In the recent case of Sotefin SA v. Indraprastha Cancer Society And Research Center & Ors[1] a Single Judge of the Delhi High Court granted an interim injunction by restraining the Defendants from making, selling, exporting, or from offering for sale, importing or in any manner directly or indirectly dealing with infringing products namely, ‘Smart Dollies’ that infringed  the Plaintiff’s patent IN214088 pertaining to a ‘Carriage for the horizontal transfer of motor vehicles in automatic mechanical car parks’. The suit patent was related to a self-propelled carriage on wheels, for horizontal transfer of motor vehicles by lifting two or more wheels, in single or multi automatic mechanical car parks. It was commonly known as a ‘Dolly’ or a ‘Silomat Dolly’. The Court applied the concept of Doctrine of Equivalence to arrive at the finding of a prima facie case of infringement and dismissed the exemption of parallel import under Section 107A(b) of the Patents Act, 1970 (‘Act’) asserted by the Defendants.

The suit patent was set to expire on 13 March 2022 and given the proximity of the expiry date of patent rights, the Defendants argued that the relief of interim injunction should not be granted and argued that damages post-trial would be an adequate remedy. The Court held that this would tantamount to defeating the patentee’s monopoly rights. The Court held that if infringement has occurred during the lifetime of the patent, the infringing goods would not become kosher on expiry of the patent. The Court also held that since an injunction is a statutory relief under Section 108 of the Act, the same cannot be denied merely because damages can be awarded at a later stage. The Court considered that the Defendants were aware of the suit patent and still proceeded to import the Smart Dollies and since the Plaintiff established the three essential ingredients viz., prima facie case, balance of convenience and irreparable loss, injunction should follow.

Factual background

In 2011, the Plaintiff entered into a supply contract with the Defendant No. 3 (Simplex Projects Limited) for the supply of fourteen patented ‘Silomat Dollies’ and entered into a separate agreement for supply of drawings of the automatic parking system to the said Defendant with necessary clauses to maintain confidentiality. In 2017, Defendant No. 2 (Rajiv Gandhi Cancer Institute and Research Centre, operated and managed by the Defendant No.1 (Indraprastha Cancer Society & Research Centre)) proposed a tender for an automatic car parking system for their site. The Plaintiff contends having shared technical background of the Silomat Dolly and informed Defendant No. 2 of the suit patent.  In November 2020, the Plaintiff became aware of Defendant No. 2 obtaining fire safety permission for its automatic multi- parking system.  The Plaintiff also learnt that the Defendant No. 1 had placed an order of supply and import of 14 ‘Smart Dollies’ for the project at Defendant No. 2’s parking system from a company named Nanjing Eli Parking Equipment Manufacturing Co. Ltd., (‘Nanjing’) in China and this product was installed/ being installed at the premises of Defendants No. 1 and 2.

The Plaintiff after acquiring images of the Smart Dollies at Defendant No. 2’s site, discovered the similarity between the Smart Dollies and the Plaintiff’s Silomat Dollies and asserted that the Defendant No. 3 illegally transferred the technology and/ or drawings related to the suit patent to Defendant No. 4 and thereby enabled the importation of the Smart Dollies by Defendant No.1.

Post summons in the suit, the Court directed IIT Delhi to appoint experts in the relevant field to assist the Court in determining whether all the features of Claim 1 of the suit patent are found in the Smart Dollies. The key takeaways from the experts’ report were:

• All elements of claim 1, i.e. 17 elements, except 2 elements, namely, the parts for supporting the wheels to be joined by means of hinges of horizontal axis perpendicular to its longitudinal axis and means of immobilizing the rear wheel were not found in the Smart Dollies.
• The claims in the suit patent and the Smart Dollies have identical input-output functions and both relate to dollies for cars.
• The Smart Dollies use hydraulic motors in lieu of electric motors, Optical measurement instead of optical limit switches and Motion triggered tire contact detector instead of pressure pads.
• The supporting means in the Smart Dollies and suit patent have identical method of operation but the former uses hydraulic instead of electrical actuation, parallel guidance instead of double start helical cam and motion triggered limit switch instead of pressure sensors.
• The Smart Dollies does not have pressure sensors to detect proximity of wheel of the motor vehicle and a cable drum to detect movement of the carriage.

Each of the parties advanced their respective stance based on the above report of the experts. The Plaintiff contended that since 17 of the 19 elements of claim 1 of the suit patent were found in the Smart Dollies, infringement is made out. As per the Plaintiff the remaining two elements, i.e., hinges and means of immobilizing the rear wheel are non-essential since the claimed invention and the Smart Dollies perform the same function in substantially the same way. The Defendants on the other hand contended that the 2 missing elements are essential, albeit defining the said missing elements differently. The Defendants asserted these elements to be ‘one or two pairs of supporting means’ and ‘means to detect presence of wheels’.

The Defendants also asserted that the Smart Dolly was protected by a patent and two utility patents in China by Nanjing. The Defendants asserted that the Smart Dollies are not related to the Silomat Dollies technology, and since both Dollies are separately and concurrently patented in China, it proves that the two inventions are different.

A few of the Defendants additionally argued that Nanjing was duly authorized under law in China to produce and sell the Smart Dollies and therefore, asserted that since parallel import goods are permitted, and the Smart Dollies are a patented product duly authorized under the law in the state where it is being manufactured, the importation thereof would not amount to infringement under Section 107A(b) of the Act.

Analysis by the Court

The Court relied on the experts’ report and narrowed the controversy to ascertaining whether the two missing elements viz. hinging, and immobilization of rear wheels are so essential that their absence would disentitle the Plaintiff to an injunction. In this regard, the Court reasoned that for patent infringement analysis, comparison of elements of the suit patent’s claims is to be done with the claims of the infringing product. The Court noted that the pith and marrow of the invention is to be analyzed based on the doctrine of purposive construction and not merely literal construction. The Court relied on the Doctrine of Equivalence to examine if the substituted element in the infringing product does the same work, in substantially the same way, to accomplish substantially the same result.

With respect to the hinging element, the Court considered the comparison provided by the experts where, the hinges as claimed in Claim no. 1 of the suit patent work unidirectionally like an elbow joint in a human body, whereas the corresponding feature in the Smart Dollies acts as a shoulder joint, giving more room for multi-directional movement. The Court analyzed that a shoulder joint would cover the scope of an elbow joint and held that the additional feature incorporated in the Smart Dollies cannot be construed to be an essential element which could render the Smart Dollies to be substantially different from that the suit patent. With respect to the feature of immobilization of rear wheels, the Court held that the feature of immobilization at two sides does not have material effect upon the working of the invention.

In the light of the above analysis and relying on the fact that 17 of the 19 elements of Claim No. 1 of the suit patent were found to subsist in the infringing product, the Court held that the Plaintiff successfully established a strong prima facie case of infringement.

On considering the argument under Section 107A(b) of the Act, the Court held that the words ‘who is duly authorized under the law to produce and sell or distribute the product’, do not mean that as long the imported product is patented - in any jurisdiction - it would fall within the ambit of Section 107A(b) of the Act. The Court held that the term ‘patented product’, in the light of the definitions of ‘patented article’, ‘patent’ and ‘invention’ under Section 2(1)(o), Section 2(1)(m) and Section 2(1)(j) of the Act respectively, would include only those products which are patented under the Indian Patents regime. The Court also held that patents are territorial in nature and therefore, unless otherwise mandated by law, a Chinese patent will not be recognized and protected in India, and the State will not permit the importation of any product which violates an Indian patent, even if it is patented in any other jurisdiction, thereby rejecting the Defendants’ exemption under Section 107A(b). The Court also considered the Plaintiff’s contentions that the Chinese patent and suit patent are entirely different and that the Defendants have made no attempt to demonstrate that their product conforms to the Chinese patent.

Conclusion

The instant case has brought to the fore concepts in patent law that Indian Courts have not examined yet, in much detail. While it is a welcome step that concepts such as Doctrine of Equivalence that are well-established in other jurisdictions are being applied, however, it appears that Indian Courts are yet to engage in claim construction or Markman hearings as conducted by the US Courts, in patent infringement matters. In the instant case, it appears that the Court proceeded based on the tabular report of claim mapping as provided by the experts without first construing the scope of the claimed invention.

In the case of Herbert Markman v. Westview [52 F.3d 967 also 517 US 370], the Court held that an infringement analysis entails two steps: First step is to determine the meaning and scope of the patent claims asserted to be infringed. Second step is to compare the properly construed claim with the device accused of infringing. The first step is to be undertaken prior to indulging in a comparison or claim mapping with the infringing product. Further, infringement being a mixed question of fact and law, claim construction by the Court is essential to determine infringement. Once the claim construction is done and the scope of the invention determined, the Court can distinguish the questions of fact and engage experts to opine only on the factual questions.

In the instant case, while the Court considered the claim mapping undertaken by the experts, the Court appears to have failed to address the ground raised by the Defendants on the aspect of the claim feature ‘one or two pairs of supporting means’. This is a feature of claim 1 of the suit patent and as per the experts this feature has different elements in the Smart Dollies. The Court does not seem to have considered this element in its analysis of essential elements.

Nevertheless, this decision is an indication that Indian Courts, especially the Delhi High Court with the newly constituted IP Division is set to augment the patent law jurisprudence in India by tackling more nuanced issues and concepts.

[The author is a Joint Partner in IPR Team at Lakshmikumaran & Sridharan Attorneys, Bengaluru]

[1] CS(COMM) 327/2021; Delhi High Court Judgement dated 17 February 2022.