$~IN THE COURT OF JURISDICTION……. Plaintiff

PONY CORPORATION
Through:

Mr.Pravin Anand, Advocate

versus……..Defendant

DONKEY CORPORATION
Through:

Mr. Hemant Singh and Ms. Saya
Choudhary, Advocates

CORAM:JUSTICE PRATHIBA M. SINGH
DRAFT JUDGEMENT FOR MOCK TRIAL
Prathiba M. Singh, J.
Brief Background:
1.

The Plaintiff-Pony Corporation (hereinafter ‘Plaintiff’) has filed thepresent suit seeking permanent injunction restraining infringement of patent
No. 20190925 granted on 25th September, 2008. The patent application was
filed on 25th September, 2002 and the term of the patent is till 24th September,
2022. The Plaintiff has paid all the annuities and the patent is valid.
2.

The Patent relates to an invention titled ‘Control method for a car

navigation system’. The asserted claims of the patent read as under: -Case No. _________/2019

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“Control method for car navigation system that
displays a map on a display screen, the method
comprising steps of:reading, from first memory means in which facility
data comprising display data indicative of a pluralityof service facilities and coordinate data indicative ofexisting positions of the service facilities havepreviously been stored, the display data to display theplurality of service facilities on the display screen;
designating one of the plurality of service facilities
displayed on the display screen in accordance with anoperation;
reading coordinate data corresponding to thedesignated one service facility from the first memorymeans;
storing the read coordinate data as user registereddata in second memory means; anddisplaying a position indicated by the coordinate dataread from the second memory means by superimposing
a predetermined pattern on to the map when the map isdisplayed on the display screen.”
3.

The Defendant- Donkey Corporation (hereinafter ‘Defendant’) beganoffering a car navigation service called the DK car navigation in India from 25th
September, 2013. The said service was offered by the Defendant throughleasing of a dedicated portable terminal, held by the customer, known as the
DK terminal (hereinafter ‘D terminal’). The Defendant implements a method
to control a car navigation system which comprises of: -Case No. _________/2019

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(a) A server managed and operated by the Defendant(b) The D terminal held by the user.
The server program was exclusively customized by the Defendant for the D
method, and is known as the D server program. The same is installed in the
Defendant’s server.
4.

In order to avail the D service, a monthly service charge of 300 yen(3USD= 210 Indian Rupees) is required to be paid by a customer. A
subscription would entitle the customer to use both the D terminal and the Dserver.
5.

After a span of five years, i.e., in 2018, the Plaintiff filed an infringement

suit against the Defendant seeking permanent injunction, delivery-up anddamages of 10 million USD (₹70 crores approx.).
6.

No interim injunction was sought in the suit. Parties have completed

their respective pleadings. The Defendant has not filed any counter-claim forrevocation. However, under Section 107 of the Patents Act, 1970 (hereinafter‘Act’) all the grounds for revocation would also be grounds to resist
infringement of patent. Broadly, the documents are admitted between theparties i.e.,(a) the certificate of registration of patent,(b) an extract from the patent register showing payment of annuities(c) the granted claims and specification accompanied thereto

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(d) the patent prosecution documents (‘filewrapper’)(e) details of the Defendant’s system.
7.

After completion of pleadings and admission/denial of documents, thecounsels for the parties made their opening statements. On the basis of thepleadings and the opening statements, the following issues were framed for
adjudication in the suit:
1. Whether the court has the jurisdiction to decide the issues in the
suit? (onus on Plaintiff);
2. Whether the Plaintiff is the registered owner of the suit patent?
(onus on Plaintiff);
3. Whether the Defendant is infringing the suit patent? (onus on
Plaintiff/onus on Defendant where subject matter of the patent is
a process);
4. Whether the suit patent is invalid in nature and liable to be
revoked? (onus on Defendant)
5. Whether the Plaintiff is entitled to seek an injunction restraining
the Defendant from infringing the suit patent? (onus on
Plaintiff);
6. Whether the Plaintiff is entitled to damages? (onus on Plaintiff);

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Brief findings on the Issues:
8.

Based on the documents filed by the Plaintiff which include print-outs of

Defendant’s website, it is evident that D services are available within thejurisdiction of this Court and thus, issue no.1 is decided in favour of thePlaintiff.

Further, the Plaintiff has placed on record, certified copy of e-

Register which is not denied by the Defendant, thus issue no.2 is decided infavour of the Plaintiff. The Defendant has not filed any counter-claim, and thus
the patent is deemed to be valid. Thus, issue no.4 is decided in favor of thePlaintiff.
9.

The only question that is to be determined is in respect of infringementof patent and whether the Defendants’ system/methods violate any of theclaims of the suit patent and consequential relief thereof. In relation to issue
nos. 3, 5 and 6, the Plaintiff has led the evidence of its expert witness, Mr.
Rajiv Bhatnagar. He has also been cross-examined by the Defendant’s
counsels. The Defendant has not led any oral evidence. Evidence thus stands
concluded on behalf of both parties.
Submissions of the Parties
10.

On behalf of the Plaintiff, Mr. Pravin Anand, Ld. counsel has submitted

that since the patent consists of a method claim, in view of Section 104A of theAct, the onus to prove as to what the Defendant’s method is upon the
Defendant. He submits that since the facts are not disputed by the parties, inrespect of the Defendant’s method, he wishes to proceed straight for

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interpretation of the claims. He submits that the word/expression “means”,
used in the claims would have to be interpreted broadly. The said expression isa ‘nonce word’ which could be used in respect of several physical appliances ordevices. It, thus, would include any particular device which could act as astorage for being the first memory or the second memory. Thus, according tohim, the term is not to be interpreted restrictively but in an expansive manner.
He further relies on Section 10(5) of the Act to urge that the “inventive
concept” in the patent is a solution to a problem that vehicle owners would notremember historical data of selected spots which they intend to visit. The samehas been overcome by the suit patent method, which allows a user to accesspre-saved location data (facility data) for multiple spots, select one such facility
data, and register the same as coordinate data and separately save it. The
coordinate data is then used for the purpose of navigation. This problem which
the patent intends to solve could be achieved in several ways. Thus, theinventive concept can have various embodiments and each of the said
embodiments ought to be deemed to be covered by the claims. He submits thatby the time of the filing of the present patent, use of remote servers and cloudcomputing was quite prevalent, as the same had gained momentum in the 90’s
itself. He cites the example of Amazon web services which used cloud-based
infrastructure services. Thus, according to him, the word “memory” for a
person skilled in the art, on the priority date, would mean an electronic storage
and retention means, from which data could be retrieved upon request.

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11.

Thus, according to Ld. Counsel, the suit patent does not require a firstmemory means to be a portable medium like a CD ROM or a Flash drive which
can be installed inside the vehicle, it could even be a remote server. He finallysubmits that the first and second memory means could both be combined to belocated in the same server as well.
12.

To support the above pleas, Mr. Anand relies upon various rules of claim

construction which are well established in Indian law: (a) That if a claim is clear, the scope of the claim is to be determined by areading of the claim itself, without reference to the content in thespecification.
(b) Only if there is any ambiguity or vagueness in the claims, the patent
specification needs to be looked at.
(c) For interpreting the claims, even the prosecution history is not relevant,if there is no ambiguity in the claims. The terms “first memory means”
and “second memory means” are too clear from the claims and no
external aids are required to interpret them.
(d) The word “means” being a word which can denote a wide range of
devices, is neutral of any particular structure. (Reliance is placed onjudgements passed by the United States Court of Appeals for the Federal
Circuit in Richard A. Williamson v. Citrix Online LLC, (No. 13-1130(Fed. Cir. 2014) decision dated June 16, 2015) and Robert Bosch v.
Snap-On Incorporated, (No. 14-1040 (Fed. Cir. 2014) decision dated
October 14, 2014).

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13.

Further, reliance is also placed on Section 4.4.5 of the CRI Guidelines,

2017 wherein the Patent Office also recognizes that CRI’s are often phrasedwith use of expression “means” to enable conversion of digital signals toanalog signals.
14.

The inventors being conscious of the global trends of digitaltechnologies, limiting of the word “means” to any particular kind of storage
device would not be a correct approach.
15.

The Defendant has copied the main inventive concept i.e. giving

assistance to users in vehicles with information as to their spots of interest andtheir locational information on a map.
16.

The system offered by the Defendant is clearly infringing as all the mainfeatures of the patented system are contained in the Defendant’s invention,
namely:• a terminal within a vehicle with a screen;• stored information of various spots on a map to be recalled on the screen;• storage of information related to a specific spot and registering the samein the computer’s memory for being displayed on the map.
All these steps of the patented method are contained in the Defendant’s system,
hence there is infringement.

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17.

On behalf of the Defendant, Mr. Hemant Singh and Ms. Saya

Chaudhary, Ld. counsels have made their submissions before the Court. The
first submission of the Defendant is that the specification needs to be read inorder to understand the claims as there is no clarity as to the location of the
primary and the secondary means in the claims. Since the patent is for a method
and not a product, the proper way of understanding the method would be withreference to the specification and the detailed description given in thespecification.
18.

It is further submitted that since the method relates to a particular systemand there is no claim for the system itself, the manner in which the claimed
method is to be implemented in the system can only be understood from thespecification. The claimed method is to provide a convenient and cost-effective
car navigation system. The only manner in which the purpose of the patented
method can be understood is by understanding the system where the method isimplemented. The method is not in abstract and goes hand in hand with thesystem. Considering that the installation and maintenance of a remote server
requires enormous investment, the same cannot be considered as cost-effective.
Thus, the patented method is implemented in an integrated system which is acomposite unit within the vehicle itself and neither of the memory means islocated outside the vehicle. The method requires application of various steps
sequentially as is clear from the diagram supplied. The fact that there is a clear
bus line connecting the system itself shows that it is an integrated system
located in one place. It is submitted by Ld. counsel that it is evident from theCase No. _________/2019

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reading of the specification that the purpose of the patented method is to store
facility data in a CD ROM and secondary memory means stored in rewritable
RAM, both fulfilling the objective of improving convenience and providing
cost effective navigation system. Such cost efficiency cannot be achieved byoperating a remote server with constant power backup.
19.

One of the main planks of the Defendant’s case is the prosecution historyof this patent wherein a pedestrian navigation system was cited as a relevant
prior art.

When the said prior art was cited by the Patent Office, thePatentee/Plaintiff made an assertion that the patented method is different fromthe prior art, because the system according to the invention is installed “in thevehicle” and there is constant power supply from the battery of the vehicle.
Since, the Plaintiff itself distinguished its method/system from the prior art byclearly stating that the system is located in the vehicle, the said statement
should be held to be binding on the Plaintiff. It is, thus, submitted that theclaim must be read in a restricted manner or alternatively, the Court ought torectify the claims in order to read them in terms of the prosecution history.
20.

The following legal propositions are urged before the Court by the ld.

counsel for the Defendant:
a. The claim has to be read with the specification and not in isolation, as
held in Biswanath Prasad Radhey Shyam v. Hindustan Metal
Industries, (1979) 2 SCC 511.

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b. Since the term “means” is broad and the patent is a method patent, therules of purposive construction and not literal construction should be
adopted for interpreting the claims. (F. Hoffman-La Roche Ltd. v. Cipla
Ltd., [(2015) 225 DLT 391 (DB)] and Merck Sharp and Dohme
Corporation v. Glenmark Pharmaceuticals [FAO (OS) 190/2013
Decided on 20th March, 2015].
c. Once a Patentee obtains a patent on a narrow reading of the claim, it is
not unfair to bind the Patentee to a narrow construction of the claim.
Furr v. C.D. Truline [[1985] FSR 553] and Merck & Co. Inc. v.
Generics UK Ltd. [[2004] R.P.C. 31].
21.

Thus, it is submitted that the Defendant’s car navigation system

consisting of a remote server does not infringe the suit patent. There arefundamental differences between the Plaintiff’s and the Defendant’s method.
The Plaintiff’s method involves use of secondary memory means located in thevehicle. The Plaintiff’s secondary memory receives its power backup from thecar battery which enables it to register the user data even when the car is notrunning and this enables the user to retrieve the data. However, in the
Defendant’s system, there is only a display terminal in the car with a remote
server being used by various users who are connected to it through theirterminals. The manner of operation, the efficiency and the costs involved in thetwo systems are not comparable. The Defendant’s system is different because
both its primary and secondary means are one and the same i.e. a server unlike
the Plaintiff’s patented system which has ROM and RAM memory, which

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serve as the first and the second memory means respectively. The ROM
memory further ought to be read as a CD ROM as disclosed in thespecification, in order to achieve cost efficiency.
22.

Thus, by reading the claims narrowly, as per the specification, it is clearthat the Defendant does not infringe the suit patent.
Summary of evidence of Mr. Rajiv Bhatnagar
23.

The Plaintiff, during the course of trial by way of examination-in-chiefof its Expert Witness Mr. Rajeev Bhatnagar, was able to establish a person withqualifications in Electronics and Telecommunication such as an Engineer
would be regarded as a person skilled in the art in the field of Car Navigation
System. Such a person, on the date of filing of the patent, had knowledge
relating to cloud computing, and different forms of memories, including
external memory which could include cloud-based memory. Further, such aperson would know that the cost of memory is substantially lesser when put on
a server or on cloud as compared to when it is individually pre-fixed inside avehicle or localized. In view of the same, it was argued by the Plaintiff thatbased on the prosecution history, it cannot be argued that the inventor intended
to claim a very limited localized memory as opposed to decentralized memory,which is also evident from the manner in which the finally granted claims areworded.
24.

The Defendant in cross-examination sought to establish that, the second

memory means which is a RAM was localized within the vehicle, as that wasCase No. _________/2019

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the only manner in which the secondary power source from the battery of thevehicle could be drawn by such memory. The Defendant also sought toestablish that one of the key objectives of the suit patent was to provide aconvenient and cost effective Car Navigation System, which could be achieved
only when both the first and the second memory means were located inside thevehicle.

However, the Expert Witness disagreed with the counsel for the

Defendant, and during the course of his cross-examination clarified that a
server is much more cost effective, and convenient as compared to CD ROM
and RAM separately installed inside a vehicle. He further clarified that even a
server can be configured to have a secondary source of power, which wasclaimed by the Plaintiff to be the inventive feature during the course ofprosecution. Further, even though the Expert Witness admitted that the only
embodiment detailed in the complete specification depicts a composite Car
Navigation System, wherein the display terminal and both memory means arelocated in the same place, and are connected by bus lines which were different
from wireless network system as used in D’s method. However, the Expert
Witness clarified that based on the knowledge prevalent in the art at the time offiling of the suit patent, it would be known to a person skilled in the art that bus
line connections can be replaced with wireless network connections, and boththese would be regarded as being equivalent to each other.
Analysis and Findings
25.

The points that have arisen for determination are as under:

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i.

Whether all the features of the car navigation system as per thesuit patent are installed in the vehicle?

ii.

Even if all the features of the car navigation system are notinstalled in the vehicle, does D’s method satisfies the “firstmemory means”, and “second memory means” of the suit patent?

iii.

Whether P Corporation would be bound by the statements maderelated to the suit patent during prosecution?

iv.

If yes, what would be the effect of the same on infringement
analysis by the Court?

26.

The manner of interpretation of a Specification and its claims is wellsettled. Section 10 of the Act requires a Patentee to give a description of theinvention and thereafter set out the claims which would define the monopoly.
The claims have to be interpreted in the context of the invention and are notalien to the specification. The specification and the claims have to be read as awhole in order to understand the purpose and object of the invention, theexisting prior art, the inventive concept in the invention as also the actual
monopoly claimed. In Biswanath Prasad Radhey Shyam v. Hindustan Metal
Industries, (1979) 2 SCC 511, the Supreme Court had held as under:“As pointed out in Arnold v. Bradbury (1871) 6 Ch. A.
706 the proper way to construe a specification is not toread the claims first and then see what the fulldescription of the invention is, but first to read thedescription of the invention, in order that the mind may
be prepared for what it is, that the invention is to beclaimed, for the patentee cannot claim more than heCase No. _________/2019

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desires to patent. In Parkinson v. Simon (1894) 11
R.P.C. 483 Lord Esher M.R. enunciated that as far as
possible the claims must be so construed as to give aneffective meaning to each of them, but the specificationand the claims must be looked at and construed
together.
The learned trial Judge precisely followed this methodof construction. He first construed and considered thedescription of the invention in the provisional andcomplete specification, and then dealt with each of theclaims, individually. Thereafter, he considered theclaims and specification as a whole, in the light of theevidence on record.”27.

In Lallubhai Chakubhai v. Chimanlal & Chunilal & Co., AIR 1936

Bom 99., the Court held as under:“Patentee must particularly describe and ascertain
the nature of his invention in the specification, as theambit of his invention is circumscribed by the claims.
The construction of a specification is a matter of law
and is for the Court. It must be construed as a whole. A
specification must be construed impartially, and the
Court is generally slow to construe it against thepatentee. But the construction must be reasonable
one.”
28.

The claims in the present case clearly use broad terminology. The term“means” cannot be read in a restricted manner and has to be interpreted in thecontext of the invention itself. It is a fact of which judicial notice can be taken,
as confirmed by the expert witness, that there has been a drastic change in theCase No. _________/2019

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manner in which memory is stored and the devices used therefor. The devices
have undergone constant progression over the years and the physical nature of
the device cannot restrict the word expression “memory means”. The term of apatent being twenty years, if the specification contains an example of a CD
ROM, to restrict the term “memory means” to a CD ROM would be doing
injustice to the invention as the devices that can be used to store memory are
extremely fluid in nature. The said means could include a large server to thesmallest USB/flash drive. In 2002, the inventors could not have restricted theclaims of the suit patent to a first memory and a second memory means whichwere both localized since non-localization of such data was quite prevalent atthat time.
29.

The context of the invention is to provide for a constant dialogue

between the primary and the secondary means, for ensuring that the user does
not need to perform complicated operations to find a location.The intention is
not to just make it just cost-effective but primarily to make the same userfriendly, by allowing the primary and the secondary means to seamlessly
communicate with each other constantly and provide the resultson a display
terminal.
30.

The specification clearly captures the objective/purpose of the invention

as user-friendly - “without performing complicated operations for displaying
service facilities on the map”. Viewed from this perspective, the inventive
concept of the invention resides in the method by which the primary and thesecondary means communicate constantly with each other rather than theCase No. _________/2019

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location or the nature of the said memory means. What is important is how therequired data by the user is thrown up on the terminal by an inter-linkestablished between the primary and the secondary means wherein the stored
data is used for the purposes of displaying the requested data on the basis of the
input received from the user, communicated by the primary means to thesecondary means.The integrated data so acquired, is then displayed on thedisplay terminal. This obviates the requirement for the user to choose, forexample - latitude/longitude coordinates or to know by the user’s memory, thename of the facility etc., The user is able to arrive at his destination on the basisof generic knowledge rather than specific technical detailed knowledge. If the
purpose of the invention is to create such a system and a method to operate thesaid system, any other system which uses an identical or an equivalent method
to produce the same result would be infringing in nature.
31.

The primary and the secondary means are thus not required to beinterpreted in a narrow manner but have to be interpreted purposively in thecontext of the invention and the objective sought to be achieved by the said
invention. As per Section 10(4)(c) of the Act, the claims define the “scope of
the invention”. Section 10(4)(b) makes it clear that the Patentee has to disclosein the specification,“the best method of performing the invention which is
known to the applicant”. This clearly shows that the Patentee at the relevant
point, may have thought that the best method practically feasible and costeffective, would be to use a CD ROM for the primary memory means.
However, the “best method” cannot be construed as “the only method”. The

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scope of the claims is beyond the best method disclosed. The claims have to bethus, interpreted broadly, and the Court would have to take into consideration
the technological development in the relevant art at the time of filing of thepatent in order to determine its scope.
32.

D terminal has a primary and a secondary memory means - both may be

remotely located and even located in the same server. The physical location
does not take away the fact that the server performs the function of twomemory means. The physical location of the system except the terminal beingoutside the vehicle does not take the D terminal outside the claims so long as
the D terminal has the primary means, the secondary means and the terminal.
The navigation system of the Defendant achieves the same purpose using thesame method. The present patent is a method patent and not a patent for asystem. If the patent was for a system wherein each of the components was
defined and restricted, say for example as a CD ROM, the components of sucha system would have been identified and even restricted, to what was disclosed
in the specification. However, since, the patent is for a method, any system
which uses the same method but contain different components, would infringe
the patent, if broadly, the same method is followed without taking into
consideration the location of the components.
33.

The achieving of the object of the invention through an equivalent means

would also constitute infringement by applying the doctrine of equivalents.
This is a well recognized doctrine under Indian Law and has been applied inCase No. _________/2019

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several patent cases. In Raj Parkash v. Mangat Ram Chowdhry, AIR 1978
Delhi 1, the Court held as under:“….Unessential features in an infringing article orprocess are of no account. If the infringing goods are
made with the same object in view which is attained by
the patented article, then a minor variation does notmean that there is no piracy. A person is guilty of
infringement if he makes what is in substance theequivalent of the patented article. Some trifling or
unessential variation has to be ignored.
….
We have seen the viewers marketed by the defendants
and the viewers produced by the plaintiff. The viewers
marked and kept on the record as (1), (1A) Mecorama
and a fourth viewer are definitely objects produced bypiracy of the plaintiff's patent. The defendants havemade certain variations in its viewers but these areunessential; and what the defendants market issubstantially the same thing, as was conceived by theplaintiff. By trifle variations if the effect obtained by
the defendants is the same, and we hold that it is thesame, then according to the rule enunciated in the
Ampicillin case, referred to above, there is a clear
piracy. The idea of the plaintiff which is a novelty isclearly infringed.”Thus, unessential or trifling variations from the patented methods would not
obviate infringement. Location of the primary and secondary means in the car
is not the essential feature of the invention but only one of the means to achieve
the purpose behind the invention. The same purpose, can be achieved using thesame method, by changing the location of the primary and secondary means.

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34.

In so far as prosecution history and file wrapper estoppel is concerned,

the complete details of cited invention 1 and 2 are not available and whether thesaid cited inventions were ever put into practical application is also not known
to the Court. The Defendant has not been able to show as to whether the citedinvention during the prosecution history had the features of the claimed
invention. Mere reliance on a statement made during the prosecution history in
an isolated manner would not suffice to read the invention in a narrow andconstricted manner, in the absence of further details of the cited invention. The
cited invention ought to have been produced before the Court and expert
evidence ought to have been led to show the inventive elements in the citedinvention, which the Defendant has failed to do. On the basis of the available
data about the cited invention, it appears that it was only a navigation apparatus
for pedestrians and the question as to whether the said pedestrian system had
any separate memory means at all is not clear. The cited invention 1 could havebeen a standalone apparatus which had pre-fed information relating to facilities
and in that sense, could have just been an electronic version of a map. Recently,
in Shogun Organics Ltd. v. Gaur Hari Guchhait & Ors. [CS(COMM)201/2017, decided on 14th August, 2019] this Court has held asunder:“This issue is also worded in the negative, and theonus has been placed on the Defendants. The reason
for this appears to be the background in which the
Defendants failed to disclose the process which was
adopted by them. The Court repeatedly directed the
Defendants to disclose their process, which they failed

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to do. The affidavits filed were cryptic and did not
answer the question posed by the Court.
33.
Under Section 104A, whenever the subject
matter of a patent is a process, the Court can direct the
Defendants to prove that the process used by the
Defendants is different from the patented process.
Recently in Communications Component Antenna Inc.
v ACE Technologies Corp. and Ors., CS (COMM)
1222/2018, Decided on 12th July, 2019 this Court has
held that the Defendant cannot withhold its best
evidence, especially if the same is within its own
knowledge. The extract reads as under:“64. It was quite convenient and easy for the
Defendants to produce the beam patterns of
their antenna to argue that they do not
infringe the patent of the Plaintiff. The baredenial being given shows that the Defendants
have deliberately chosen not to produce thebeam patterns. In any event, the claims of theinvention, and the beam patterns attached in
the patent specification, show that the beam
patterns need not be identical to thedrawings accompanying the specification.
Minor variations would not obviate
infringement. Equivalence would also apply.
The preferred embodiments of an invention
are what they say, i.e., they are only the“preferred” embodiments. They are not the
only embodiments. The claims are broader
than the preferred embodiments and have tobe read as such.
65. The technical opinion produced by the
Defendants seeks to limit the Plaintiff's

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patent to the beam patterns contained inparagraph 28 of the plaint, which it cannot
do. The Defendants have not produced any
documents to show that they have followed
any other invention or any other prior art
document, in the construction of theirantenna. The withholding of beam patterns,by the Defendants, leads this Court to draw
an adverse inference against the Defendants,
as the Defendants have withheld and notdisclosed the most crucial aspect of this casei.e., the beam patterns of their antennae.
66. In a patent infringement action, once thePlaintiff,
prima
facie
establishes
infringement, the onus shifts on the
Defendants, to disprove the same. The
complete silence by the Defendants showsthat there is, in fact, withholding of relevant
and crucial information from the court.
During the course of arguments, since thebeam patterns were not produced on record,
it was put to the Defendants if the antenna
could be made available for inspection by ascientific expert appointed by the Court, towhich no positive response was elucidated by
the Defendants. A perusal of the claims,
complete specification, and the beam
patterns read with the two reports by theexperts, placed on record by both parties,
clearly establishes infringement. The
Defendants' expert has not dealt with theissues raised head on in respect of the beam
patterns, but has sought to deflect the issue.
Thus, at this stage the Court has no option

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but to draw an adverse inference against the
Defendants.”
34.
In the present case, the new product sought tobe patented was D-trans Allethrin manufactured with a
new process. The Defendants did not again, lead any
evidence to show why the Defendants’ process is not
infringing. In order to establish the same, theDefendants would have had to:a) disclose their process;b) highlight the differences in the process; andc) show that the product obtained from the
Defendants’ own process has different properties orreactants or ingredients, though it could still be Dtrans Allethrin.
35.
None of this is done by the Defendants. On theother hand, the Plaintiff’s witness has, in his affidavit
shown the manner in which the process used by the
Defendants is the same as that of the Plaintiff by
conducting a HPLC (High Performance Liquid
Chromatography) test.”
35.

On the question of file wrapper estoppel, the settled position is thatstatements made during prosecution are `less useful’ for claim construction. At
best, the Court can look at statements made during prosecution if the same weremade prior to the grant of the claims and not thereafter. In F. Hoffman-La
Roche Ltd. v. Cipla Ltd., [(2015) 225 DLT 391 (DB)], it was held as under:“In the decision reported as 415 F. 3d 1303 Edward
H. Phillips v. AWH Corporation it was held that claims
have to be given their ordinary and general meaning

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and it would be unjust to the public, as well as would
be an evasion of the law, to construe a claim in amanner different from plain import of the terms andthus ordinary and customary meaning of the claim
term is the meaning of the term to a Person Of
Ordinary Skill in the Art as of effective date of filing of
the patent application. In case of any doubt as to whata claim means, resort can be had to the specification
which will aid in solving or ascertaining the true intent
and meaning of the language employed in the claims
and for which the court can consider patent
prosecution history in order to understand as to how
the inventor or the patent examiner understood theinvention. The Court recognized that since prosecution
is an ongoing process, it often lacks clarity of thespecification and thus is less useful for claim
construction. The Court also recognizes that having
regard to extrinsic evidence such as inventor
testimony, dictionaries and treaties would bepermissible but has to be resorted to with caution
because essentially extrinsic evidence is always treatedas of lesser significance in comparison with intrinsic
evidence. In the decision reported as 457 F.3.1284(United States) Pfizer v. Ranbaxy the Court held thatthe statements made during prosecution of foreign
applications are irrelevant as they are in response tounique patentability requirements overseas. The Court
also held that the statement made in later unrelated
applications cannot be used to interpret claims of priorpatent. In the decision reported as 1995 RPC 255 (UK)
Glaverbel SA v. British Coal Corp the Court held thata patent is construed objectively, through the eyes of askilled addressee. The Court also held that the whole
document must be read together, the body of
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monopoly sought by patentee cannot be extended or cut
down by reference to the rest of the specification andthe subsequent conduct is not available to aid theinterpretation of a written document.”
36.

The Patent Office, in view of the cited invention, if it deemed

appropriate, ought to have restricted the claims of the patent on the basis of thegeographical location. The claims themselves having not being challenged in
the present case and there being no restriction in the claims, the Court cannot
import language into the claims so as to restrict or limit them. To read theclaims as the Defendant wants this Court to read, would mean importing oflimitations into the claims which do not exist. The claim would have then readas – “Control method for car navigation system installed in the car….”
37.

The above limitation which the Defendant wants the Court to read into

the claims, being conspicuously absent in the claims, the claims cannot be
restricted.

The Defendant, however, has the option of approaching theIntellectual Property Appellate Board (IPAB) seeking revocation or restrictionin the claims, as has been sought by Ld. counsels for the Defendant. Until then,however, the Court would have to hold that the Defendant’s system infringes
the Plaintiff’s patented system.
Relief
38.

The Court has considered the submissions of the parties as also thepleadings and the documents on record. The expert has given his evidence
which shows that the claims cannot be read in a narrow manner. The patent

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dates back to 2002 and only three years of the life of the patent are left. The
Court while considering the grant of a permanent injunction, has also to keep inmind apart from the infringement analysis, the balance of convenience and theirreparable loss and injury. In the present case, the Defendant launched its
navigation system in 2013, but the suit for infringement has been filed by the
Plaintiff only in 2018. Thus, in the 5-year period, the Defendant has sold its car
navigation system to millions of users across the country. Considering thatthese navigation systems are installed in millions of automobiles which are
currently running, the Court has to balance the equities. The Plaintiff has not
led any evidence as to what is the loss caused to it, however, since the
Defendant’s system is held to be infringing, the Patentee/Plaintiff is entitled tobe reasonably compensated for the said infringement. It is not clear as towhether the Plaintiff also has a successful car navigation system which has
been commercialized or not. The user numbers are not available. A permanent
injunction can be refused under certain circumstances by the Court and keeping
in mind the interest of the consuming public, the Court can mould the relief.
39.

As held in Bard Peripherals Vascular Inc v. WL Gore & Associates,(No. 10-1510 (Fed. Cir. 2012) decision dated February 10, 2012) the Court
can, in place of a permanent injunction direct future royalties to be paid to thePlaintiff for the term of the patent, as deemed appropriate.

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40.

Keeping in mind the above legal position, it is directed as under:(a) The Defendant’s navigation system is held to be infringing of the suit
patent;(b) However, instead of granting a decree of permanent injunction, theDefendant is directed to render accounts of all sales of the infringing
navigation system, in the last five years, within a period of 8 weeks fromtoday.
(c) Since each system of the Defendant approximately costs ₹210 and even
if the Defendant is deemed to be earning 20% to 30% as profits, theprofits of the Defendant per system would be ranging from ₹42 to ₹63.
This Court accordingly deems it appropriate to direct the Defendant to
pay to the Plaintiff a sum of ₹5/- per system as compensation/damages to
the Plaintiff for all past sales.
(d) For future sales, the Defendant shall render accounts on a quarterly basis
and pay the above amount per system. The said amount shall bedeposited with the Registrar General of this Court and the Plaintiff would
be permitted to withdraw the same subject to furnishing aguarantee/security that if the IPAB either restricts the claims or revokes
the patent prior to its expiry, the amount would be refunded to the
Defendant with reasonable interest of 6% per annum.
(e) If no revocation takes place prior to expiry, the security/guarantee shallstand automatically discharged.

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(f) If the deposits directed above are not made, within the time prescribed,
there shall be a permanent injunction restraining the Defendant frommanufacturing, selling, offering for sale or advertising, any car
navigation system including the DK Navigation system, which is
infringing of the Plaintiff’s Patent no. 20190925 granted on 25th
September, 2008.
41.

The suit is decreed in the above terms. Let decree sheet be drawn.

Parties are left to bear their own costs.
PRATHIBA M. SINGH
JUDGE
AUGUST___, 2019

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