(i) Whether the patent held by Communication Components lacks inventive steps and is hence liable for revocation?
(ii) Whether the subject matter of the patent is precluded from being patented, because of Section 3(d)?
SUBJECT MATTER OF THE PATENT
Indian Patent No. 240893 was granted for an invention entitled “Asymmetrical Beams for Spectrum Efficiency”.
- The Indian Patent 240893 (IN’ 893) was originally granted to Ten XC Wireless Inc. who in 2011 had to sell off their assets to repay debts. In the process, Communication Components came to be the owner of the said patent IN’893.
- The defendant no. 1 Mobi Antenna Technologies (Shenzhen) Co. Ltd. was importing and offering for sale Bi-Sector Array Antenna for use in New Delhi and whose features and functions were identical to the patented split-sector/Bi-Sector Array Antenna of the erstwhile plaintiff no. 1.
- A suit instituted by Communication Components Antenna Inc. for permanent injunction against Mobi Antenna, to prevent alleged infringement of their above mentioned patent.
- While the Court previously denied the plaintiff the remedy, this Bench now sought to dispose of an appeal by Communication Components, against impugned order dated 4.11.2012.
SUBMISSIONS BY PLAINTIFF
- The feature of a fixed beam split-sector antenna to emit split-sector beams, at least one of which asymmetrical and which would maintain substantially equivalent critical coverage area as of the earlier sector antenna, and its industrial use, qualifies as a technical advance as compared to the existing knowledge
- A patent can be obtained for a mode of carrying a principle into effect, especially when the patentee is aware that no particular sort or modification or form of apparatus is essential in order to obtain benefit from the principle; once it is so there is no necessity for the patentee to describe and confine to any one form of apparatus
- The split-sector antenna claimed in the subject patent is in itself a new product and merely because the new product is a result of use of a known process, machine or apparatus, such new product cannot be denied patentability under Section 3(d). Since the new antennae of subject patent or their use to increase subscriber capacity by maintaining substantially equivalent critical coverage area as of the earlier sector antenna, were not known, the subject patent is not hit by Section 3(d) of the Act;
SUBMISSION BY DEFENDANTS
- The plaintiffs have failed to demonstrate that the defendants are practicing all essential integers of the claimed invention, as is essential requirement for establishing infringement.
- The International Search Report issued in connection with the PCT application of the corresponding patents stated that the plaintiffs’ invention lacked inventive step and cited two documents from which the invention claimed was obvious to a person skilled in the art; it was also contended that the feature of split-sector mobile antenna with plurality of sub-sector coverage areas and antenna beams having an asymmetrical shape was earlier disclosed in international application WO 2006/004463 (Hagerman)
The technician problem claimed to be resolved by the plaintiff is not new. As early as in 2003, it was well known in art that such problems could be solved by careful radio planning. Thus, the solution was commonplace within the domain of mobile telecommunications, well before the priority date of 17th March, 2006;
- Claims 1 to 25 of the subject patent, namely method of replacing conventional antenna with split-sector antenna and a split-sector antenna for replacing conventional antenna, are all mere uses for the split-sector antenna already known and under Section 3(d) of the Act and hence, do not constitute “invention”; the invention claimed in the subject patent is no more than a mere arrangement including re-arrangement or duplication of known devices and each of which known devices functions independently of one another in a known way and is not an invention under Section 3(f) of the Act;
- The patent claimed is in respect of a method to achieve the desired result. The method described in the patent is substituting one of the sector antennas by a sub-sector antenna that generates a plurality of asymmetrical beams that collectively substantially cover the coverage area of the replaced sector antenna. The apparatus described for achieving the said purpose is exemplary only, thereby admitting that the purpose can be achieved by collation of any other apparatus. It is not in dispute that sector antennas/sub-sector antennas emitting asymmetrical beams existed from earlier. The novelty and inventive step is claimed in the asymmetrical beams emitting from the sub-sector antenna covering the same area as the antenna which was replaced by the sub-sector antenna. No particular shape of the asymmetrical beams is described – they can be of any shape as long as they cover substantially the same area as the antenna which was replaced by the sub-sector antenna.
- Grant of a patent should not have the effect of, during the term of the patent, precluding others from researching/inventing other products/other methods by which the same result as achieved by the patented invention, can be reached. If done so, the patent would prevent others from innovating and coming up with other methods to achieve the said result, thereby halting innovation. In the said case, the plaintiff has mentioned that the method used is only exemplary and the said result could be achieved by other methods also. In such a situation, the invention claimed, is in method of increase of subscriber base and upon grant of patent, vests the plaintiff with exclusivity over increase in subscriber base, by whichever method, thereby effectively blocking all others who also achieve the target of increasing the subscriber base. The words used to describe the method by which increase in subscriber base is achieved, are also vague, so as to take within their ambit all methods of increase in subscriber base.
- In view of the above , the Court ruled that the defendant has made out a case of revocation of the patent on the grounds provided under Section 64(h) and (k) of the Act. The claim of the complete specifications was not patentable under the Act, being non-compliant with Section 10 of the Act.
- The Court rejected the argument that the subject matter was not patentable as being hit by Section 3(d). While the plaintiff uses known antenna/split-sector antenna, the combination results in a beam with increased subscriber capacity, thereby constituting an enhancement of known efficacy of beams and Section 3(d) would not be attracted.
- Therefore Patent No. IN 240893 is held to be invalid and liable to revocation under Section 64(h) & (k) of the Patents Act, 1970.
Citation: 2021 SCC OnLine Del 3948
Copy of the judgement