The Madras High Court has recently ruled in favour of Somasundaram Ramkumar in a writ petition challenging the orders of the Mumbai and Chennai Commissioners of Customs, who had held that Samsung and other dual sim mobile phone companies did not infringe Ramkumar’s patent by importing dual sim phones. The High Court stayed the orders on the ground of jurisdiction, holding that the Customs Commissioners did not have the jurisdiction to decide patent infringement.

These phones are imported by at least 15 companies including Samsung, LG Electronics India Ltd and several other domestic firms. The parties to the case, however are, Samsung India Electronics Ltd and Hansum India Ltd. Madurai-based inventor Ram Kumar was granted a patent (214388) on dual-SIM phones in 2008 that can hold more than one SIM card. Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, a rights holder can apply to the custom authorities to block the infringing goods from entering the country. The Custom Officials in Mumbai and Chennai upon the notice of patentee had earlier seized the imported phones under Rule 1(a) of the above Rules.

Samsung India had some time in March, moved a writ petition in Delhi High Court challenging the action of the Customs department to prevent its imports of the said mobile phones. The company challenged the provisions of Indian Customs Act 1962 and the IPR (Imported Goods) Enforcement Rules. Samsung also filed a petition sometime in April ‘09 before IPAB to revoke the existing patent on the ground of lack of novelty.

However, the custom commissioners now held that while Ramkumar’s patent was in respect of dual sim mobile phones having two headphones facilitating two calls by two persons at a time, the technology imported by the companies was only in respect of regular dual sim technology and did not intersect with the ambit of Ramkumar’s patent, which was labeled by them as vexatious. According to them, the patentee attempted to claim rights over technology that was a part of prior art and clearly outside the scope of his patent. This was the reason the Customs Commissioners had held non-infringement and claimed demurrage and warehousing charges arising due to suspension of clearance of these goods.

The case raises two significant questions:

1. Whether the Customs Officials are empowered to decide on patent infringement on the basis of power granted to them under Rule 1a?
   
   
2. Whether the decision taken by Customs Authorities overrides the power of the Court to decide on patent infringement under Section 104 of the Patents Act?