In one of the longest patent infringement disputes, CS(OS) 635/2004, relating to Indian patent 175971 for ‘Digital Transmission System, held by Koninklijke Philips NV, Philips sought a permanent injunction against BCI Optical Disc Ltd. The Delhi High Court invoked the doctrine of literal construction and the doctrine of equivalents and ruled that the plaintiff could not prove that its Video CD patent was violated. The Court held that Philips’ comparison of its patented process with the defendants’ product lacked essential elements of transmission, compression, and receiver mechanisms.
The Court observed that the plaintiff relied upon a technical affidavit of an expert to evidence the factum of infringement; however, the base of the report relied upon was defective and erroneous, as the whole process was based on the data copied from a VCD to a hard disc. The Court observed that to judge the technique of production on the basis of the selected data copied from the end product to the hard disc and to comment on its source itself was scientifically incorrect. The Court found that the approach to comparing the patented process with the defendants’ products was “fundamentally flawed” and lacked precise technical mapping as mandated under the Delhi High Court Rules Governing Patent Suits, 2022.
The Court categorically stated that from a bare perusal of the claims, it is clear that the suit patent covers a product or a system having particular components, and it is not a patent over a method/process or a technique. According to the court system, claims are product claims, and there is no dispute on this position of law. The Court found that neither in the evidence affidavit of the technical expert, nor in his technical report, were the essential features of the suit patent disclosed or analysed in order to map them with the system used by the defendants. Therefore, the Court ruled that the claim mapping, as done by the plaintiff, was faulty, and did not establish that the suit patent covers the defendant’s product, or that the product of the defendants infringed the system patent of the plaintiff.
Factual Matrix
This infringement dispute had a chequered history of protracted legal proceedings, starting with Philips gaining the interim injunction through the order dated May 31, 2004, of the Court, which prevented the defendants from using the patented process claimed in the suit patent in the manufacture/production of its VCDs, without obtaining the necessary license. Subsequently, the said interim direction was modified vide order dated October 5, 2004, wherein the parties had handed over an application recording a settlement governing the interim relief claimed in the suit. It is pertinent to note that the term of the suit patent IN 175971 expired during the present proceedings on May 28, 2010, and the only surviving issues before the Court related to infringement and damages.
Case of Defendant 2
The defendants contended that they were only replicating from the master discs supplied by the producers of the movies. Defendants argued that in the whole process of replication, they did not use any software or hardware for digital transmission and compression of information. Further, according to the defendants, the technique used by them for replication was licensed from the German company Singulus. Defendants contended that the suit patent relates to a digital transmission system comprising a transmitter and a receiver, for transmitting a wide-band digital signal. However, the technology used by the defendants for the replication of CDs/VCDs did not involve any such mechanism. Additionally, in the entire process, no external software/technique for digital compression was involved. The defendant also raised the issue of not making the producers of the movies, or the manufacturers of the stampers and Singulus, parties to the present suit.
Plaintiff’s Case
The plaintiff submitted that the defendants did not challenge the validity of the suit patent either by filing a counterclaim before the Court or by way of a revocation proceeding before the erstwhile Intellectual Property Appellate Board (“IPAB”), thereby not disputing the validity of the suit patent. The plaintiff’s case rested on the expert evidence, wherein the expert showed that the defendants were infringing the suit patent. The plaintiffs alleged that the VCDs of the defendants were played on the VCD players (VCD Decoders) specifically meant for decoding the audio stream compressed according to the suit patent, being Indian Patent No. 175971.
According to the plaintiff, the fact that the defendant’s VCD was compatible with the VCD Decoders, specifically meant for decoding the audio stream compressed according to the suit patent, was prima facie evidence that the defendants used the compression technique disclosed in the said patent. Additionally, application of audio content to any VCD using the patented process/system of the plaintiff would amount to an infringement of the suit patent. According to the plaintiff, any person or entity who replicates VCDs using the plaintiff’s patented process, or, for that matter, sells, offers for sale, or even stocks infringing VCDs, would infringe the plaintiff’s exclusive rights.
Subject Invention
The suit patent relates to a digital transmission system comprising a transmitter and a receiver, for transmitting a wide-band digital signal. The suit patent relates to the field of a digital transmission system formed by a transmitter and a receiver, for transmitting a wide-band digital signal of a specific sample frequency “Fs”. The disclosed invention in the complete specification mentioned that it relates to a transmitter and a receiver for use in the transmission system, and also to the record carrier obtained from the system.
Courts Analysis and findings
On whether the technique used by the defendant infringes Indian Patent No. 175971
To address this issue, the Court examined the coverage of the claims through the lens of claim construction. While relying on the judgment of the Supreme Court of India in Bishwanath Prasad Radhey Shyam Versus Hindustan Metal Industries (1979) 2 SCC 511, the Court used the complete specification and claims as a whole to determine the scope of the suit patent.
Claim construction
In light of the teachings from the complete specification, the Court constructed the sole and broadest independent claim of the suit patent. According to the Court, the novel features of the suit patent were characterised in the independent Claim 1 and were further narrowed using the dependent Claims 2 to 17. The Court observed that upon constructing the independent claim of the suit patent along with the complete specification as a whole, it was clear that, even though the field of the suit patent relates to the transmission system, its components and the record carrier obtained from the system, the claims granted were restricted to a ‘Digital Transmission System’, which comprised a ‘transmitter’ and a ‘receiver’, having specific structural and functional fea tures, such as converter circuits, frame generator and synchronisation generator. The Court found that the focus of the suit patent was on the arrangement/architecture of the components named above for converting a wide-band digital signal into frames of information packets, as detailed in Claim 1 of the suit patent, to achieve the claimed mode of transmission.
According to the Court, considering the law with regard to claim construction, it is seen that the suit patent was a single patent being IN175971 for a ‘Digital Transmission System’ with specified frame-generation logic, synchronisation, and formula-based packet structure. On perusal of the complete specification, the Court concluded that it was for the ‘Digital Transmission System’ which has three components, which were integral for the working of the claimed invention, i.e., a transmitter, a receiver, and a transmission medium, which were indispensable for performing the claimed function.
Further, the modified transmitter-receiver arrangement/framework, as described in Claim 1 and constructed hereinabove, was essential for the working of the suit patent. Claim 1 of the suit patent clearly described that the first converter circuit forms part of the transmitter and the second converter circuit forms part of the receiver. The Court concluded that patent claims/cover a product in the form of a system, i.e., a system for digital transmission.
On claim construction by the plaintiff, the Court observed that the onus of proof vested squarely on the plaintiff to construct the Claims of the suit patent and thereby, to prove the infringement of the constructed claims. In the present case, the Court found that the plaintiff failed to construct the suit patent and did not perform a ‘Claim Versus Product’ comparison in the manner required. The Court found that the infringement analysis done by the plaintiff’s expert witness was only with respect to the audio already packed on the defendants’ VCD.
Therefore, according to the Court, plaintiff’s entire case on infringement of the patent proceeded de hors the granted Claims, i.e., without mapping of all the elements of its claims onto the defendant’s product. The Court noted that the failure of the plaintiff in this regard was evident, as the plaintiff failed to construct the suit patent as per the claims and further failed to show the overlap of the essential features of its Claims on the defendant’s product.
On infringement
To answer this question, the Court looked into whether the technique used by the defendant infringes Indian Patent No. 175971. The Court found that the defendants did not manufacture the VCDs but only replicated the same by use of the replication machinery acquired from Singulus. As such, the process of replication did not involve any transmission or compression mechanism. The Court held that merely copying content from Master CDs did not constitute infringement, since the replication process used no compression or transmission mechanism linked to Philips’ patented technology.
On the applicability of the Doctrine of Equivalents, the Court found that though the plaintiff showed that the data packed on the VCD, i.e., the end result, was ‘substantially similar’, but the plaintiff was not able to show that the said data was packed in a ‘substantially similar’ way, i.e., as per the system claimed in the suit patent. According to the Court, the factum of infringement by the defendants was not established by the plaintiff in any manner.
On infringement of Standard Essential Patents (SEP)
On this issue, the Court noted that even though claim mapping was done by the plaintiff, it was fundamentally flawed as it failed to identify or demonstrate the presence of all essential features of the suit patent in the defendant’s product. Moreover, in the present case, where the essentiality of the suit patent in respect of the ISO/IEC 11172-3 standard was not accepted by the defendants, the Court observed that the plaintiff should have presented before the Court a standard essentiality report, prepared by an independent expert, keeping in mind that the present suit was at a post-trial stage.
The Court ruled that since the plaintiff failed in this regard and proceeded to rely only on its own claim mapping which did not establish that the system claimed in the suit patent maps with the ISO/IEC 11172-3 standard, the plaintiff failed to fulfil the basic requirement of establishing infringement of an SEP, in the absence of construction of the suit patent as per the claims and proper claim mapping.
Decision of the Court
The Court found that the claims covered three essential elements — a transmitter, a receiver, and a transmission medium and all of these were absent in the defendants’ replication process. The Court concluded that “it is clear that the ‘Digital Transmission System’ covered in the suit patent is not present/part of the replication process employed by the defendants to make VCDs. The plaintiff has not been able to establish infringement by the defendants. The mapping of the Claims of the suit patent to the ISO/IEC 11172-3 standard done by the plaintiff is flawed, as the same does not identify which mandatory portions of the said standard necessitate the use of the suit patent. In the absence of even bare evidence to prove infringement, the suit has to necessarily fail.” The Court dismissed the present suit, finding it without merit.
Takeaways
In any infringement suit, the plaintiff must establish the basic requirements for infringement. In this case, the Court found that Philips’ approach to comparing its patented process with the defendant’s products was “fundamentally flawed” and failed to provide the precise technical mapping mandated by the Delhi High Court Rules Governing Patent Suits, 2022.
Author: DPS Parmar
First Published by: Mondaq here