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Name of the case - Jay Switches (India) Pvt. Ltd. Vs Sandhar Technologies Ltd. & Ors. (2024)
Case No. - Delhi High court CS (COMM) 301/2023
Presiding Bench - Hon’ble Justice Mr. Amit Bansal of the Delhi High Court
Key Facts
The plaintiff (Jay Switches (India) Pvt. Ltd) filed a lawsuit against the defendants (Sandhar Technologies Ltd. & Ors.) for patent infringement and passing off related to plaintiff’s registered patent (Suit Patent) no. 427110 titled "Air Tight Fuel Cap" and registered design no. 275676 titled “Fuel Tank Cap for Vehicle”.
On May 11, 2023, the defendants agreed to an interim arrangement, ceasing new orders while fulfilling existing ones. Three Court hearings were held between September 27 to October 1, 2024 and judgment was reserved on October 4, 2024.
Case set up by Plaintiff
The plaintiff first encountered the defendant's products in November 2018, but initially chose not to pursue legal action due to the defendant's perceived insignificance and the perceived low quality of their products.
However, in March 2023, the plaintiff discovered the defendant selling a fuel tank cap model (COML-13) specifically marketed for Tata Ace vehicles. The plaintiff alleges that this new model infringes upon their patented technology by the detailed illustration of infringement of the plaintiff’s patent through claim mapping and that the defendant's actions demonstrate wilful and knowing infringement, as well as potential passing off.
Case setup by Defendants
The defendants argue that the prosecution history of the Suit Patent is crucial for claim construction, not just claim mapping. They contend that the "length" of the main circular plate (MCP) (241) excludes engagement projections (EP) (242), making their product's measurements different from the patented invention and therefore non-infringing.
Plaintiff’s submission
The defendants claim non-infringement based on a minor alteration in the non-functional part of the main circular plate and by incorrectly asserting that engagement projections (EP) (242) are separate components. However, the plaintiff argues that engagement projections are integral to the main circular plate (MCP) (241), as explicitly stated in Claim 2. This claim limits the main circular plate (MCP) (241) to include these projections, which interact with the predetermined distance, a crucial aspect for the invention's functionality. The claimed range of 10-100% is crucial to the working of the invention.
Submission by Defendants
Claim 1 refers to the thickness of the "main circular plate" (MCP) (241), not the "engagement projections" (EP) (242). The defendants emphasizes that Claim 1 cannot be amended by incorporating elements from Claim 2. To infringe Claim 1, the "predetermined distance" (PD) must be less than or equal to the MCP's thickness. Since the defendant's PD (3mm) exceeds the MCP thickness (2.5mm), they do not infringe Claim 1, regardless of the inclusion of engagement projections (EP). Since Claim 1 is not infringed, claim 2, which incorporates all the limitations of Claim 1, ipso facto Claim 2 is not infringed.
Bench’s Observation
- The central dispute hinges on the interpretation of Claim 1 in the Suit Patent. Determining patent infringement often revolves around claim construction, which defines the invention's scope. While claims are crucial, they must be read in conjunction with the Complete Specification, as emphasized by the court in Guala Closures SPA v. Agi Greenpac Ltd. which are set out below:
“40. Claim construction is generally the first and foremost exercise carried out in adjudicating patent infringement suits, especially when confronted with products like tamper-evident closures which are based on mechanical features. The same has also been highlighted in ‘Chapter 9: Construction of the Specification and Claims’, in Terrell on the Law of Patents, Eighteenth Edition. As per Terrell, determination of the actual scope of the Claims of a complete specification is one of the most significant issues, in litigation involving patents. Once the scope of the claims is clarified, questions regarding infringement and invalidity often find swift resolution. Therefore, it has been highlighted that patentees must navigate a delicate balance, as they have to assert their claim in such a way that the Claim is broad enough to cover infringement while not excessively broad to avoid coverage by prior art. On the contrary, it has been highlighted that Defendants, employ a ‘squeeze’ argument, often claiming that if a claim encompasses their activities, it must also encompass prior art. This highlights the pivotal role of claim construction in patent litigation, shaping the foundation for determining infringement and assessing patent validity. The relevant extract from Terrell is set out below:
“Determination of the true construction of the claims of a patent specification, which are to be read in the context of the specification, is commonly one of the most significant issues, if not the single most significant issue, in litigation involving patents.” ”
[Emphasis supplied]
- While reference signs assist in understanding technical features, they do not limit the scope of a claim, as established by the England and Wales Court of Appeal (Civil Division) in Virgin Atlantic Airways Limited v. Premium Aircraft Interiors Group Limited. In the present case, as discussed above, the numerical references clearly assist in understanding the technical features of the claim and therefore act as a useful aid for claim construction.
- Bench also relied on Terrel on the Law on Patents 20th Edition for considering the amendments made by the plaintiff while ongoing prosecution of patent.
41. As per Terrel on the Law on Patents 20th Edition, the prosecution history acts as an important aid towards the construction of the claim. The relevant extract from Terrel is set out below:
“The US doctrine of “file wrapper estoppel”, under which statements
made by or on behalf of the patentee during the course of prosecution
may be taken as binding on issues of construction, does not exist as such
under English law. However, in Furr v Truline, Falconer J. accepted a
submission that statements made by the patentee in the Patent Office
file amounted to an admission against interest, so that it was not open
to them to contend for a wider construction thereafter. (It should also
be noted that in that case it was the patentee itself which originally put
the documents in evidence, a matter regarded by Falconer J. as
significant).”
[Emphasis supplied]
The plaintiff's understanding of "length" in the context of a "circular plate" implies it refers to the plate's thickness. Therefore, "length" in Claim 1 should be interpreted as the thickness of the main circular plate (MCP) only. Since engagement projections (EP) are not considered "circular plates," their thickness is not relevant. Furthermore, the text emphasizes that the numerical references "241" (for MCP) and "242" (for EP) are used in a functionally distinct manner within the patent document.
Judgment Analysis
The court found ambiguity in the patent claims, particularly regarding the "length" of the main circular plate (MCP) (241). This ambiguity hindered a clear determination of infringement at the interim stage. When the scope of claims itself is not clear, the Court cannot conclusively determine the scope of the patent at the stage of consideration of application for an interim injunction.
The court concluded that the plaintiff failed to establish a prima facie case of infringement based on its interpretation of the claims. The court considered the balance of convenience to favour of the defendants and granting an injunction would likely cause significant harm to the defendants' business operations.
The court denied the plaintiff's request for an interim injunction.
Key Takeaways
- Importance of Claim Construction:
Claims must be read in conjunction with the entire specification, including the description and drawings. Claim construction is a critical step in any patent infringement case. Ambiguous claims can lead to difficulties in interpretation and potentially weaken the patent's enforceability.
- Role of Reference Signs:
While reference signs can help understand the invention, they do not necessarily limit the scope of the claims.
- Potential Impact of Amendments:
Amendments made during prosecution can have significant implications for the scope of the claims. Amendments may inadvertently narrow the scope of the invention, but should not create ambiguities.
By carefully considering these takeaways during the patent filing process, inventors and their attorneys can increase the likelihood of obtaining strong and enforceable patent protection.
Disclaimer: This is not legal advice and should not be considered a substitute for professional guidance.
Author : Abhishekkumar Gajjar
Designation: Patent Analyst
Date: 25 December 2024 |
