Intellectual property rights met commercial reality in Conqueror Innovations Private Limited and Anr v Xiaomi Technology India Private Limited. Conqueror applied for a temporary injunction restraining Xiaomi from infringing its patent that allowed users to find lost phones. Delhi High Court refused to grant the relief.
The court found that Conqueror had not made a sufficient case for the injunction to be granted. Relying on the Supreme Court case of Biswanath Prasad Radhey Shyam v Hindustan Metal Industries, the court looked at the entirety of the specification in the application for the patent. Conqueror claimed essential elements of finding and monitoring a lost phone, automatically reinstalling software that a thief may erase, triggering a security mode and allowing the device to phone home surreptitiously. Xiaomi’s application related to finding a lost phone to allow the user to perform certain actions including erasing their data. The plaintiff mapped the two applications and drew what it said were unacceptable similarities in their three elements.
The court held that a co-ordinate bench in Sotefin SA v Indraprastha Cancer Society and Research Center & Ors required it to conduct a detailed and literal analysis of the elements. It upheld decided law that claims dependent on independent claim one would fail if the patent holder failed to make out an infringing case for the main claim. The court found that the tracking purposes of the two main claims were different. One was to trace and monitor; the other was to trace and allow user actions. The two dependent claims also fell, although the court decided that the two Xiaomi dependent elements in any event bore no relevance to the two Conqueror dependent claims.
The court determined that, although Conqueror had been granted its patent in 2010, the protection had been used hardly at all. The plaintiff had sold some 15,000 one-year online subscriptions between April 2015 and March 2019, and 3,000 between April 2017 and February 2020 in partnership with others. The court relied on Franz Xaver Huemer v New Yash Engineers that decided that the holder of a patent not being worked will not be entitled to the grant of a temporary injunction. The third factor the court considered was inordinate delay. After the grant of the patent, Conqueror admitted in a filing with the Patent Office in 2015 that it knew that a number of manufacturers were trying to produce similar systems. The court found it unreasonable, therefore, for the plaintiff to claim that it only discovered the alleged infringement in 2023. Xiaomi had been selling its products in India since 2014 and was well-known among consumers. Delay is not by itself a ground to refuse an injunction. However, the greater the delay, the greater the need for it to be satisfactorily explained. No reasons were put forward by the plaintiff in this case.
The court decided the plaintiff had failed to establish a sufficient preliminary case for the grant of an injunction because it had not established the grounds of the main claim, held a non-working patent and did not explain the reasons for the delay in asserting its claim. This case serves as a timely reminder of the factors a patent holder must show to establish a sufficient case.
It is essential that the patent holder sets out in detail the exact way in which the disputed use infringes the main independent claim. Other claims must be shown to be dependent on the main claim and that the offending uses infringe them as well.
The patent must be shown to be working. The law does not aid holders who leave their intellectual property unused, raising suspicions that they are patent trolls. These are patent holders who manufacture nothing, but profit from bringing or threatening litigation. Patents allow holders to exploit their inventions without fearing competition for a certain period, but they must be used.
Patent holders must also explain delays other than minor ones. They cannot expect the court to overlook tardiness.
Although the court found against the plaintiff on this occasion, it cautioned that its findings do not bind the court at the full hearing. It ordered the defendant to preserve complete records of the manufacture and accounts of the sale of the devices in question and file statements of accounts half-yearly with the court.
Author: DPS Parmar
First Published by: IBLJ here