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2024 Supreme(Online)(MAD) 13495
HIGH COURT OF MADRAS
Hon`ble Mr Justice SENTHILKUMAR RAMAMOORTHY
Global Life Sciences Solutio – Appellant
Versus
Controller General of Patent – Respondent
The judgment establishes that a combination of known technologies can warrant patent protection if it demonstrates a non-obvious solution to a technical problem.
Headnote:
Patent - Invention - Patents Act, 1970 - Sections 2(1)(ja), 3(k) - The court highlighted the standards for determining inventive step and novelty, finding that the claimed RFID system combined known technologies in a non-obvious way, resulting in a valid patent claim.
Fact of the Case:
The appellant's predecessor filed a patent application for an RFID system that withstands gamma sterilization, facing objections under Sections 2(1)(ja) and 3(k) of the Patents Act, 1970, leading to an appeal following rejection.
Finding of the Court:
The court found that the claimed invention satisfied the novelty requirement and had an inventive step not obvious from prior art, leaving the earlier rejection unsustainable.
Issues: Whether the claimed invention was novel and involved an inventive step under the relevant sections of the Patents Act in light of the cited prior arts.
Ratio Decidendi: The court determined that the combination of FRAM in RFID technology to withstand high levels of gamma radiation constituted a non-obvious innovation, distinguishing it from the prior arts cited by the respondents.
Final Decision: The court allowed the appeal, setting aside the order rejecting the patent application and directing its progression to grant.
JUDGMENT
Background This appeal is directed against an order dated 04 March 2020 rejecting Patent Application No.6061/CHENP/2010.
2. The predecessor-in-interest of the appellant, GE Healthcare Biosciences Corp, had applied for grant of patent for an invention titled “A Gamma Sterilizable RFID system that Prevents Unauthorized Operation of Associated Disposable Bio-process Components” by claiming priority from 27 March 2008 as per application dated 20 August 2008 for grant of patent before the United States Patent Office (the USPTO). After filing PCT Application No. PCT/US08/073624, the predecessor-in-interest of the appellant filed the national phase application in India on 27 September 2010. Upon request by the appellant, the First Examination Report (FER) was issued on 27 March 2018. In the FER, objections were raised on various grounds, including under Section 3(k) of the Patents Act, 1970 (the Patents Act) and Section 2(1)(ja) thereof. The appellant responded to the FER on 09 September 2018. Thereafter, pursuant to a hearing held on 16 December 2019, the appellant filed written submissions along with amended claims. Eventually, by order dated 04 March 2020, the patent application was rejected. This appeal was filed in the said facts and circumstances.
Counsel and their contentions
3. Oral arguments on behalf of the appellant were advanced by Ms.Manisha Singh and Mr.Varun Sharma, learned counsel. Mr.Diwakar, learned SPC, assisted by Mr.Praveen Kumar, Assistant Controller of Patents, responded on behalf of the respondents.
4. Learned counsel for the appellant opened submissions by providing an overview of the nature of the claimed invention. At the outset, it was submitted that radio frequency identification (RFID) devices are widely used for identification of objects, such as animals and garments, and for the detection of unauthorized opening of containers or packets with such objects. In the context of disposable bio-process components, learned counsel pointed out that there is exposure to gamma radiation and that this affects the memory devices used in such RFID devices. Therefore, a need arose to solve the above problem by producing a device and devising a process that eliminates or mitigates the risk of gamma radiation induced loss of device performance. She next submitted that the claimed invention is a RFID device which has a memory chip with two components: a complementary metal oxide semiconductor (CMOS) and, most importantly, a ferro-electric random access memory (FRAM) chip to store redundant information written to a plurality of regions. This device is attached to disposable bio-process components and has the ability to withstand exposure to gamma-sterilization of intensity ranging from 25k Gray to 50k Gray.
5. By referring to the cited prior arts, learned counsel submitted that prior art D1, US Patent No.20080042837 A1, discloses the use of RFID tags in the pharmaceutical industry. Although it deals with the use of RFID tags, learned counsel submitted that it does not describe or disclose the process of writing error-correctable information into the ferro-electric memory device in the form of redundant information written to a plurality of regions of the memory chip. She further contended that prior art D1 assumes that a ferro-electric memory device is not corrupted by gamma radiation. Therefore, she submitted that a person skilled in the art would not be able to arrive at the claimed invention on the basis of prior art D1. As regards prior art D2, US Patent No.20070224700 A1, she submitted that it is completely unrelated to the claimed invention because D2 relates to analysis of bio-process fluids. According to her, D2 is intended to detect one or more biological markers in bio-process fluid samples and does not qualify as analogous prior art.
6. She then dealt with prior art D3, US Patent No:5349558 A, and submitted that it deals with creating extra [redundant] columns of memory by dividing the memory device into
