In This Issue: INDIAN IPR DECISIONS ON:

Asian Electronics Ltd. vs. Havells India Ltd.: Key Comparison

HEAD OFFICE
AHMEDABAD, INDIA

HK Avenue, 19, Swastik Society
Navrangpura
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : info@hkindia.com
Web : www.hkindia.com

REPRESENTATIVE OFFICE - USA

2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857

MUMBAI

E-102, First Floor,Lloyds Estate Sangam Nagar, Next to V.I.T. College, Wadala (E)
Mumbai - 400 037. INDIA
Tel. : 91 22 24187744

RAJKOT

2nd Floor, Shivani Complex, Kanta Stri Vikas Gruh Road
Rajkot - 360 002. INDIA
Tel: 91 281 2242 731

MORBI

Guest House Road, Opp. Indane Gas Above Satnam Electronics
Morbi - 363 641

COMPLAINS OF PATENT INFRINGEMENT

2010 (44) PTC 66(Del.)

I.A. No. 8205/2009 in CS(OS) 1168/2009

ASIAN ELECTRONICS LTD VS. HAVELLS INDIA LIMITED

The following civil suit is centered on an invention "Conversion Kit to Change the Fluorescent Lighting Units" Inductive Operation to Electronic Operation". The plaintiff, owner of this invention with Patent #193488, claims a decree for permanent injunction and other consequential reliefs including damages to the extent of Rs. 25 lakhs against the defendant. The plaintiff claims to engage in the design, manufacture and market of energy efficient products including lighting solutions. It claims to have been established in 1964 and have diversified into manufacturing and sales of lighting products in 1988. Its Chairman is an engineer and innovator who have developed an improved conversion kit to change the conventional version of fluorescent lamps by incorporating the following salient features:

a) T5, a fluorescent lamp of shortened length
b) Adaptors on either side of the fluorescent lamp
c) A wiring assembly for electrically connecting the adapters; and
d) The structural components forming the electronic ballast are housed in the line channel or in one or both of the adapters.

After the technology was developed, a patent application was filed at the Patent Office-Mumbai being No. 544/BOM/1999. The patent was granted on the 27th of February 2007. Sometime in 2008, the plaintiff contends to have learned that the defendant manufactures and sales identical lighting units and conversion systems as with the one they´re manufacturing under Patent No. 193488. It was sold under the brand and style Prodigy. It relies upon a print out from the defendant´s website. The plaintiff further argues that its R&D Division examined the defendant´s products and its internal parts and found it as a total copy of their Patent. Legal notice was sent to the defendant on the 4th of March 2009 asking for a ´cease and desist´ from infringement of the subject patent, which was replied by the defendant on the 14th of March 2009. Besides reiterating the contentions made in their application and the suit, the plaintiff argued that the novel and unique features of their products are the two adaptors based on the two sides which assist in the process of conversion of electric current from induction and thus minimize flickering which is normally associated with fluorescent lights. It is argued that the patent application made have been processed through an exhaustive procedure and whereby an opportunity was afforded to all interested to oppose, after the investigation of which, the patent was granted. Therefore, the defendant cannot contend that the plaintiff´s products are not novel. Learned counsel cited K. Ramu v. Adyar Ananda Bhavan & Muthulakshmi Bhavan, 2007 (34) PTC 689 for the submission that grant of patent is sufficient for the Court to infer novelty, uniqueness and presence of inventive steps and that having regard to the principles enunciated in American Cyanamid Co. v. Ethicon Ltd., (1975) 1 All E.R. 504, the Court should injunct the defendant from infringing the plaintiff´s patent. It is also argued that the defendant´s submissions of obviousness of the product of the plaintiff based on an earlier US patent alleging it to be prior art is untenable. Lack of novelty, according to the learned counsel implied that the invention is discernible to the public prior to the relevant time. The material sought and relied, do not measure up to the standard and at this prima facie stage the Court cannot, due to lack of technical expertise, hold against the patent and conclude that it was either anticipated or obvious based on alleged prior art.
According to the defendant, the plaintiff´s patent is a mere workshop result or minor trade variant of the US Patent No. 4246629. It lacks inventive step as to warrant patent grant, under the Act. The defendant further alleged that the patent is liable to be revoked on the grounds mentioned in Sec. 46(1)(d) of the Act. It also submitted written statements comparing the distinctive and independent features of their products from that of the plaintiff. The argument was that the plaintiff´s claim for novelty and inventive step is not genuine. That in fact, there was no inventive step but only an obvious innovation that could have been discerned by a person reasonably acquainted with the prior art. In addition, the defendant was not able to show that it had any sales in the Indian market contrary to its claim that its products are sold all over India and in many other countries. Therefore its claim for substantial sales is unfounded as there is no document. One of the established principles on which a patentee´s application for injunction can be considered is whether the patent is being worked at all. On the part of the defendant, it argues that all indications in the suit show that the plaintiff does not work its patent, and that therefore, the balance of convenience if at all, is against the grant of ad-interim injunction.
The plaintiff complains of patent infringement, premised on the efficiency derived through placement of existing components or constituents in the patented invention. The plaintiff´s Claim No. 1 and 10, on which the patent is based, are said to have been infringed. However, it did not claim that any of the components are inventions, or involve a new or inventive step; the patent is claimed for the kit, which incorporates the two sleeve-like ends, one or both of which contain the ballast. In other words, the claim is in respect of the design or particular assembly. It was not also clear what improved efficiency is achieved by the existing fluorescent lamp; it does not claim novelty or inventive step in the constituent parts; rather it was upon the whole kit or product. Having regard to the provisions cited beforehand, and the circumstance that no new product or any significantly different use of the existing product is disclosed, the Honorable High Court prima facie feels that the patent cannot sustain, as being an obvious one, and also hit by the exclusions in Sec. 3(d) (´mere use of known process, machine or apparatus unless such known process results in a new product´) and also Section 3(f) (arrangement or duplication of known devices...)of the Act. The defendant objects to the subject patent, arguing that it copied an expired US patent. An important decision on anticipation is established in General Tire and Rubber Co. v. Firestone Tyre and Rubber Co. Ltd., (1972) RPC 457 which says: "To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee´s claim. If the earlier publication discloses the same device as the device which the patentee, by his claim, asserts that he has invented, the patentee´s claim has been anticipated but not otherwise." The US patent clearly mentions about two ends and an electronic ballast. The function of the end product is the same, a fluorescent lamp. In the absence of the plaintiff´s explanation why the new product has any significant improvement in function or efficiency, or any objective material, it has to be concluded that the patent is hit, prima facie, by anticipation. The application could have been disposed by view of the above observations. The Honorable High Court however, feels compelled to discuss another important aspect relevant vis a vis the balance of convenience. The plaintiff asserts that its products are widely known and sold in India. It has relied on some sales figures in the suit but has been unable to produce any objective material disclosing the sales of its products apart from a solitary invoice. Having regard to the prima facie merit, it is therefore held that the plaintiff has failed to establish that the balance of convenience is in favor of grant of an interim injunction. In view of the above conclusions, the applications for temporary injunctions have to fail; they are accordingly dismissed, with no order to costs.

-----------------------------------------------------------------------------TOP

Contributed by : Lisa Pineda Gacuma - Technical Expert
Edited By :Roshni Parikh
Designed By : Vikash Singh [Email : newsletter@hkindia.com]