GENERAL PRINCIPLES OF PATENT INFRINGEMENT RE-ESTABLISHED BY BOMBAY HIGH COURT

In a recent order of Bombay high Court in CTR Manufacturing Industries Limited vs Sergi Transformer Explosion Prevention Technologies Pvt. Ltd, Hon’ble Justice G. S. Patel re-established the general principles of a patent infringement as follows:

Claim Construction

 In a combination patent, the invention cannot be a mere arrangement or rearrangement of previously known integers all functioning independently in a known way. These integers, though all themselves previously known, may be combined in a previously unknown way, acting inter-dependently, each of them essential, to produce a new and improved result. Each of the integers must be essential. If indeed any one of the integers can be taken out without affecting the final result, it is not essential.

Additionally, if a patent claim is overbroad by including every single non-essential and essential addition, then the patent may be prima facie invalid for want of novelty. No person can claim such a monopoly as would result in a bar to future improvements. If the patent is, on the other hand, so narrow that it excludes the addition of another essential integer, then there is no infringement.

Further, where a patent has been granted on the patentee disclaiming a particular integer, i.e., by saying it is not essential to his product, then the addition of that nonessential integer does not, per se, defeat the claim for infringement. It must be shown that the additional integer is essential, required and returns a result that is as or more efficient than that produced by the patent. Adding something superfluous to the essential integers does not defeat an infringement claim. It must be shown that what is added is also essential and that it satisfies the previous tests of interdependency, producing as good a result or a new and improved result. The patent must be read in a purposive manner to determine what constitutes its ‘pith and marrow’.

Validity

 At an interim stage, a Court is not required to examine the validity of a patent so much as its vulnerability; and this is to be tested not on a mere say-so, but with the aid of cogent and persuasive technical and scientific material, including reliable expert opinions and other data.

Further, the fact that a patent has been granted is not wholly immaterial at an interim stage. While the grant is not a complete answer to a charge of prima facie invalidity or vulnerability, it is still a factor to be considered and given appropriate weight.

The speed of grant of a patent is wholly irrelevant, particularly if it is made without a substantiated (and substantial) case on illegality and malafide intentions.

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