Back
IN THE HIGH COURT OF DELHI
PRATHIBA M. SINGH, J.
Communication Components Antenna Inc. - Plaintiff
Versus
ACE Technologies Corp. & Others - Defendants
CS (COMM). No. 1222 of 2018
Decided On : 12-07-2019
The Plaintiff, a Canadian company, filed a suit seeking permanent injunction restraining infringement of its Indian Patent No. 240893 (hereinafter, ‘IN’893’). The patent titled “Asymmetrical Beams for Spectrum Efficiency” has an asymmetrical beam pattern and other features as detailed in the specification. 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. Defendant Nos.1 – 4 are the Indian subsidiaries of Defendant No.1. The Plaintiff claimed that the Defendants’ antennae infringed the suit patent. The Defendants denied infringement and contended that the suit patent was invalid and liable to be revoked. The Court held that the Plaintiff had made out a prima facie case of infringement and that the Defendants had failed to disclose their beam patterns, which raised a presumption that the said document, if produced, would be detrimental to the party which is resisting the production. The Court also held that the additional language in the claims of US’582, which is the corresponding US patent, does not render the suit patent invalid, but in fact strengthens yet another novel feature of the suit patent. The Court further held that the Defendants’ contention that the words “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, is based on a misinterpretation of the claims. The Court also held that the judgment of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) dated 4th November, 2011, wherein it was held that since there was a credible challenge to the validity of the patent, an interim injunction could not be granted, was not binding on the Court as there are several changed circumstances since then. The Court also held that the Defendants are liable to deposit some amounts in the Court in order to continue the sales of these antennae in India. The Court directed the Defendants to give a Bank Guarantee for a sum of Rs.40 crores and to deposit the sum of Rs.14.5 crores with the Registrar General of the Court, within one month from the date of judgment.
Fact of the Case:
The Plaintiff, a Canadian company, filed a suit seeking permanent injunction restraining infringement of its Indian Patent No. 240893 (hereinafter, ‘IN’893’). The patent titled “Asymmetrical Beams for Spectrum Efficiency” has an asymmetrical beam pattern and other features as detailed in the specification. 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. Defendant Nos.1 – 4 are the Indian subsidiaries of Defendant No.1. The Plaintiff claimed that the Defendants’ antennae infringed the suit patent. The Defendants denied infringement and contended that the suit patent was invalid and liable to be revoked.
Finding of the Court:
The Court held that the Plaintiff had made out a prima facie case of infringement and that the Defendants had failed to disclose their beam patterns, which raised a presumption that the said document, if produced, would be detrimental to the party which is resisting the production. The Court also held that the additional language in the claims of US’582, which is the corresponding US patent, does not render the suit patent invalid, but in fact strengthens yet another novel feature of the suit patent. The Court further held that the Defendants’ contention that the words “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, is based on a misinterpretation of the claims. The Court also held that the judgment of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) dated 4th November, 2011, wherein it was held that since there was a credible challenge to the validity of the patent, an interim injunction could not be granted, was not binding on the Court as there are several changed circumstances since then. The Court also held that the Defendants are liable to deposit some amounts in the Court in order to continue the sales of these antennae in India.
Issues: Whether the Plaintiff had made out a prima facie case of infringement? Whether the Defendants had failed to disclose their beam patterns? Whether the additional language in the claims of US’582 renders the suit patent invalid? Whether the Defendants’ contention that the words “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, is based on a misinterpretation of the claims? Whether the judgment of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) dated 4th November, 2011, wherein it was held that since there was a credible challenge to the validity of the patent, an interim injunction could not be granted, was binding on the Court? Whether the Defendants are liable to deposit some amounts in the Court in order to continue the sales of these antennae in India?
Ratio Decidendi: The Court held that the Plaintiff had made out a prima facie case of infringement and that the Defendants had failed to disclose their beam patterns, which raised a presumption that the said document, if produced, would be detrimental to the party which is resisting the production. The Court also held that the additional language in the claims of US’582, which is the corresponding US patent, does not render the suit patent invalid, but in fact strengthens yet another novel feature of the suit patent. The Court further held that the Defendants’ contention that the words “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, is based on a misinterpretation of the claims. The Court also held that the judgment of the Ld. Single Judge in Ten XC v. Mobi Antenna (supra) dated 4th November, 2011, wherein it was held that since there was a credible challenge to the validity of the patent, an interim injunction could not be granted, was not binding on the Court as there are several changed circumstances since then. The Court also held that the Defendants are liable to deposit some amounts in the Court in order to continue the sales of these antennae in India.
Final Decision: The Court directed the Defendants to give a Bank Guarantee for a sum of Rs.40 crores and to deposit the sum of Rs.14.5 crores with the Registrar General of the Court, within one month from the date of judgment.
JUDGMENT :
I.A. 15222/2018, 1044/2019 & 1046/2019 (all stay applications)
1. The Plaintiff has filed the present suit seeking permanent injunction restraining infringement of Indian Patent No. 240893 (hereinafter, ‘IN’893’). The patent is titled “Asymmetrical Beams for Spectrum Efficiency”. 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.
2. 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. IN’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 (‘SEP’). However, the Plaintiff has licensed the patent to various parties.
3. 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.
4. Defendant No.1 – 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 – M/s Shin Ah Ltd. is a Hong Kong based company, which the Plaintiff contends is part of the “overseas network” 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 `Defendants’.
5. 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 model’);
(ii) XXDH-20-33ie-VT-DB (hereinafter, ‘second model’).
6. 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 Plaintiff’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 Plaintiff’s suit patent.
7. 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 Pla
AI
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
