IMPORTANT POINT
A patent adjudication must be supported by a reasoned order to ensure fairness and facilitate judicial review.

JUDGMENT :

Krishna Rao, J.

1. The appellant has preferred an appeal under Section 117A of The Patents Act, 1970 against the order passed by the Deputy Controller of Patent and Designs dated 2nd March, 2023 wherein the post-grant opposition filed by the appellant for revocation of Indian Patent No. 307249 granted on 12th February, 2019 in an Indian Patent Application No. 1033/KOLNP/ 2013 dated 3rd September, 2013 under the title “SYSTEM /DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS” in the name of CDE ASIA LTD. is refused.

2. The respondents had made an application being No. 1033/KOLNP/ 2013 dated 3rd September, 2013 for its invention titled “SYSTEM/ DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS”. The said application was granted on 12th February, 2019 with India Patent No. 307249 over 10 claims.

3. Mr. Akhil Sibal, Learned Senior Advocate representing the appellant submitted that the main independent claim i.e. Claim 1 is a method claim for classification of various materials and Claims 2 to 4 are dependent upon process Claim 1. He submits that the patent contains another independent claim for system for classification of materials of variable sizes under Claim 5. He submits that Claims 6 to 10 are dependent upon Claim 5. He submits that the independent Claim 5 pertaining to the system has been presented to include multiple subsystems, and the same has been mentioned in the specification. But there is no disclosure in the specification or in the drawing as to how such subsystems are interconnected.

4. Mr. Sibal submitted that the respondent has claimed monopoly for a method and a system that were publicly known and were already in use at the time of priority date, due to which such claims are not patentable subject-matter in India. Mr. Sibal relied on the evidence of Dr. Prabuddha Ganguli wherein he has stated that “individual devices are known and the manner in which they function is also known, but the combination invented in IN’249 produces a totally unexpected effect resulting in the invented equipment system and process as claimed in IN’249.

The statements placed by the opponent and the expert that the functioning of individual devices is known is true. However, what is not known and used earlier to the priority date of the patent application no 1033/KOL/2013, is how to judiciously combine them to achieve the desired objectives. In my earlier paras of this affidavit, I have explained in detail how the cited prior arts are irrelevant in the context of the invention as claimed in IN’249 and hence is not repeated here for brevity.”

5. Mr. Sibal submitted that the appellant who has been in the industry for much longer time than the respondent and has dealt with multiple products and components thereof which clearly map upon and overlap with system Claim 5 of the impugned patent. He submits that the process Claim 1 has been practiced by the appellant and its parent company and subsidiary companies before the priority date of the impugned patent. He submits that appellant has been in the market of inter-alia, sand and aggregate washing plants and various other such materials like ores and waste classification systems for several years, and has not only been selling various products meant for segregating various materials and sand washing, but also various other high-end equipment.

6. Mr. Sibal submits that the Learned Controller has not given any observation or provided any reasons as to why he has agrees with the submissions of the Patentee. He submits that the Learned Controller has not considered the Patentee’s own admission that each of the components or devices being recited in claims are known and the manner in which they function is also known. He submits that the Learned Controller has not dealt with how the invention is not hit by the Bar of Section 3(f) of the Patents Act. He submits that Section 3(f) is applicable to the presently claimed system as it is a mere arrangement or re-arrangement or duplication