Patent rights allow the owners to exclude others from making, selling or using the claimed invention. In case such rights are used without permission, it amounts to patent infringement. In Indian perspective, the Patents Act includes various provisions defining patent infringement as an unauthorized act of selling, manufacturing, offering to sell, importing or using in-force patented invention without the permission of a patented owner.
US courts and the United States International Trade Commission (USITC) routinely handle matters pertaining to infringement of patent rights. Recently, it has been reported that South Korean firms SK Innovation and LG Chem are engaged in proceedings involving electric vehicles (EV) battery patents. The core issue is about SK Innovation poaching 76 LG Chem employees in order to steal LG Chem’s trade secrets, subsequently infringing LG Chem’s EV battery patents.
Case Study – Communication Components Antenna Inc. v. Ace Technology Corporation (2019)
Read full judgement here.
The Plaintiff, Communications Components Antenna Inc. is a Canadian company manufacturing and selling, cellular base station products, and services relating to the telecommunication industry. A lawsuit for Patent infringement was filed by the Plaintiff against alleged infringer Ace Technologies Corp, the Defendant and its related entities and subsidiaries in relation to its patent which was titled “Asymmetrical Beams for Spectrum Efficiency”, the Patent.
Communication Components Antenna Inc., the plaintiff, claimed that the patent was for a novel antenna having a unique feature i.e. an asymmetrical beam pattern detailed in its specification. However, the Patent did not really comply with the technical standard to be considered to be patented and rendering dole ownership to the plaintiff and also has been licensed by the plaintiff to various other parties. Approximately two years ago it was found by the plaintiff that their Patent was being infringed by the defendants.
In order to protect their patented invention from getting infringed a suit was filed by the plaintiff. The Court passed an interim injunction on the sale of the patent in question to any cellular operators in India by the defendants till the matter was heard next. Although orders for imports was allowed only on the condition of filing the accounts of the same.
The Plaintiff argued that their antenna was a “smart antenna” and that the design of the same was unique and novel with the aim of achieving greater effectiveness without quality compromise and that on grounds of validity of patent, that the grant of the patent claiming to be a “smart antenna” was justified as it introduced new and unique asymmetrical beam patterns in split-sector fixed beam antennae.
Ace Technology Corporation, the defendant, submitted that the patent in question was lis pendens, wherein, the Court could not grant an injunction as the validity of the patent was challenged. The suit was further challenged by the defendants stating that the patent which was in question in the suit was not a valid Patent under Section 3(a),(c),(d) and (f), of the Patents Act and should hence be revoked under Section 64 of the Patents Act.
The defendants further argued that the “asymmetrical beam patterns” already constituted prior art when the patent was granted in India. The defendants denied the plaintiff’s claim of having “worldwide protection” on the basis that “additional limitations” had been made to the corresponding patent claims in the United States which consequently makes the Patent registered in India “obvious”.
Observations of Delhi High Court
In this matter a Single Bench Judge of the Delhi High Court Justice Prathiba M Singh based on the prima facie or the first impression of the case passed an order directing the alleged infringer to make an interim deposit of approximately Rs. 54 crores to be able to carry on with further sale of the manufactured products through the Patent in question High Court Registry.
It was further directed by the Judge that if the alleged infringer does not comply with the interim order, he shall be prohibited from activities such as manufacturing, selling, or offering for sale any such products which are manufactured through the suit patent.
The Court after hearing contentions from both the sides rejected the defendant’s contentions with regards to suppression of facts, as the plaintiff had already placed the judgment before the Court of the pending suit on record. The Court observed that the language of the patent claims in different jurisdictions, after it is granted in various domestic jurisdictions, would usually never be identical.
During patent infringement proceedings, it is crucial to prepare evidence of use by way of patent claim charts. Such charts help in preparing patent Infringement analysis, evidence of use charting, claim construction and patent infringement opinion by a patent attorney, along with patent invalidity search report.
The extent of patent enforcement depends upon patent filing strategy adopted by the patent applicants. It is common for the patent applicants to initiate the patent filing process with a single national or domestic patent application, followed by international filings under Paris Convention or PCT International Phase. Thereafter, if PCT route is followed, the patent application can be filed in various designated countries under PCT National Phase.
Having a well-developed patent strategy provides multiple advantages to the patent owners, which also depends upon the patentability of the invention across different countries. Another crucial point is to ensure that the initial patent application is drafted properly to cover the scope fully by way of strong patent claims.
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