Intellectual property laws and their relevance in the functioning of a country are recognised globally. Strong IP legislation and an equally strong IP enforcement regime help attract new investment and allow innovators to develop new technologies. This situation is particularly true in the area of patents. India’s patent enforcement regime was plagued with major impediments, with the burden of proof being one.
India’s courts shift the burden of proof onto the defendant in respect of a process patent as per the requirement of the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), i.e. if either of these two conditions are met: (1) the process results in “new”product; or (2) there is substantial likelihood that an identical product is made by the process and the plaintiff has made reasonable efforts to determine the process but has failed. Until recently, the courts adhered to the traditional rule of burden of proof when it came to infringement of patent claims directed towards a product. Thus, in case of alleged infringement of a patented product, the “onus of proof” rests on the plaintiff.
Extent of proof
One of the areas that required the courts’ attention was the extent of proof needed to be submitted by the patentee as a basis for infringement contentions when enforcing patents reading upon – or covering within the scope of monopoly – industry standards. Industry standards are benchmarks that are required to be met by a product for its commercial sale.
In other words, would the courts expect the patentee to provide the same level of proof for infringement of a patent, reading upon an industry standard, or would there be some dilution? This aspect was not very clear because of the fact that until recently, the patentees alleged that the product is violating the claims of the patent – or in other words, provided product to claim mapping – even when trying to enforce patents which read upon industry standards.
For example, in Chemtura Corporation v Union of India, despite the fact that two drawings for commercial use according to the technology covered by Indian patent No. 213608 for a side bearing pad assembly were approved by the Research Designs and Standard Organisation (RDSO), which comes under the Ministry of Railways of India – thus, having a status equivalent to industry standard, especially in respect of Indian Railways – the patentee provided a claim to the accused product with element-by-element mapping, using drawings of the accused product and proposals describing the accused product. Additionally, the patentee provided an expert affidavit wherein the expert maps the features of the claims of the plaintiff’s subject patent with the defendant’s product offered for sale.
Similarly, in Garware-Wall Ropes v A I Chopra and Anr, despite the fact that patent No. 196240 for a galvanised steel wire rope net system for protection from falling boulders, and patent No. 201177 for spiral lock systems read upon standards as formulated by RDSO, the patentee provided a claim to the accused product using element-by-element mapping.
However, with the explosion of product patent litigation in India, especially in areas other than pharmaceutical industry, it was only a matter of time before a patentee would approach the courts with infringement contentions on the basis of industry standards, relying upon the fact that the patent allegedly reads upon an industry standard as a sufficient proof for infringement of the patent.
Since there was no precedent in this regard, it was believed that India’s courts would look at how other courts around the world have dealt with the issue. In the US federal circuit case of Fujitsu v Netgear, the court noted that is generally proper to rely on an industry standard to analyse infringement issues. There are also other cases in the US where federal courts have accepted reliance upon industry standard for the purposes of infringement analysis.
Issues still unclear
But even if India’s courts generally accept reliance upon an industry standard, there are many other issues that are unclear, such as would the patentee be required to compare claims to the standard? Or, in case of a scenario where the patentee relies upon a patent that reads upon a standard and alleges that a plurality of products of the defendant infringe the patent, is the patentee required to separately identify each accused product?
Thanks to a recent litigation in India involving standard essential patents (SEPs), some clarity has been provided by the courts.
For example, in Vringo Infrastructure v Xu Dejun (ZTE), Vringo alleged infringement of Indian patent No. 243980, entitled “Mobile station operable with radio access network and a packet data serving node and a method for operating such mobile station”, which is one of the essential ingredients of the mobile phone technology used in CDMA2000 and CDMA2000 Rev A and Rev B.
Vringo placed on record ZTE’s websites demonstrating use of CDMA2000 and CDMA2000 Rev A and Rev B technology. Vringo also placed on record an expert’s report stating that, after reviewing the complete specification of the patent, it was found that ZTE infringed CDMA2000 EV-DO Rev A or later standards in India. Apart from the above, specific cell phone models such as ZTE Optik V55, ZTE N880E, ZTE Chorus, ZTE AR910, ZTE Flash and ZTE AC2736 were identified as illustrative of infringing models. Last but not least, illustrative claim chart mapping, correlating the claims of the patent suit with relevant standards of 3GPP2, were placed on record. The Delhi High Court issue an ex parte interim injunction in favour of Vringo.
The author is pleased to note that Delhi High Court has accepted the use of standards in assessing patent infringement. Although such acceptance has not come in the form of a clear statement, the same can be inferred by way of conduct, i.e. granting an interim injunction in cases involving SEPs on the basis of plaints which compare claims to the standard and allege infringement on the basis of the same. While this is definitely the starting point of a new era, one has to continuously monitor the approach taken by India’s courts and where they draw distinction between sufficient and insufficient disclosures.
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