Delhi DB raises the bar of burden of proof on the Defendant to establish a credible challenge

A bench comprising of Justice BD Ahmed and Justice Sanjeev Sachdeva recently passed an order granting an injunction in a patent matter. The DB reversed an order of Justice Manmohan Singh who had denied the injunction.

The Court has also hinted at a presumption of validity of the patents holding that the grant of the patent by the IPO and the USPTO heightens the burden for establishing a credible challenge (see point IV. below)

The principles laid down by the Division Bench are culled out below:

  1. The principles governing patentability of an invention have been summarized as under:
    • it must be the inventor’s own discovery;
    • it should not be a mere verification of what was already known before the date of the patent;
    • it is a manner of new manufacture and includes an improvement and an allied invention;
    • must also be useful;
    • not only the art, process or manner of providing, preparing or making an article but also the article prepared or produced by the manufacture can be patented;
    • should be more than a mere workshop improvement;
    • the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before;
    • a combination of old, known integers may be so combined that by their working inter-relation they produce a new process or improved result;
    • mere collection of more than one integer or things, not involving the exercise of any inventive faculty, would not qualify for the grant of a patent;
    • there must be novelty in the mode of application and the novelty must show invention;
    • the new subject-matter must involve “invention” over what is old;
    • must involve something which is outside the probable capacity of a craftsman;
    • it must not be the obvious to a skilled worker, in the field concerned,
    • it must not be a natural suggestion of what was previously known;
    • Prior public knowledge of the alleged invention would disqualify the grant of a patent and prior public knowledge can be by word of mouth or by publication through books or other media;

     

  2. Merely because the prior art and the subject patent use the same term for a feature does not necessarily mean that the feature is the same. The said term may have two different meanings in the prior art reference and the subject patent. For the invention to be anticipated, the feature disclosed in the prior art must pertain to the same concept as claimed in the patent.
  3. The entire specification and teaching of the prior art must be considered while determining patentability. Mere reference to the abstracts of the prior art documents without considering the teaching of the prior art in the detailed description is erroneous.
  4. The Indian Patent Office and the United States Patent Office have granted the patent and have not found that the patent is obvious in view of the cited prior art. Since these expert bodies have found the patent to be non – obvious, the burden of proof on the Defendant to establish a credible challenge is even greater.

Presumption of validity of patent clarified

In another significant development, the Delhi High Court in their decision in Telefonaktiebolaget LM Ericsson (Publ) v Mercury Electronics & Anr. CS(OS) 442/2013 has held that the burden to prove invalidity squarely falls upon the Defendant (party claiming invalidity) since it is their assertion. Assuming no evidence is led with respect to invalidity, the Defendant would lose. Section 114 of the Evidence Act creates a presumption of validity of the suit patent which was granted in the common course of public business under the provisions of the Patents Act.

The Court further held that the reliance placed by the Defendant on the case of Biswanath Prasad Radhey Shyam is misplaced holding that “… Bishwanath was premised on Section 13(4) of the Patents Act, according to which there is no presumption of validity of a patent only to the extent that no liability shall be incurred by the Central Government or any other officer thereof in connection with the grant of patent.”