multiple Number of Signals at a time||Mobile Phone with a Plurality of SIM Cards Allocated to Different Communication Networks.|
Table from IPAB order.
In 2009, Ramkumar filed a civil suit before the Madras High Court to prevent manufacture of dual-SIM mobile phones in the country because they infringed upon his patent. He prayed for an injunction against manufacture by companies such as Spice and Samsung amongst others. An ex parte injunction was granted on March 23, 2009 (original order unavailable online). The order stated –
‘Heard the submissions made by the learned counsel appearing for the applicant… The applicant has produced Patent Certificate granted on 11.2.2008 for the invention of Mobile Phones with plurality of Sim Cards allocated to different communication networks:
…Therefore, there shall be an order against respondents 1, 4, 6, 7, 8, 10 and 11 that they shall not engage in manufacturing dual or plural sim card phone India till 13.4.2009.’
However, as of August 4 , the order was still in force, as was noted by the Madras High Court. Though the injunction wasn’t vacated, on October 23, 2009, the operation of the patent was stayed by the IPAB, making the matter infructuous.
In the main application filed by Samsung and Spice Mobiles, the patent was finally revoked on June 1, 2012, on the grounds of anticipation and lack of inventive step.
Problems with amendment of claims
On a prima facie reading, it is apparent that the original claims and the subsequent amendments are almost entirely different. The original claim was for mobile phones with two SIM cards wherein both the cards could send signals simultaneously. These are the exact phones that companies such as Samsung and Spice Mobiles were making at the time. The final claim was for mobile phones with ‘a plurality of headphone/ earphone jacks for accepting a plurality of headphone/ earphone plugs and / or a plurality of Bluetooth devices’ that enabled communication on both the SIM-cards simultaneously.
The phones in the amended claims would necessarily have multiple headphone/earphone jacks and/or multiple Bluetooth connections which would allow the user to communicate via both the SIM-cards at the same time. Regular dual-SIM phones can be used to communicate only via one SIM at a time even though the other card can still send and receive signals. Ramkumar’s phones would operate differently by enabling both SIMs to be active at the same time, serving a separate utility altogether. This device would be structurally and functionally different from regular dual-SIM phones
In this regard, the IPAB noted ( p.14) – ‘…the scope of protection as well as the disclosures in the patent specification have been altered by the incorporation of entirely new features of Head phone, Ear phone, Ear plug, Blue tooth device which were not disclosed or claimed in the original patent specification. The amendments have wholly altered the scope of the invention.’
Section 59 of the Patents Act, 1970, disallows amendments that introduce matter that was not disclosed or shown in the original specification and does not fall wholly within the scope of the original claim. Evidently, Ramkumar’s amended claims were clearly in contravention of section 59 since they changed the entire nature of the original claim.
While granting an injunction, the Court is duty-bound to adjudge the prima facie strength of the patentee’s case. There are two grounds on which this requirement is not met for Ramkumar’s claims –
a) The straightforward analysis above shows that the grant of the patent was highly questionable in itself. Therefore, the Court should’ve given it due consideration before passing an order as harsh as an ex parte injunction.
b) What makes this order even more problematic is that the companies’ phones were completely different from that of Ramkumar’s. Even if the amended claims were considered to be valid, Ramkumar was clearly claiming more than was protected by his patent. Due to the Court’s failure to see through this obvious façade, an injunction was granted against phones that were completely different from Ramkumar’s patent.
Complete imbalance of convenience
The balance of convenience test requires the court to weigh the relative hardship that would be caused to the parties in case injunction was granted/not granted. Ramkumar claimed his patent in 2002 and it was granted in 2008. He filed a suit against the companies in 2009. In this intervening time of seven years, he had failed entirely to work his patent. He had neither made a marketable version of the product nor had prepared a proper prototype (classic patent troll behaviour). He had made no attempts to manufacture, sell or market the product despite him having filed his claims seven years prior.
Thus, the inconvenience caused to him would’ve been negligible as compared to that caused to the companies. The companies were legitimate importers and manufacturers who had genuine intentions of making dual-SIM phones available to the public. The injunction completely prevented them from manufacturing these phones, resulting in large-scale losses. To get a scale, a ban on imports cost Spice Mobiles a loss of Rs. 35 crores for the months of February and March alone (p. 9 of the revocation order). Also, the launch of India’s First Dual Mode (GSM + CDMA) phone had been put on hold (p. 10) which resulted ‘in irreversible loss of business revenue, reputation of First applicant [Spice Mobiles] and other stakeholders like employees, distributors, dealers, suppliers and public shareholders.’
An injunction would effectively bring a halt to the companies’ manufacturing. This would also deprive the public of these products since Ramkumar was also not manufacturing these phones. While granting the injunction, the Court did not consider this balance, creating detrimental repercussions for the defendant-companies and consumers.
Zenit Metaplast’s precedent makes it clear that injunctions are to ‘protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial.’
Since Ramkumar had not made any commercial application of his patent, it is difficult to see how an irreparable injury would be caused to him in the absence of an injunction. Even if Ramkumar’s patent was upheld, any loss caused could’ve been compensated monetarily by the companies. While passing the ex parte order, the court does not seem to consider this at all.
Ramkumar’s modus operandi was simple – get a rapidly growing technology patented and use it as a sword against others without developing upon the patent himself. Regrettably, the injunction stayed in force and prevented legitimate commercial activity for seven months; whereas the patent itself was revoked only in June 2012, three years later. Our Courts, by granting the injunction, had played right into Ramkumar’s ploy.