Name of the case:
Communication Components Antenna Inc v. Ace Technologies Corp. and Ors
Citation:
[CS (Comm) No. 1222/2018]
Facts of the case:
The Plaintiff is involved in the business of manufacturing and selling products relating to the
telecommunication industry, such as antennae, amplifiers, and low loss combiners. The first
Defendant – M/s Ace Technology Corporation – is also in the business of manufacturing and
selling antennae for the telecommunication industry.
The Plaintiff has a patent in India numbered 240893 (hereinafter, the ‘893 patent) and titled
“Asymmetrical Beams for Spectrum Efficiency”. The ‘893 patent discloses a split-sector antenna
for use in a sectorized cellular communications network having a base station supporting at least
one sector. Each sector has an associated sector antenna that has a critical coverage area
extending therefrom. The split-sector antenna is constructed and arranged for replacing the sector
antenna and has a plurality of sub-sector coverage areas extending therefrom. At least one sub-
sector coverage area is asymmetrical. A total critical coverage area provided by the plurality of
sub-sector coverage areas is substantially equivalent to the critical coverage area of the replaced
sector antenna. The asymmetrical sub-sector coverage area reduces overlap with neighboring
sub-sector coverage area as compared to overlap of the replaced antenna.
The application for the ‘893 patent was originally filed in India on August 5, 2008 as a national
phase application of a PCT application. Subsequently, the ‘893 patent was granted on June 9,
2010. The corresponding US patent numbered US 8311582 (hereinafter, the ‘582 patent) was
granted on November 13, 2012 and the corresponding European Patent Application, numbered
07710762.1, is pending, and yet to be granted.
The Plaintiff contended that some models of antennae of the Defendants infringe the ‘893 patent.
The Plaintiff issued letters to the Defendants calling upon them to obtain a license for the ‘893
patent. However, the Defendants did not respond. Therefore, the Plaintiff filed the suit seeking
permanent injunction against the Defendants.
The Defendants argued that the validity of the ‘893 patent was challenged in Ten XC Wireless
Inc v. Mobi Antenna [CS (Comm) No. 977/2016] and Ten XC v. Andrew Comm Scope [CS
(Comm) No. 1072/2016]. Further, vide its order dated November 4, 2011 in the first suit, a single
Judge of the Court opined that there appears to be a credible challenge to the validity of the ‘893
patent and declined interim injunction to the Plaintiff.
The Defendants also relied on various prior art documents to contend that the ‘893 patent is
invalid and that the ‘893 patent is not a patentable invention under Sections 3(a), 3(c), 3(d), and
3(f) of the Patents Act, 1970. The Defendants challenged the validity of the ‘893 patent based on
various statements made by the Plaintiff in the prosecution of the corresponding patent in USA
and on the fact that the corresponding European patent application is not yet granted.
Judgment:
The Court observed that the wordings of the claims in different jurisdictions may be different due
to the subjectivity in the prosecution of the patent application. The Court also held that the
language of claims in the foreign jurisdictions can be looked at to ensure that the invention is
broadly the same and that, for determining infringement in India, the variation in the language of
the claims in different jurisdictions need not be examined in a minute fashion.
Addressing the issue of the difference in the language of the ‘582 patent and the ‘893 patent, the
Court observed that the independent claims of the ‘582 patent has the below language in addition
to the features in the independent claims of the ‘893 patent:
wherein said at least one asymmetrical sub-sector coverage area reduces overlap with said
neighboring sub-sector coverage area comparing to overlap of the replaced antennae while
maintaining the critical coverage area of the replaced antenna.
The Court held that the above language is not a further limitation when viewed in the context of
the invention. Specifically, the Court held that the feature of ‘reduction of overlap’ in the above
language is part of the ‘893 patent as well. Therefore, Court rejected the Defendants’ contention
that the ‘893 patent was obvious without the above additional language.
The Court also rejected the Defendants’ argument that the word ‘replacing’/ ’replacement’ in the
claims refers to an actual replacement of an existing antenna with a new antenna. The Court
rejected such a literal reading of the claim. The Court, relying on Catnic Components Ltd. V. Hill
and Smith [1982 RPC 183] and F. Hoffman-La Roche Ltd. v. Cipla Ltd. [225 DLT 391], held that
the claims have to be interpreted not literally, but purposively. By analyzing the purpose of the
sub-sector antenna in the invention, the Court observed that replacement does not mean only
replacement of existing antennae – even the use of a new sector antenna with an asymmetrical
sub-sector coverage would also be covered under the invention. This is because the new sector
antenna would still be an antenna where a sub-sector coverage area is replaced from a
symmetrical one to an asymmetrical one. To sum up, the Court held that, in the context of the
invention, replacement is used to denote the purpose for which the sector antenna having a
symmetrical sub-sector coverage area is being replaced with a sector antenna having an
asymmetrical sub-sector coverage area. Therefore, according to the Court, any
telecommunication network where a sector antenna having an asymmetrical sub-sector coverage
area is used, would be covered by the ‘893 patent.
The Court also took note of the fact that the Defendants had not produced beam patterns of their
antenna to argue that they do not infringe the ‘893 patent, even though it was convenient for
them to do so. The Court observed that, once the Plaintiff has established a prima facie case of
infringement, it was up to the Defendants to disprove the same. Considering the fact that the
Defendants did not produce their beam patterns to disprove infringement and that it would have
been convenient and easy for the Defendants to do so, the Court concluded that the Defendants
had deliberately chosen not to produce their beam patterns, which were crucial aspects in this
case.
The Court rejected the contentions that the ‘893 patent is not patentable under sections 3(a) and
3(c) of the Patents Act, 1970, as the claims are not vague and are not discoveries. The Court also
held that the ‘893 patent relates to newer technology developed based on existing technology and
achieves better efficiency and is therefore allowable under section 3(d). The Court further held
that the invention is not a mere arrangement/re-arrangement of known components and rejected
the challenge based on section 3(f).
Similarly, the Court rejected the Defendants’ contention that the ‘893 patent was invalid in view
of some prior art documents, as the prior art documents seemed insufficient to anticipate the
disclosure of the invention.
Addressing the order in Ten XC Wireless Inc v. Mobi Antenna, in which the Court had held that
there was a credible challenge to the validity of the ‘893 patent, the Court observed that an
important factor considered by the Court to determine that there was a credible challenge to the
validity was the rejection of the ‘582 patent by the US Patent and Trademark Office (USPTO).
However, this factor is no longer valid, as the ‘582 patent has been granted and upheld. Another
factor considered by the Court to determine that there was a credible challenge was that the ‘893
patent was a recent one (the ‘893 patent was granted in June 2010 and the suit was instituted in
September 2010). This factor was also no longer valid, as the ‘893 patent is more than 9 years
old. In this period, the Plaintiff’s patent has not been revoked or held invalid in any jurisdiction.
The Court also considered the judgment in Sandeep Jaidka v. Mukesh Mittal & Anr [CS (OS)
No. 1900/2010], in which it was concluded that if a patent is of long standing, then a case is
made out for grant of an injunction. In view of the above factors, the Court rejected the
Defendants’ contention that there is a credible challenge to the validity of the ‘893 patent by
merely due to the order in Ten XC Wireless Inc v. Mobi Antenna.
In view of the above findings, the ‘893 patent was found to be prima facie valid and being
infringed by the Defendants. Since the first Defendant claimed that it did not have any assets in
India, to continue sales of antennae in India, the Court ordered the Defendants to deposit an
amount approximately equal to ten percent of the sales made.
Conclusion:
The instant judgment has emphasized on the importance of purposive construction of claims to
ensure that the claims are not construed too narrowly. The judgment has also made it clear that,
for determining infringement in India, the Courts will primarily consider the claims granted in
India, while the corresponding claims in foreign patents will be looked at only to ensure that the
invention is broadly the same. The judgment also makes it clear that an older patent will be
considered more favorably for injunction.