Communication Components Antenna Inc vs ACE Technologies Corp. And Ors

,,,,

Prathiba M. Singh, J",,,,

I.A. 15222/2018, 1044/2019 & 1046/2019 (all stay applications)",,,,

The Plaintiff has filed the present suit seeking permanent injunction restraining infringement of Indian Patent No. 240893 (hereinafter,",,,,

“INâ€893â€). The patent is titled “Asymmetrical Beams for Spectrum Efficiencyâ€. The Plaintiff is a Canadian company, manufacturing and",,,,

selling, cellular base station products, and services relating to the telecommunication industry. It manufactures and sells various products such as",,,,

Antennae, Amplifiers, Low Loss Combiners, Tower Mounted Amplifiers (TMA) & Diplexers, Distributed Antenna System (PAS) Components and",,,,

Portable Passive Intermodulation (PIM) Testers. The Plaintiff also supplies a variety of antennae such as Specialty Antennae, Multi-Beam Antennae,",,,,

Bi-Sector Array Antennae, Small Cell Antenna and Multi-Port Antennae.",,,,

The suit patent was originally filed as a PCT application on 19th March, 2007. The domestic phase application in India was filed on 5th August,",,,,

2008, claiming priority from a Canadian application. INâ€​893 was granted on 9th June, 2010 and the term of the patent ends on 18th March, 2027. The",,,,

suit patent is not a standard essential patent (“SEPâ€​). However, the Plaintiff has licensed the patent to various parties.",,,,

The case of the Plaintiff is that the suit patent discloses a novel sector-antenna used by the telecommunication industry, which has an asymmetrical",,,,

beam pattern and other features as detailed in the specification. The Plaintiff has filed an expert report of Mr. Mark Cosgrove, who is an independent",,,,

expert, to establish infringement by the Defendants.",,,,

Defendant No.1 â€" M/s Ace Technology Corporation is a South Korean Company, which is also in the business of manufacturing and selling",,,,

antennae for the telecommunication industry. Defendant No.2 â€" M/s Shin Ah Ltd. is a Hong Kong based company, which the Plaintiff contends is",,,,

part of the “overseas networkâ€​ of Defendant No.1. Defendant Nos.3 and 4 are the Indian subsidiaries of Defendant No.1. For the sake of brevity,,,,

and convenience, they shall collectively be referred to as “Defendantsâ€​.",,,,

The Plaintiff claims that it acquired knowledge of the Defendants†infringing antennae sometime in 2017, and it was able to procure an image of",,,,

the beam pattern of the dual-beam fixed beam antenna of the Defendants, during a presentation being made by a cellular operator in India. The",,,,

Plaintiff then compared the beam pattern of the Defendants†antenna and realised that the same was infringing the suit patent. According to the,,,,

Plaintiff, two models of antennae of the Defendants were found to be infringing, i.e., -",,,,

i) XXDW-18-33i-IVT-DB8P (hereinafter, “first modelâ€​);",,,,

ii) XXDH-20-33ie-VT-DB (hereinafter, “second modelâ€​).",,,,

Upon learning about the Defendants†antennae, the Plaintiff entered into correspondence with the Defendants. A letter dated 18th January, 2017",,,,

was issued to Defendant No.1 calling upon it to obtain a license from the Plaintiff. On 25th January, 2017, the Plaintiff issued the same letter to the",,,,

Indian subsidiaries of Defendant No.1. On 22nd February, 2017, Defendant No.3, replied to the notice issued by the Plaintiff, whereby its General",,,,

Manager stated that intimation of the Plaintiffâ€s notice was given to the Defendant No.1, and the Indian office of the Defendants agreed to revert",,,,

soon. However, since no response was received, further letters were issued on 18th November, 2017 and 23rd November, 2017. Despite the said",,,,

letters, the Defendants failed to respond. Accordingly, the Plaintiff has filed the present suit seeking permanent injunction against the Defendants from",,,,

infringing the Plaintiffâ€​s suit patent.,,,,

On 2nd November, 2018, after hearing counsels for the Plaintiff, the following order was passed.",,,,

“14. Patent rights being limited in life, despite being notified, the Defendants have taken no steps to either correspond with the Plaintiff, challenge",,,,

the patent or obtain a licence. It is clear from the averments made, that the Defendants have complete knowledge of the Plaintiffâ€s patent and are",,,,

violating the same. The Plaintiff has made a prima facie case. Considering that the market for Antennas is extremely limited, the Defendants, by",,,,

competing with the Plaintiff and not obtaining a license, severely impinge upon the Plaintiffâ€​s statutory rights.",,,,

Accordingly, the Defendants are directed till the next date of hearing not to offer for sell any Antennae, the models of which are mentioned",,,,

hereinabove to any cellular operators in India. However, if the Defendants have placed orders for imports, the same are allowed to be imported",,,,

subject to the accounts relating to the same being filed in this Court.â€​,,,,

The Defendants thereafter entered appearance and submitted that the second model is not manufactured or sold any more by the Defendants and,,,,

they did not intend to import the same into India. Insofar as the first model is concerned, the Defendants already had various orders for supply of the",,,,

same. It was further submitted by the Defendants, that the validity of the suit patent was challenged in Ten XC Wireless Inc & Anr v. Mobi Antenna",,,,

Technologies (Shenzhen) Co. Ltd. [CS(OS) 1989/2010] (hereinafter, “Ten XC v. Mobi Antennaâ€) and Ten XC Wireless Inc & Anr. v. Andrew",,,,

Comm Scope Inc [CS(OS) 1993/2010] (hereinafter, “Ten XC v. Andrew Comm Scopeâ€) (which were later re-numbered as CS(COMM)",,,,

977/2016 and CS(COMM) 1072/2016, respectively) and vide order dated 4th November, 2011 in the interim applications therein, the Court had",,,,

expressed a prima facie opinion that there is a credible challenge to the validity of the patent INâ€893, raised by the Defendants in the said suits,",,,,

which does not warrant grant of injunction. According to the Defendants, this order was concealed by the Plaintiff at the time of making submissions",,,,

on the first date of hearing, and, accordingly, the injunction order dated 2nd November, 2018, is liable to be vacated. It is the Defendants†further",,,,

case that the Plaintiffâ€​s patent is invalid and is liable to be revoked.,,,,

The Defendants have, thereafter, filed their written statement raising defences of invalidity under Section 64 of the Patents Act, 1970 (hereinafter,",,,,

“Patents Actâ€). It is further averred by the Defendants that in view of the various statements made by the Plaintiff in prosecution of the,,,,

corresponding patent in the USA, and the fact, that the corresponding EU patent has still not been granted, shows that the validity of the suit patent is",,,,

in severe doubt. The Defendants†further case is that the suit patent is not a patentable invention, in view of Section 3, sub-sections (a) (c) (d) and",,,,

(f), of the Patents Act.",,,,

The Plaintiff had reserved the right to include within the suit any other model of antennae of the Defendants that infringed INâ€893. Accordingly,",,,,

during the course of hearing, the Plaintiff filed two applications being I.A. Nos.1044/2019 & 1046/2019, whereby the Plaintiff avers that the following",,,,

models of the Defendantsâ€​ are also infringing INâ€​893, in addition to abovementioned antennae models:",,,,

i. XXDGL-15-33i-iVT-DB-4P;,,,,

ii. XXDW-18-33I-IVT-DB8P-V2.,,,,

During the course of completion of pleadings and hearing in the injunction application, various exports have been made of the impugned antennae",,,,

by the Defendants to India, which were permitted by the Court, under specific applications, subject to conditions that may be fixed by the Court in the",,,,

application for interim injunction. Whenever an export is to be made to India, the Defendants have moved an application and placed on record in a",,,,

sealed cover the invoice, purchase order and other relevant documents. Accordingly, till date there has been no interdiction of the supplies by the",,,,

Defendants to India, though the ad interim order continues to operate.",,,,

Submissions of the Plaintiff,,,,

On behalf of the Plaintiff, submissions have been made by Mr. C. S. Vaidyanathan, ld. Senior Counsel. It is submitted that the novelty in the suit",,,,

patent resides in the fact that by changing the beam pattern, greater efficiency in the usage of the spectrum is achieved. Spectrum being a scarce",,,,

commodity, continuous research is done by companies like the Plaintiff to achieve greater efficiency within the same spectrum. The purpose always is",,,,

to achieve greater efficiency without compromising on quality i.e., it has to be ensured that while allowing for greater number of subscribers being",,,,

connected, using the same spectrum, the quality of the calls is also to be maintained.",,,,

The prior art, that existed at the time of filing of the suit patent, was to the effect that there were fixed beam antennae, which emitted signals in a",,,,

single plane in all directions. The beam pattern of the said antennae was in the nature of a ripple, however, these antennae had various problems i.e.,",,,,

for users located closest to the location of the antennae, the coverage quality was good, however, as a user proceeded from the centre to the outward",,,,

region of the signal, the quality of the same was considerably compromised at the fringes.",,,,

Under such circumstances, instead of omni-directional antennae, sectoral antennae were introduced. A sectoral antenna was able to produce",,,,

better quality of coverage, while ensuring that the geographical area that was covered was not reduced. These sectoral antennae emitted symmetrical",,,,

beams, covering a 360-degree area. Such sectoral antennae also had some drawbacks, as several overlaps between sectors were being created",,,,

leading to enormous interference. The signals were compromised due to this overlap in the coverage area. Thus, there was a need to reduce the areas",,,,

of overlap. It was under these circumstances that the Plaintiffâ€s patent in respect of a sectoral antenna, with at least one asymmetrical beam shape,",,,,

was invented by the Plaintiffâ€​s predecessor i.e., Ten XC Wireless Inc..",,,,

The suit patent is, thus, a validly granted patent, which introduced asymmetrical beam patters in split-sector fixed beam antennae. Thus, according",,,,

to the Plaintiff any antennae that emit asymmetrical beam(s) that result in asymmetrical sub-sector coverage area(s) such that the summation/total,,,,

critical coverage area (i.e. the total dominant coverage area), of the sub-sector coverage areas of the split-sector antenna is substantially equivalent to",,,,

the critical coverage area (i.e. the dominant coverage area) of the earlier sector antenna, is covered within the scope of INâ€​893.",,,,

The suit patent was filed as a convention application, under the PCT system. It is granted in Canada under Canadian Patent No. 2,645,720 and in",,,,

the US under US Patent No.8,311,582 (hereinafter, “USâ€​582â€​), and is more than 12 years old, and is a valid patent.",,,,

USâ€582, after grant, was opposed vehemently by another competitor M/s CommScope Technologies LLC, which had filed invalidation",,,,

proceedings before the US Patent Trial and Appeal Board (hereinafter, “US PTABâ€). The US PTAB, vide its judgment dated 3rd November,",,,,

2016 upheld the validity of USâ€582. Even in the Request for Reconsideration filed by CommScope Technologies, LLC, the US PTAB vide order",,,,

dated 15th March, 2017 upheld the validity of USâ€582. The company â€" CommScope Technologies LLC, which had sought invalidation of the",,,,

Plaintiffâ€​s patent in the US, then took a global license for the patent.",,,,

It is the case of the Plaintiff that the patented technology has received commendation in various technical journals. The commercial value of the,,,,

patent can be gauged from the fact that the Plaintiffâ€s antenna is described as a “smart antennaâ€. It is stated that the Plaintiff gave a number of,,,,

presentations to Indian Service Providers and a large number of antennae were supplied by the Plaintiffâ€s predecessor in India. However, in recent",,,,

times, it was noticed that several third parties had started supplies of infringing antennae in India, leading to erosion of the Plaintiffâ€​s market.",,,,

The Plaintiff then filed two suits being Ten XC v. Mobi Antenna (supra) and Ten XC v. Andrew Comm Scope (supra). One was filed against,,,,

Mobi Antenna Technology, a Chinese company and the second was against Andrew LLC. It was in these cases that the judgment of the Ld. Single",,,,

Judge dated 4th November, 2011 was rendered. However, insofar as Andrew LLC is concerned, this company was a subsidiary of CommScope",,,,

Technologies LLC, which was the entity, which had sought invalidation of the Plaintiffâ€s patent in the US i.e., USâ€582. After the decision of the US",,,,

PTAB on 3rd November, 2016 and 15th March, 2017, a global license was entered into between the Plaintiff and Comm Scope Technologies LLC,",,,,

and hence one of the suits i.e., CS(COMM) 1072/2016 had been disposed of in terms of the said settlement. The second suit, i.e., CS(COMM)",,,,

977/2016, against Mobi Antenna Technology (Shenzhen) Co. Ltd. has been heard by a Ld. Single Judge of this Court finally, after trial, and the",,,,

judgment is reserved. Accordingly, it is submitted that the earlier judgment, wherein doubts were expressed on the validity of the patent, would not",,,,

disentitle the Plaintiff for an injunction in the present suit.,,,,

It is further submitted by Mr. Vaidyanathan, Ld. Senior Counsel, that the Defendants have adopted a unique modus operandi to camouflage their",,,,

infringing activities. It is a practice in the antenna industry to disclose the beam patterns of an antenna in the publicity material and other technical,,,,

brochures etc. Even the Defendants themselves, in respect of other antennae, have disclosed the beam patterns. However, insofar as the infringing",,,,

antennae are concerned, the Defendants have failed to disclose the beam patterns. Thus, the Plaintiff had to obtain the beam pattern of the",,,,

Defendantsâ€​ antenna, from third party sources. The same has been disclosed in paragraph 73 of the plaint.",,,,

He further submits that the slight difference in the language of the claims in USâ€582 and in India does not make any difference insofar as the,,,,

scope of the exclusivity is concerned. It is submitted that even the variation in language of claims in INâ€893 and the claims USâ€582, is clarificatory",,,,

in nature and nothing more. The asymmetry in the main beam in the manner as disclosed in INâ€893, is the novel feature, which has not been prior",,,,

published. It is submitted that unless the prior art precisely discloses the novel feature of the patented invention, the patent cannot be held to be invalid.",,,,

It is further submitted that insofar as the earlier judgment by the Ld. Single Judge of this Court is concerned, there are various developments,",,,,

which have taken place post the said judgment dated 4th November, 2011 in Ten XC v. Mobi Antenna (supra), which shows that the Plaintiff is",,,,

entitled to an interim injunction. The said factors are:,,,,

a) That at the time, when the earlier order was passed on 4th November, 2011, the suit patent was a recent patent.",,,,

b) The corresponding US patent had been rejected by the US PTO at that stage, but now the US PTAB has upheld the validity of USâ€​582.",,,,

c) One of the Defendants, who was also opposing USâ€​582, has now obtained a global licence for the Plaintiffâ€​s patent.",,,,

d) In the other suit, i.e., CS(COMM) 977/2016 evidence has been concluded, and the evidence points to the validity of the patent, though judgment is",,,,

reserved.,,,,

e) Since the earlier order dated 4th November, 2011 is one under Order XXXIX Rules 1 & 2 CPC and is only a prima facie opinion, depending on the",,,,

circumstances that existed at that time, it cannot be treated as a binding precedent to hold that the patent itself is invalid.",,,,

f) Since only 8 more years of the suit patent INâ€893 are left, the Plaintiff is entitled for protection of its statutory rights, failing which the purpose of",,,,

grant of the patent itself may be defeated.,,,,

Finally, it is submitted that the Defendants have not raised any new plea in respect of invalidity, which was not considered by the US PTAB.",,,,

Further, the mere raising of a plea does not mean that INâ€893 is invalid. The Defendants lacked bonafides in their conduct, as they have not",,,,

disclosed their beam patterns, in the entire proceedings. Thus, relying upon Sections 104 and 114 of the Indian Evidence Act, 1872 it is submitted that",,,,

the non-production of a document would raise a presumption that the said document, if produced, would be detrimental to the party which is resisting",,,,

the production. Reliance is placed by the Plaintiff on the following judgments, in support of its arguments:",,,,

• F.Hoffman-La Roche Ltd. v. Cipla Ltd. (2015) 225 DLT 391 (hereinafter, “Roche v. Ciplaâ€​);",,,,

• Gopal Krishnaji Ketkar v. Mahomed Haji Latif (1968) 3 SCR 862;,,,,

• Farbewerke Heochst v. Unichem Laboratories AIR 1969 Bom 225;,,,,

• Catnic Components Ltd. v.Hill & Smith 1982 RPC 183 (hereinafter, “Catnic Components Ltd.â€​);",,,,

• Actavis UK Ltd. & ors. v. Eli Lily & Co. [2017] UKSC 48.,,,,

Submissions of the Defendants,,,,

On behalf of the Defendants, Mr. Arun Kathpalia, Ld. Senior Advocate has made his submissions. The case of the Defendants is that the Plaintiff",,,,

is guilty of suppression, as the earlier judgment in Ten XC v. Mobi Antenna (supra) was not disclosed to the Court. It is submitted that under Section",,,,

13(4) of the Patents Act, there is no presumption of validity of a patent. It is false for the Plaintiff to contend that the patent enjoys worldwide",,,,

protection. Though it has been granted in some jurisdictions, USâ€582 has additional limitations on the claims, and thus, the scope of USâ€582 and",,,,

INâ€893 are considerably different. The Defendants rely on the US prosecution history of USâ€582 to support their contention that the patent is,,,,

invalid.,,,,

Vehement reliance is placed on the earlier order of this Court dated 4th November, 2011 in Ten XC v. Mobi Antenna (supra) and since in the",,,,

present suit, an application for interim injunction is being considered in respect of the same patent, the said order would be binding. The Defendants",,,,

also rely on the pendency of the EU application, and a limitation entered in the same to further substantiate their claim that the patent INâ€893 is",,,,

invalid.,,,,

On merits, the substantive challenge by the Defendants is that the claims use the word “replacingâ€, which means that the infringement of the",,,,

patent would happen only when an existing antenna is replaced with the patented antenna and not if a new antenna is being used or installed. The,,,,

Defendants seek to distinguish between brownfield infringement and greenfield infringement and averred that only a brownfield use would be,,,,

infringing and not a greenfield usage.,,,,

It is further averred that the Defendants do not infringe INâ€893, as the evidence filed by the Plaintiff is unreliable. The Plaintiff has failed to",,,,

compare the Defendants†antennae with the Plaintiffâ€s patent claims. It is the Defendants†submission that a product to product comparison,,,,

cannot be made to establish infringement. The Defendants rely upon beam patterns of their antennae, as simulated by the Plaintiff by using power and",,,,

phase weightings to argue that the beam patterns are different. Various grounds have also been relied upon to argue that under Section 64, the patent",,,,

lacks novelty and inventive step. The Defendants also aver that the patent is hit by Section 3, sub-sections (a), (c), (d) & (f) of the Patents Act. It is",,,,

also claimed that the expert evidence filed by the Plaintiff is unreliable.,,,,

Mr. Kathpalia, Ld. Senior Counsel, further, submits that since there is a credible challenge to the validity of the patent, no interim orders are liable",,,,

to be passed. He further submits that asymmetric beam patterns were in the public domain as on the date of priority of patent INâ€893. He submits,,,,

that Claim Nos. 1 and 10 are the claims being invoked by the Plaintiff. Since, Claim No.1 is a method claim, the Defendants do not infringe the said",,,,

claim. The main plank of the Defendants†submission is that since claim 10 uses the term “replacementâ€, there has to be physical replacement",,,,

of the antenna. In the absence of physical replacement, which can only be done by a network operator, the Defendants cannot be held to be",,,,

infringing. Since, as per the Plaintiffâ€s own statement before the European Patent Office, the replacement is physical, it can apply only to a",,,,

brownfield project. The use of terms such as replacement/upgradation and comparison with the original, clearly, shows that the claims are addressed",,,,

qua service providers/operators and not manufacturers or sellers of antennae, like the Defendants. According to Mr. Kathpalia, Ld. Senior Counsel,",,,,

the following was known to the Plaintiff on the date of priority:,,,,

• Dual beam sub sectoral antennae,,,,

• Base stations,,,,

• Asymmetrical beams,,,,

• Overlapping of beams,,,,

• The object of replacing an antenna with the same coverage area.,,,,

The fact that the Plaintiff had to add a limitation in the claims of USâ€582, shows that without the limitation the patent would have been obvious. It",,,,

is further submitted that there is no requirement for the Defendants to disclose their beam patterns in the present matter, as the Plaintiff had failed to",,,,

discharge its own onus.,,,,

The Defendants have relied on certain graphics filed with the list of documents dated 5th March, 2019 to argue that the total coverage area is not",,,,

comparable. This is based on some simulations that the Defendants have purportedly undertaken. The Defendants also rely on a technical opinion of a,,,,

Mr. Lee to submit that the beam patterns as shown in paragraph 28 of the plaint do not truly reflect the beam patterns of INâ€893. Reliance is placed,,,,

on Merck & Co. Inc. v. Generics (UK) Ltd. [2003] EWHC 2342 (Pat) (hereinafter, “Merck & Co. Incâ€) and Sandeep Jaidka v. Mukesh Mittal",,,,

& Anr. (2014) 5 HCC (Del) 715 (hereinafter, “Sandeep Jaidkaâ€​).",,,,

The Defendants, filed their written submissions on 16th May, 2019, wherein various additional submissions have been placed beyond what was",,,,

orally argued. The Defendants†submissions, to the extent they were orally argued are being considered for the purposes of the decision in the",,,,

application under Order XXXIX Rules 1 & 2 CPC.,,,,

The Defendants also rely on various prior art documents to submit that the suit patent is invalid. The main document is an article published on 1st,,,,

March, 2006, in “Mobile DevDesign†titled “Wireless solution boosts network capacity†(hereinafter, “Article of 1st March, 2006â€)",,,,

which discusses asymmetric beam patterns generated by dual sector panel antennae, which could be used for replacement of existing antennae or in",,,,

greenfield capacity deployments. Apart from this publication, the Defendants also relied upon the prior arts â€" US Patent No. 5,933,787 (hereinafter,",,,,

“Gilhousenâ€), US Patent No. 2,281,260 (hereinafter, “Newmanâ€) as also US 566655 (hereinafter, “Ishikawaâ€) and WO/2006/004463 A1",,,,

(hereinafter, “Hagermanâ€) mentioned by the Ld. Single Judge in judgment dated 4th November, 2011 in Tex XC v. Mobi Antenna. Reliance is",,,,

also placed on the International Search Report issued by the WIPO qua INâ€893, at the PCT stage. In conclusion, the submissions of the Defendants",,,,

are -,,,,

a. That INâ€​893 does not disclose any invention which is patentable;,,,,

b. The Plaintiff is guilty of non-disclosure;,,,,

c. Asymmetrical beam patterns were known in prior art at the time of grant of the patent INâ€​893;,,,,

d. The critical coverage area of the antennae is not the same;,,,,

e. Claim 1 of the Patent Specification of INâ€​893 does not apply to the Defendants;,,,,

f. The EPO patent application is still pending and patent has not been granted;,,,,

g. In USA, additional limitations to the Patent claims have been added in USâ€​582;",,,,

h. The word “replacing†in the Patent Specification claims shows that the patent would be infringed only if there is a replacement of the older,,,,

antenna with a newer one, and that too only by telecom operators/service providers, and not by manufacturers/sellers of the antenna.",,,,

Analysis and Findings,,,,

A. Concealment of material facts,,,,

The allegation of concealment arises due to the fact that at the time of the first hearing on 2nd November, 2018, the Court was not shown the",,,,

earlier judgment of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) relating to the same very patent. A perusal of the plaint, however, shows",,,,

that the earlier proceedings are fully pleaded and the judgment is also annexed. The plaint is quite detailed and the suits filed against the other,,,,

companies were mentioned in paragraph 59 of the plaint. While, there was a necessity to point out the same during oral arguments, the fact that the",,,,

Plaintiff has pleaded it and filed the judgment on record shows that there is no concealment by the Plaintiff. Thus, this is not a case for disentitling the",,,,

Plaintiff to relief on the ground of suppression.,,,,

B. Prosecution History of the Corresponding US and EU Patents as also statements made therein.,,,,

In order to appreciate the effect of statements made during prosecution of patents internationally and in India, it is necessary to state the prevalent",,,,

patent prosecution practices.,,,,

It is a matter of common knowledge that whenever applications are filed through the PCT route, the international filing office for PCT applications,",,,,

which is run and managed by the WIPO, issues an “International Search Report†(hereinafter, “ISRâ€). Along with the ISR, the WIPO also",,,,

issues an International Preliminary Examination Report (“IPERâ€), if a request in this behalf is made by the applicant. If no request is made by the",,,,

applicant, then the WIPO issues a report called International Preliminary Report on Patentability (“IPRPâ€). The details contained in the IPER are",,,,

the same as those in the IPRP. This ISR, along with the IPER or the IPRP, as the case may be, primarily gives a direction, on the basis of the initial",,,,

search done by the WIPO, as to whether the invention disclosed is novel and inventive and whether a patent is likely to be granted or not. Depending",,,,

on the opinion in the ISR and IPER/IPRP, the applicant chooses to move the patent application from the international phase into the domestic phase of",,,,

countries where the applicant feels that it is likely to get a patent.,,,,

Prosecution of patents is an expensive exercise and thus, the facility of ISR with IPER/IPRP, enables an applicant to take a considered decision",,,,

on the likely grant of the patent in a particular jurisdiction. This eliminates unnecessary expenses incurred by applicants in prosecuting applications in,,,,

various countries, across the world. The ISR, along with its supporting documents, is based on an initial search conducted on major patent databases,",,,,

by the international filing office. Thus, the search reports issued by the PCT office are to be treated like a first filter rather than a conclusive opinion",,,,

on patentability.,,,,

Once the patent application enters the domestic phase, various national patent offices examine the application in terms of the substantive and",,,,

procedural laws of the respective country. Patent rights are territorial in nature, and are limited to the country of grant. Broadly speaking, in order for",,,,

grant of a patent, the three tests of novelty, inventive step and industrial applicability have to be satisfied. However, there are several nuanced and",,,,

intricate dimensions to these three tests, in each and every jurisdiction. Apart from the substantive law of a country, the patent prosecution practices",,,,

of various patent offices are also different. Finally, the subjective satisfaction of each patent examiner in a jurisdiction would also be different. Thus,",,,,

there is a four-step analysis/processing of an international patent application filed through the PCT route viz.,",,,,

(i) International Search Report stage (ISR/IPER/IPRP);,,,,

(ii) Examination as per substantive laws in the domestic phase in each country;,,,,

(iii) Examination as per guidelines, patent prosecution practices and other procedural laws and",,,,

(iv) Subjective satisfaction of the examiner during the examination process.,,,,

IN240893,"US No. 8,311,582",,,

Claim 1. A method for increasing subscriber capacity in

a sectorized cellular communications network having a

plurality of subscribers and a base station supporting at

least one sector, the at least one sector having an

associated sector antenna at the base station having a

critical coverage area extending therefrom and

overlapping neighbouring sectors thereof in a sector

handover zone, the method comprising the step of:

replacing the at least one sector antenna with a

splitsector antenna having a plurality of sub-sector

coverage areas extending therefrom, at least one of

which is asymmetrical' each corresponding to a sub-

sector and overlapping a neighbouring sub-sector

coverage area in a sub-sector handover zone,

whereby a total critical coverage area of the plurality of

sub-sector coverage areas is substantially equivalent to

the critical coverage area of the at least one sector

antenna.","Claim 1. A method for increasing subscriber capacity in

a sectorized cellular communications network having a

plurality of subscribers and a base station supporting at

least One sector, each of the at least one sector having

one or more associated sector antennae at the base

station having a critical coverage area extending

therefrom and overlapping neighbouring sectors thereof

in a sector handover zone, the method comprising a step

of:

replacing the associated one or more sector antennae

for a given sector with a split-sector antenna having a

plurality of sub-sector coverage areas extending

therefrom, at least one of which is asymmetrical, each

corresponding to a sub-sector and overlapping a

neighbouring sub-sector coverage area in a sub-sector

handover zone,

whereby a total critical coverage area provided by the

plurality of sub-sector coverage areas is substantially

equivalent to a critical coverage area of the replaced

one or more associated sector antennae,

wherein said at least one asymmetrical sub-sector

coverage area reduces overlap with said neighbouring

subsector coverage area comparing to overlap of the;

replaced antennae while maintaining the critical

coverage area of the replaced antenna.",,,

Claim 10. A sub-sector antenna for use in a sectorized

cellular communications network having a plurality of

subscribers and a base station supporting at least one

sector, the at least one sector having an associated

sector antenna having a critical coverage area extending

from the base station and overlapping neighbouring

sectors in a sector handover zone,

the sub-sector antenna being constructed and arranged

for replacing the at least one sector antenna and having

a plurality of sub-sector coverage areas extending

therefrom, at least one of which is asymmetrical, each

corresponding to a sub-sector and overlapping a

neighbouring sub-sector coverage area in a sub-sector

handover zone,

whereby a total critical coverage area of the at least

one asymmetrical subsector coverage area is

substantially equivalent to the critical coverage area of

the at least one sector antenna being replaced.","Claim 30. A split-sector antenna for use in a sectorized

cellular communications network having a plurality of

subscribers and a base station supporting at least one

sector, each of the at least one sector having one or

more associated sector antennae at the base station

having a critical coverage area extending there from

and overlapping neighbouring sectors in a sector

handover zone

the split-sector antenna being constructed and arranged

for replacing the one or more associated sector

antennae and having a plurality of subsector coverage

areas extending therefrom, at least one of which is

asymmetrical, each corresponding to a sub-sector and

overlapping a neighbouring sub-sector coverage area in

a sub-sector handover zone,

whereby a total critical coverage area provided by the

plurality of sub-sector coverage areas is substantially

equivalent to a critical coverage area of the replaced

one or more associated sector antennae

wherein said at least one asymmetrical sub-sector

coverage area reduces overlap with said neighbouring

subsector coverage area comparing to overlap of the

replaced antennae while maintaining the critical

coverage area of the replaced antenna.",,,

Thus, the additional language in the claims of USâ€582 cannot be read as a limitation but is merely highlighting another aspect of the patented",,,,

invention. A perusal of the Indian specification shows that in the description of the invention, it is clearly stated as under:",,,,

“Where, as with the present invention, the new antenna may product a plurality of separate beams, each defining a new sub-sector, with only a",,,,

small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, a",,,,

single sector may be upgraded to become a plurality of sub-sectors without significantly affecting neighbouring sites.â€​,,,,

(At Page 10 of the Patent Specification),,,,

Thus, the feature of “reduction of overlap†contained in the additional language of the US claims is also a part of the Indian patent itself.",,,,

There is no external limitation that has been added in the US claims. Thus, the Defendantâ€s contention that INâ€893 is invalid, as there is an",,,,

admission in USâ€582 that without the additional language the patent is obvious, is liable to be rejected. From the above it is clear that the additional",,,,

language in USâ€​582 claims do not affect the scope of the Indian patent in any manner.,,,,

C. Construction of claims of the suit patent and infringement.,,,,

The claims of the suit patent being relied upon by the Plaintiff, for the purposes of infringement are claims 1 and 10. The same read as under:",,,,

“Claim No.1 â€" A method for increasing subscriber capacity in a sectorized cellular communications network having a plurality of subscribers and,,,,

a base station supporting at least one sector, the at least one sector having an associated sector antenna at the base station having a critical coverage",,,,

area extending therefrom and overlapping neighbouring sectors thereof in a sector handover zone, the method comprising the step of:",,,,

replacing the at least one sector antenna with a split-sector antenna having a plurality of sub-sector coverage areas extending therefrom, at least one",,,,

of which is asymmetrical, each corresponding to a sub-sector and overlapping a neighbouring sub-sector coverage area in a sub-sector handover zone,",,,,

whereby a total critical coverage area of the plurality of sub-sector coverage areas is substantially equivalent to the critical coverage area of the at,,,,

least one sector antenna.,,,,

Claim No.10 â€" A sub-sector antenna for use in a sectorized cellular communications network having a plurality of subscribers and a base station,,,,

supporting at least one sector, the at least one sector having an associated sector antenna having a critical coverage area extending from the base",,,,

station and overlapping neighbouring sectors in a sector handover zone,",,,,

the sub-sector antenna being constructed and arranged for replacing the at least one sector antenna and have a plurality of sub-sector coverage areas,,,,

extending therefrom, at least one of which is asymmetrical, each corresponding to a sub-sector and overlapping a neighbouring sub-sector coverage",,,,

area in a sub-sector handover zone,",,,,

whereby a total critical coverage area of the at least one asymmetrical sub-sector coverage area is substantially equivalent to the critical coverage,,,,

area of the at least one sector antenna being replaced.â€​,,,,

The suit patent is titled “Asymmetrical Beams for Spectrum Efficiencyâ€. The background of the invention sets out how spectrum is a scarce,,,,

resource and how various access techniques have been introduced such as FDMA, TDMA, CDMA, etc. These access techniques had been",,,,

developed with the purpose of increasing the number of subscribers, within the available resource of the spectrum. The background further sets out",,,,

the loss during transmission of signals, which shows that the communication range is a finite range. It was in order to overcome these shortcomings",,,,

that cellular telecommunication was introduced. The greater number of cells in a network meant that increased number of subscribers could use the,,,,

cell. While maximising the number of cells, the existing disadvantage was that there could be too many overlaps between the cells, thereby decreasing",,,,

the quality of the service. Continuous research, has been undertaken on how to maximise the number of cells, while maintaining quality, reducing",,,,

overlaps and maximising subscribers.,,,,

The background clearly sets out the manner in which this quality increase has been attempted in CDMA technology, FDMA technology, and",,,,

TDMA technology. Thereafter, INâ€893 sets out how to improve efficiency of cellular systems. The concept of sectorisation was then introduced.",,,,

Under this concept, one omni- directional antenna is placed in the centre of the cell, which would replace N-directional multiple antennae. This single",,,,

antenna would work for the same coverage area, same number of cells and number of subscribers. While use of these omni-directional antennae",,,,

reduced the network interference because of the symmetrical shape, the load that could be taken by them was limited.",,,,

Thus, in the background of the patent specification, the progression from CDMA, FDMA, TDMA technologies which created cells, to use of N-",,,,

directional antennae with a symmetrical coverage area is clearly laid out. The purpose of the invention, is out below:",,,,

“Accordingly, it is desirable to provide an antenna with beam patterns that are tailored for specific sector coverage.",,,,

It is further desirable to provide an antenna that can permit load balancing through the addition of capacity only where needed.â€​,,,,

The patent specification also sets out as to what the patented invention accomplishes â€",,,,

“The present invention accomplishes these aims by replacing a single sector coverage area with at least one coverage area, at least one of which is",,,,

asymmetrical. The use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area,,,,

being replaced, without creating excessively large sub-sector handover zones or introducing severe degradation in the network performance.â€​",,,,

Thereafter, the various embodiments of the invention are set out along with the drawings. In the detailed description of the preferred embodiments,",,,,

the manner in which the existing antenna can be replaced is set out in the preferred embodiment. The reduction of overlaps is also described. The,,,,

invention, thus, sets out the manner in which an asymmetrical antenna can be used firstly to maintain the total coverage area to reduce overlaps and",,,,

without requiring splitting of cells, and reducing interference. The preferred embodiments are duly illustrated with diagrams. The specification also",,,,

shows how simulation was done based on the described invention, and how the conclusions of the said simulation are as under:",,,,

“(1) The capacity of the upgraded sector increased by 125% whereas an increase of only 100% was expected;,,,,

(2) The capacity of PQ0130 site increased by 58%;,,,,

(3) Handover overhead for the upgraded sector and site PQ0130 improved by 9% and 4.8% respectively;,,,,

(4) Coverage of the upgraded sector and site PQ0130 improved by 49% and 27% respectively;,,,,

(5) The area of the overall network with signal level greater than â€" 80dBm increased by 21% (see Table 2 below);,,,,

(6) At the cluster level, there is no degradation in terms of key performance metrics;",,,,

(7) A degradation of reverse link noise rise occurred at each of sector and site level by 18.9% and 11.5% respectively.,,,,

From the above simulation results, it is apparent that upgradation a single sector by asymmetrical beams may add benefits to surrounding sectors in the",,,,

network and without any significant degradation to surrounding sectors and sites.â€​,,,,

At the end of the specification, prior to the claims, it is concluded as under:",,,,

“It will be apparent to those skilled in this art that various modifications and variations may be made to the embodiments disclosed herein, consistent",,,,

with the present invention, without departing from the spirit and scope of the present invention.â€​",,,,

Out of the prior arts referred to by the Defendants, the Article dated 1st March, 2006 is a publication related to the patented invention itself. The",,,,

date of filing of the PCT application of the suit patent, is 19th March, 2007. The article is of March, 2006, wherein, the company TenXC Wireless Inc.,",,,,

which was the predecessor of the Plaintiff and was the original patentee, seeks to inform how the use of an asymmetrical antenna could lead to",,,,

advantages. However, a perusal of the article shows that there are no details whatsoever as to the manner in which the result is to be achieved. For",,,,

an invention to be prior published, and to be hit by prior art, it has to be viewed from the point of view of a skilled addressee as to whether the",,,,

document would by itself, without the disclosure in the patent specification, be sufficient to anticipate the invention. Terrell on the Law of Patents",,,,

[Terrel on the Law of Patents, Sweet & Maxwell, 18th Edn., 2016, at §11-55 to §11-57.] observes on the construction of prior art documents as",,,,

under:,,,,

“11-55 Once a particular document or other prior disclosure has been identified, it is necessary to determine what information is conveyed. The",,,,

prior document or disclosure is to be treated as read or understood through the eyes of the relevant skilled person, the notional addressee. In",,,,

appropriate cases, the skilled person may have to be a team of people with different scientific backgrounds so that the import of the document may be",,,,

fully understood.,,,,

11-56 This may involve two separate steps: first, construing the prior disclosure as a matter of law, and secondly determining what the skilled reader",,,,

would derive from it. Pumfrey J stated in Inproâ€s Patent (sic. Research in Motion v. Inpro [2006] R.P.C. 20, [111]), that “The teaching of the",,,,

specification, once construed, is a question of fact, as is what the skilled man would do with that teaching without the exercise of inventive",,,,

ingenuity.â€​ As noted below, he went on to explain that the relevant teaching may involve both explicit and implicit disclosure.",,,,

11-57 The general rule for the construction of prior documents is the same as that for any other documents, namely “that the document should be",,,,

construed as if the court had to construe it at the date of publication, to the exclusion of information subsequently discovered.â€​â€​",,,,

This would require evidence to be shown to the effect that a skilled addressee would be able to know how to make the antenna subject-matter of,,,,

the suit patent, merely by reading the article, without the disclosure in the suit patent. At this stage, this court is of the opinion that the article per se,",,,,

could not have by itself, been sufficient to anticipate the disclosure in the invention. The article at best may have given a hint as to what was coming.",,,,

Nothing more.,,,,

A perusal of the claims shows that Claim No.1 is a method claim and Claim No.10 is a product claim for sub-sector antenna. The critical words in,,,,

Claim No.10, which are relevant for the present purpose, are â€" the sub-sector antenna is “for use in a sectorised cellular communications",,,,

networkâ€. The Defendants†antenna clearly, qualifies as a sub-sector antenna, for such a purpose. Every communication network has a plurality of",,,,

subscribers and a base station supporting it. The next crucial words are, “at least one of which is asymmetricalâ€. This relates to one of the sub-",,,,

sector coverage areas which is asymmetrical in the antenna. The Defendants seek to argue that the words “for replacing†limit the scope of the,,,,

patent to only those situations where, in existing antenna, one of the sub-sector coverage areas is being replaced. This is based on the EU prosecution",,,,

documents, where the Plaintiff conceded that the replacement has to be physical.",,,,

Insofar as the application filed by the Plaintiff in the European Union for grant of the Patent is concerned, the EPO had raised an objection dated",,,,

29th June, 2016, wherein it sought the exact meaning of the word “replacingâ€, in the method Claim No.1, which corresponds to Claim No.1 of",,,,

INâ€​893. In response to the above objection raised, the Plaintiff submitted as under:",,,,

“Objection 3.2.6 â€" replacing,,,,

Regarding the objection to the term “replacingâ€, the independent claims have been amended to recite “the split-sector antenna being",,,,

constructed and arranged for replacing the sector antennas….†Hence, it is clear from the amended claim language that the replacement is physical",,,,

in the sense referred to by the Examiner.â€​,,,,

Relying on the above, the Defendants seek to argue that the replacement sought to be made by the Plaintiffâ€s invention is physical in nature, per",,,,

its own admission before the European Patent Office, and thus, Plaintiff is estopped by statute to contend “notional replacementâ€​ in India.",,,,

Clearly, the manner in which this is being construed by the Defendants is incorrect.",,,,

A patent claim cannot be read in such a literal manner. The purpose of this sub-sector antenna, is set out in the claim â€" replacement would be",,,,

physical, but it does not mean that only existing antennae have to be replaced. The use of a new sector antenna with an asymmetrical sub-sector",,,,

coverage area would also be covered as it would still be an antenna where one of the sub-sector coverage areas has been replaced, from a",,,,

symmetrical one to an asymmetrical one. The replacement relates to physical replacement within an antenna, and not the manner in which the",,,,

Defendants seek to interpret it. Replacement is used in the context of the purpose for which the sector antenna having a sub-sector coverage area,,,,

which is symmetrical is being replaced with a sector antenna which has sub-sector coverage area which is asymmetrical. Thus, any",,,,

telecommunication network wherein a sector antenna which has an asymmetrical sub-sector coverage area is used would be clearly attracted. The,,,,

difference, thus, sought to be urged between brownfield and greenfield use is based on a misinterpretation of the claims.",,,,

The question as to whether a particular antenna has a symmetrical or an asymmetrical coverage area can be understood only by looking at the,,,,

beam patterns of the said antenna. The Plaintiff has produced its own beam patterns which are also part of the specification. Since the Defendantâ€s,,,,

beam patterns were not available publicly, it has also obtained access to the Defendantâ€s beam patterns as presented by a third-party cellular",,,,

operator. The comparison of the beam patterns of the Plaintiff and the Defendants is in paragraph 73 of the plaint. The Plaintiff has also produced an,,,,

expert report to establish infringement. The Defendants could have either admitted or denied the same and produced their antennaeâ€s beam patterns.,,,,

The Defendants have, however, simply denied infringing the Plaintiffâ€s patent but do not produce their beam patterns. On the other hand, the",,,,

Defendants have chosen to challenge the Plaintiffâ€s beam patterns alone by producing a technical opinion. The charts filed by the Defendants to,,,,

show that the coverage area is not the same, is not supported by any technical opinion. However, even taking the technical opinion of the",,,,

Defendants†expert, which is on a different aspect and the Plaintiffâ€s expert opinion, it is clear that the Defendants have deliberately withheld the",,,,

beam patterns of their product. The same is neither publicly available, nor has it been produced on record. In response to paragraph 73 of the plaint,",,,,

where the beam pattern is reproduced by the Plaintiff, the Defendants merely state as under:",,,,

“73. That the contents of paragraph 73 of the Plaint are denied for being wrong and merely inferential. It is denied that the beam patterns being,,,,

attributed to Defendants belongs to the Defendants'. It is denied that the snap shot leads to the conclusion that Defendants are offering to sell/selling,,,,

split-sector antennas which are otherwise infringing of IN240893. The Plaintiff has not disclosed the authorship of the comparative chart and in,,,,

absence of same this Hon'ble Court should not rely on the same. Defendants, as a responsible and established antenna supplier, deny that the Plaintiff",,,,

could have obtained the comparative chart in the ordinary course of business. The Plaintiff should be asked to disclose the means and manner by,,,,

which it came in possession of the comparative chart.,,,,

It is to be noted that during the ex-parte hearing held on November 2, 2018 the Plaintiff has mislead this Hon'ble Court to believe that this comparative",,,,

chart was authored by the Defendants. This Plaint should be dismissed on this ground alone.,,,,

The Plaintiff should be put to strict proof with regards to the authorship of the comparative chart. It is surprising that the entire case of infringement is,,,,

based on this comparative chart of which neither the Plaintiff nor the Defendant are the author. The Plaintiff ought to have disclosed as to how they,,,,

got into possession of comparative chart in ordinary course of business. Defendants crave leave to rely on the preliminary submission, the same are",,,,

not being reiterated for sake of brevity.â€​,,,,

It was quite convenient and easy for the Defendants to produce the beam patterns of their antenna to argue that they do not infringe the patent of,,,,

the Plaintiff. The bare denial being given shows that the Defendants have deliberately chosen not to produce the beam patterns. In any event, the",,,,

claims of the invention, and the beam patterns attached in the patent specification, show that the beam patterns need not be identical to the drawings",,,,

accompanying the specification. Minor variations would not obviate infringement. Equivalence would also apply. The preferred embodiments of an,,,,

invention are what they say, i.e., they are only the “preferred†embodiments. They are not the only embodiments. The claims are broader than the",,,,

preferred embodiments and have to be read as such.,,,,

The technical opinion produced by the Defendants seeks to limit the Plaintiffâ€s patent to the beam patterns contained in paragraph 28 of the,,,,

plaint, which it cannot do. The Defendants have not produced any documents to show that they have followed any other invention or any other prior",,,,

art document, in the construction of their antenna. The withholding of beam patterns, by the Defendants, leads this Court to draw an adverse inference",,,,

against the Defendants, as the Defendants have withheld and not disclosed the most crucial aspect of this case i.e., the beam patterns of their",,,,

antennae.,,,,

In a patent infringement action, once the Plaintiff, prima facie establishes infringement, the onus shifts on the Defendants, to disprove the same.",,,,

The complete silence by the Defendants shows that there is, in fact, withholding of relevant and crucial information from the court. During the course",,,,

of arguments, since the beam patterns were not produced on record, it was put to the Defendants if the antenna could be made available for",,,,

inspection by a scientific expert appointed by the Court, to which no positive response was elucidated by the Defendants. A perusal of the claims,",,,,

complete specification, and the beam patterns read with the two reports by the experts, placed on record by both parties, clearly establishes",,,,

infringement. The Defendants†expert has not dealt with the issues raised head on in respect of the beam patterns, but has sought to deflect the",,,,

issue. Thus, at this stage the Court has no option but to draw an adverse inference against the Defendants.",,,,

In addition to the grounds urged by the Defendants under Section 10 and Section 64 of the Patents Act, the Defendants have raised the following",,,,

grounds for invalidating INâ€​893:,,,,

a) Under Section 3(a) of the Patents Act â€" The claims in the patent specification of INâ€893 are frivolous as they are vague and ambiguous. The,,,,

claims are over-broad and the boundaries of the invention are not clear from the specification. Thus, the patent is hit by Section 3(a) of the Patents",,,,

Act. This ground was not argued during oral arguments. There is no clarity as to why the Defendants argue that the claims are ambiguous. A reading,,,,

of the claims shows that the same are not vague in any manner. The objection is not tenable.,,,,

b) Under Section 3(c) of the Patents Act â€" Since all elements of the invention are known in the prior art to a person ordinarily skilled in the art, thus,",,,,

the invention is merely an application of a theory and do not even qualify as new discoveries. This objection is based on the prior art documents which,,,,

have been considered hereinbefore.,,,,

c) Under Section 3(d) of the Patents Act â€" The Plaintiff seeks to introduce asymmetry in beam patterns to increase subscriber capacity for a,,,,

particular area, however, as per the Plaintiffâ€s own admission, a degree of asymmetry was inherent in beams. In light of the same, the Plaintiff",,,,

cannot not claim that it is increasing subscriber capacity by introducing asymmetry in the beam patterns. The Plaintiffâ€s invention being merely an,,,,

“eyewashâ€, and qualifies as mere discovery of a new property or new use of a known machine/apparatus and does not result in invention of a",,,,

new product. The objection under Section 3(d) is applicable when there is a “mere discovery†of a new property or new use. This provision does,,,,

not apply in cases where on the basis of existing technology, newer technology is developed and better efficiency is achieved.",,,,

d) Under Section 3(f) of the Patents Act â€" Since the various elements of the Plaintiffâ€s invention were known in the prior art, the mere",,,,

arrangement/re-arrangement of the same cannot be considered to be an invention under the Patents Act. This objection contradicts the objection,,,,

under Section 3(d). The invention in the present case is clearly not a rearrangement but a change in the manner in which asymmetry is introduced in,,,,

an antenna leading to greater efficiency which not compromising on quality. This objection is also not tenable.,,,,

The Defendants have relied on the judgment in Merck & Co. Inc (supra), to substantiate the difference between the specification and the claims,",,,,

wherein the court held that the specification is “what the patentee considers to be his invention†and the patent claims are “what monopoly he,,,,

has chosen to obtain.â€. The UK High Court held therein that the exclusive rights of a patentee will not extend to everything he contemplated in the,,,,

specification and is restricted to the claims. The principle that the claims determine the monopoly is well settled. Further, in view of judgment of the",,,,

Division Bench of this Court in Roche v. Cipla (supra), the claims cannot be read in isolation, and a purposive construction has to be given to the",,,,

specification. However, in the facts of the present case, this Court is of the opinion that the claims are sufficiently precise and monopoly being sought",,,,

is as per the claims.,,,,

D. Judgement of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) dated 4th November, 2011",,,,

The Ld. Single Judge in Ten XC v. Mobi Antenna (supra) at the interim stage, in a suit filed for infringement by the predecessor of the Plaintiff,",,,,

held that since there was a credible challenge to the validity of the patent, an interim injunction could not be granted. This judgment was rendered on",,,,

4th November, 2011. The patent in the present suit, was initially rejected by the US patent office, as lacking novelty. At the time when the earlier Ld.",,,,

Single Judge had considered the validity of the patent at the prima facie stage, the rejection of the US patent, was an important factor, in order to",,,,

determine whether there was a credible challenge to the Plaintiff. The Ld. Single Judge had also concluded that since the patent was a recent patent,",,,,

there is a credible challenge. The observations of the Ld. Single Judge are as under:,,,,

“8.1.9 The United States Patent and Trademark Office have issued a final rejection in respect of the plaintiffs’ invention on the ground of lack,,,,

of novelty and inventive step with respect to Hagerman and Ishikawa.,,,,

………………,,,,

8.3.9. The Plaintiffs’ patent is a recent one. The patent was granted on 9th June 2010 and the suits were instituted on 22nd September 2010, i.e.,",,,,

within four months.....â€​,,,,

However, now there are several changed circumstances, such as:",,,,

(a) INâ€​893 is no longer a new patent. It is more than nine years old.,,,,

(b) The term of the patent is calculated from the date of application i.e., in this case since 18th March 2007. So more than three years elapsed in the",,,,

examination and grant process. Only less than 8 years of the term of INâ€893 are left. During this period, the patent has neither been revoked, nor",,,,

held to be invalid in any jurisdiction;,,,,

(c) Conversely, USâ€​582 patent has been granted and upheld in the interregnum in the USA;",,,,

(d) One of the Defendants has taken a global license to the patent i.e., the party which had itself raised the challenge in the US has now",,,,

acknowledged the validity and has taken a licence;,,,,

(e) In the suit earlier filed in this court i.e., CS(COMM) 977/2016, evidence has been led and judgment is stated to be reserved.",,,,

(f) The Defendants in the present case, themselves were notified of INâ€893 since 2017, however, till date, they did not choose to either file a",,,,

revocation, or even a counter claim in the present suit, seeking invalidation.",,,,

It is the settled legal position that a previous order under Order XXXIX Rules 1 and 2 CPC can be varied in the same suit, owing to subsequent",,,,

circumstances. Such an order does not operate as “res judicataâ€​.,,,,

In Raj Rani Sharma v. Gayatri Kukreja & Ors. [I.A. 9770/2011 in CS(OS) 774/2007] a Ld. Single Judge of this Court, relied on the judgment of the",,,,

Supreme Court Karnataka State Financial Corporation v. N. Narasimahaiah, IV (2008) SLT 41 wherein it observed as under:",,,,

“13. Rule 4 enables the court to discharge or vary or set aside an order of interlocutory injunction, on finding the same to be necessary by a change",,,,

in circumstances or if the order is found causing undue hardship to any party. The legislature has thus itself, not intended the principle aforesaid of",,,,

finality or res judicata in relation to successive stages of the same proceeding to order under Order 39 of the CPC. Though Rule 4 deals only with,,,,

vacation or modification of an interlocutory injunction granted, but in my view, the purport thereof being interim protection of the property, even if the",,,,

Court had earlier not found enough reason to grant interim protection, the court on finding a change in the circumstances or undue hardship having",,,,

been caused to a party who had been declined the interim injunctions earlier, is competent to entertain a second application and to grant such",,,,

injunction.â€​,,,,

In Bengal Waterproof Limited Vs. Bombay Waterproof Manufacturing Company & Anr. (1997) 1 SCC 99, the Supreme Court held that when",,,,

there is a continuing wrong, even two different suits for infringement of the same trademark against the same party is maintainable. In the present",,,,

case, however, the defendants in the first two suits are different though the patent was the same.",,,,

There are several circumstances that have changed since the interim injunction application in the said two suits were decided. One of the suits has,,,,

in fact been disposed of as settled. These subsequent facts cannot be ignored by a Court, especially in a patent infringement suit, where the term of",,,,

the patent is limited and with each passing day, the exclusive monopoly of the patentee is severely dented. The term or life of the patent is not",,,,

extendible and hence, the changed circumstances would have to be kept in mind. In any event, an order in an interim injunction application is only",,,,

prima facie in nature, and is rendered in the facts and circumstances pleaded in a particular case. The Ld. Single Judge while finding that there is a",,,,

credible challenge to the patent observes as under:,,,,

“8.2…………..At this stage, this Court is not expected to and has not examined the challenge in detail to arrive at a definite finding on the",,,,

question of validity of the patent which shall be examined at the time of trial. However, this Court is satisfied that the challenge made by the",,,,

defendants is substantial, tenable and credible.â€​",,,,

Thus, the opinion in that case was not final. There are several factors which now tilt in favour of the Plaintiff, insofar as the challenge to INâ€893",,,,

itself is concerned.,,,,

The Defendants have also relied on the judgment of a Ld. Single Judge of this Court in Sandeep Jaidka (supra), wherein the guiding factors, as",,,,

enumerated in Kerr on Law and Practice of Injunction, 6th Edn, on page.320 for grant of interim injunction were considered, and which are as under:",,,,

“If one clear instance of infringement or a wrong prima facie case of infringement is made out and the plaintiff has not been guilty of laches, the",,,,

court will generally grant an interlocutory injunction in following cases: (1) when the validity of the patent has already been established in a previous,,,,

action; (2) when the patent is of old standing and the enjoyment under it has been uninterrupted; (3) when the validity of the patent is not in issue and,,,,

notwithstanding that the defendant offers to keep an account.â€​,,,,

The Ld. Single Judge, relying on some case on grant of injunctions, held as under:",,,,

“32. The court in such cases has to weigh the case of the plaintiff vis-à -vis the case of the defendant if the plaintiff is able to satisfy that there is,,,,

S. No.,Antenna,Quantity,Amount,Date

1.,"XXDW-18-33iiVT-

DB8P","67,627 units","$64,405,583","Between October,

2016 and October,

2018

2.,"XXDW-18-33iiVT-

DB8P-V2","10,000 units","$8,380,000","18th December, 2018

3.,"XXDW-18-33iiVT-

DB8P-V2","5,000 units","$3,930,000","22nd February, 2019

4.,"XXDGL-15-33iiVT-

DB-4P","15,000 units","$9,525,000","2 nd May, 2019

,Total,"97,627 units","$86,240,583",

Rs.437,95,79,644/- the Defendants are directed to give a Bank Guarantee for a sum of Rs.40 crores, which is approximately ten percent of the above",,,,

amount.,,,,

Insofar as the sales made during the pendency of the suit are concerned, the total sales are to the tune of $21,835,000, which come to",,,,

Rs.148,47,80,000/-, ten percent of which is approximately Rs.14.5 crores. The Defendants are directed to deposit the Bank Guarantee and the said",,,,

sum with the Registrar General of this Court, within one month from date of judgment. If the Defendants do not comply with the above directions",,,,

within one month, the Defendants shall stand restrained from manufacturing, selling, offering for sale any models of antennae which infringe suit",,,,

patent number IN 240893.,,,,

All three I.A.s are disposed of in the above terms.,,,,

CS (COMM) 1222/2018,,,,

Parties are permitted to file additional documents if any. Affidavits of admission/denial qua the said documents be filed within 30 days. The sealed,,,,

covers containing the agreement and invoices have been opened. The same be resealed and kept on record.,,,,

List on 28th August, 2019 for marking of exhibits before Joint Registrar. List before Court on 17th October, 2019.",,,,