India – Analysis of Delhi High Court’s Judgment On Permanent Injunction In ITW GSE APS Vs. Dabico Airport Solutions.
Intellectual Property (IP) rights are the cornerstone of innovation, fuelling continued growth and development in any industry. The true value of the IP rests not only in its creation but also in its enforcement and commercialisation. It would be only through effective enforcement and commercialisation that the innovators get to reap the rewards of their economic and intellectual investment, promoting further innovation and technological advancements. The Hon’ble High Court of Delhi recently adjudicated an application for permanent injunction in ITW GSE APS & Anr. Vs. Dabico Airport Solutions Pvt Ltd & Ors., where the Court also reaffirmed a few principles relating to claim construction, double patenting, and inventive step.
This application was filed by plaintiffs as a part of the suit seeking permanent injunction to restrain defendants from dealing with the impugned products manufactured by defendants and sold to airport authorities, and also from the act of using, making, selling, distributing, advertising, exporting, offering for sale, importing or in any other manner, directly or indirectly, dealing in any product that infringes the subject matter of the plaintiffs’ registered patent bearing number IN 330145, hereinafter referred to as IN ‘145 or suit patent.
Plaintiff no.1, ITW GSE ApS, a Danish affiliate company of ITW, is the assignee of IN ‘145 and has manufactured and supplied PCA units, which are installed under the passenger boarding bridge or mounted on the apron at airports. The suit patent is titled “A Preconditioned Air Unit with Variable Frequency Driving” and relates to a Preconditioned Air (PCA) unit supplying preconditioned air, i.e., heated or cooled air, to an aircraft parked on the ground. The plaintiffs have another patent bearing number IN 310952 (“IN ‘952”), which also pertains to PCA units and has the same priority date as that of the suit patent. According to the plaintiffs, the scope of the suit patent and IN ‘952 are different, primarily because the latter focuses on modularity, which is not the subject matter of the suit patent.
In their application, the plaintiffs submitted that since 2020, the defendants have bid in tenders floated by the Government to install PCA units and have also won tenders at Goa, Hyderabad, and Delhi Airports. However, the technical specifications of the defendants’ PCA units correspond to the claims of the suit patent. Therefore, The plaintiffs had put the defendants to notice of the infringement of the suit patent in the UK and India since 2020 but did not receive a satisfactory response from the defendants. Thereafter, in March 2023, the plaintiffs initiated the pre-litigation mediation with the defendants, but owing to the absence of any progress on that front as well, the mediation failed on 4th September 2023.
Moreover, the defendants interestingly chose not to disclose their products to the plaintiffs, prompting the plaintiffs to file an application seeking inspection of the defendants’ PCA units through a Local Commissioner. However, the plaintiffs’ application was refused by the Court, based on the defendants’ submission that their operation & instruction manuals and the Government tenders’ specifications are sufficient for adjudication on the infringement and that they would stand by these documents, to which the plaintiffs seek to map their claim.
During the Hearing before the Court, the plaintiffs submitted that the objective of the suit patent was to design a PCA unit that automatically adjusts cooling performance based on at least one type of aircraft, ambient temperature, humidity, and cabin temperature. The suit patent aimed to supply preconditioned air using ambient air through multiple refrigeration systems controlled through a central controller, which manages Variable Frequency Drives (VFDs) attached to the compressor. Therefore, the technical contribution of the suit patent is a PCA unit having at least two refrigeration systems, each system having a VFD-controlled compressor connected to a central controller. This allowed the individual compressors to run at different speeds, managing the best and most efficient compressor speed mode. Without the suit patent, multiple refrigeration circuits will operate as per fixed capacity irrespective of their requirement. It also allows management of cooling in the event there is failure of any one refrigeration circuit, by varying the capacity of other circuits.
The plaintiffs further submitted that while the suit patent (IN ‘145) was neutral to modularity, their other patent (IN ‘952) was a modular arrangement in which the refrigeration modules could be removed and readjusted in a modular process. The infringement claimed was qua the suit patent IN ‘145 and not IN ‘952. The plaintiffs argued that they never intended to limit the scope of the claims to modularity, and this was evident from the independent claim 1 of the suit patent, which does not mention modularity. Also, the fact that the complete specification of the suit patent merely elaborated on modular embodiment as an example but did not disclaim a non-modular embodiment substantiates their argument.
The plaintiffs cited various authorities to emphasise that it was improper to import or “read-in” a limitation from the general discussion in specifications, embodiments, and examples. They also relied on various decisions of the Court to assert that patent rights in respect of claims are broader than the embodiments and that the reading of the claim should not be restrictive and limited but should be read purposively. They also emphasised that the categorisation of the claims based on modularity is irrelevant because the claims of the suit patent would be infringed both by a modular as well as a non-modular PCA unit.
On the other hand, the respondent argued that the essential features of the claim indicate modularity, whereas the defendants’ unit is integrated and not modular, and hence does not infringe the suit patent. Moreover, a PCA unit effectively uses the same mechanism as that of a conventional air conditioning system using the conventional refrigeration cycle, which has been known since the 1800s. The defendants relied on multiple prior art documents to argue that the suit patent shall be revoked as the subject matter is non-patentable under Section 3(d) and Section 3(f) of the Patents Act, as it is using the very same technology in a different environment and the claim mirrored a conventional air conditioning unit.
The defendants further argued that there were four essential elements of a PCA unit – plurality, modularity, refrigeration units, and controller. The modularity of refrigeration systems was well-known in the prior art. Modularity was an essential aspect which the defendants did not implement. The refrigeration units involved compressors, which are the basic components in a refrigeration cycle. Furthermore, VFD controllers were well-known before the priority date and were employed in multiple systems.
Particularly on modularity, defendants relied on a prior art WO/1986/000977 (13/2/1986) [“D6”], which discloses both modular constructions permitting additional slave modules to be added to increase the capacity and the ability to manage shutdown of one module using a control circuit. The plaintiffs’ earlier patent, IN ‘952, had modularity, and the suit patent is also essentially modular in scope. Defendants also cited the decision in Allergan Inc. vs The Controller of Patents to assert that the claims would have to be read in the light of specifications and that the claims and accompanying specifications could not be dichotomised. Moreover, considering that the problems in the prior art were cost, efficiency, flexibility, and serviceability, for the suit patent to provide a solution to these problems, it had to be a modular PCA unit with a VFD compressor and a central controller. Therefore, the plaintiffs’ argument that the claims of the suit patent were non-modular is not sustainable.
Defendants also alleged double patenting by the plaintiffs, citing their two patent applications, one resulting in IN ‘952 and the second in the suit patent. According to the defendants, the specifications of the two patents were similar, and they essentially dealt with the same invention, the same implementation, and provided the same solution to the same problem. Therefore, the suit patent should also be revoked under Section 64(1)(j) of the Patents Act for being obtained on a false suggestion or representation. Essentially, it was argued that the plaintiffs engaged in misrepresentation by failing to disclose the suit patent to the Controller examining IN ‘952, considering both patents are substantially similar.
The plaintiff thereafter argued that the main problem being solved by the suit patent was not serviceability but control and management of the life of the compressor and the ability to adjust cooling depending on ambient conditions. The invention in the suit patent was neutral to the issue of modularity, and it was only the cooling modules that were “self-contained”. Since the claim did not limit itself to modularity, it essentially covered all options of modularity and non-modularity.
On the inventive step, the plaintiffs enunciated the defendants’ reliance on 20 prior arts of different technical fields to question the inventive step of the suit patent as a validation of the inventive step of the suit patent. They relied on the judgement in Prism Cement Limited vs Controller of Patents and Designs to reiterate that the greater the number of documents which must be combined to reach the invention, the higher the likelihood that it has an inventive step. The plaintiffs also argued that the defendants failed to identify a person skilled in the art in performing the inventive step analysis for the suit patent. Moreover, the defendants claim that conventional air conditioning was already covered and that it is not sustainable since PCA and HVAC units are not comparable.
The plaintiffs also highlighted that the defendants’ sister concern, Ipalco B.V., filed a similar patent application, i.e., US patent US2014/0102125 A1, wherein the control unit performed a function similar to the suit patent, 2 years after the priority date of the suit patent and was granted protection in the US. The plaintiffs cited the judgement in the Avery Dennison matter as well to argue on the age of the prior art, submitting that reference to an old prior art of conventional refrigeration system cannot lead to an inference that it was obvious. The passage of at least 23 years since the prior art D6 establishes that the invention was not obvious.
On the issue of double patenting, the plaintiffs submitted that the two patents have the same priority date, ruling out the possibility of evergreening. In addition, separate First Examination Reports (FER) were issued by the Controller for both patent applications on the same date, which substantiates that there was not any misrepresentation or suppression by the plaintiffs, and the Indian Patent Office (IPO) was aware of both the inventions.
Lastly, the plaintiffs submitted that the defendants’ contention that invalidity would also be on account of Section 3(d) and 3(f) of the Patent Act was not sustainable since the patent was not a process claim, and it was also not a mere arrangement or rearrangement or duplication of devices functioning independently “in a known way”.
After hearing both the parties, the Court first focused on the claim construction and then on the comparison of the claims with the defendants’ product. The Court acknowledged that the claim construction, in this case, hinged on the issue of modularity of the PCA units and noted that claim 1 of the suit patents does not speak of modularity and focuses on the aspect of the VFD attached to the compressor and the management of various VFD’s through a central controller. Instead, IN ‘952 having the same priority date seems to specifically advert to modularity. The Court, therefore, concurred with the Plaintiffs’ submission that while IN ‘952 focuses on the mechanical arrangement, i.e. modularity, the suit patent relates to the electrical and functional aspects of a PCA unit. The Court also referred to the specification, which specifically provides that other preconditioned air units may be provided in the scope of the appended claims, including ones which are not modular. It is also apparent from the reading of the specification that the predominant aspect of the suit patent is of a compressor being driven by a VFD and details various aspects of how a VFD would control the respective compressors, as well as the central controller configured for controlling the operation.
The Court also affirmed the plaintiffs’ submission that the fundamental principle is not to “read in” or import structural and functional limitations in the claim or cut down or extend the clear meaning or language of the claim by reference to the body of specifications. In contrast, the Court was not persuaded by the defendants’ argument that the purposive construction of the claim would result in interpreting the claimed term “plurality of refrigeration systems” to be modularly interpreted, as that is the only embodiment sufficiently disclosed and enabled in the specification, while the non-modular embodiment was not “enabled”. The Court observed that the claim, along with the specifications, seems to focus on the application of the VFD to the compressor, the variable controlling factor, and the overall central controller. The plurality of refrigeration systems, as claimed, does not in itself assert modularity and, therefore, the claims would have to be seen as granted, and it would be improper to read a critical limitation into the claims. The difference with IN ‘952 is also evident in this regard, where modularity has been specifically claimed.
Further, the Court identified the inventive concept of the suit patent to be that at least one VFD is attached to a compressor in the refrigeration unit of the PCA, supervised by a controller that is configured for variation of the output frequency of at least one variable frequency driver. After analysing the prior art documents, the Court found clear improvement and categorical differences between the said prior arts and the invention in the suit patent. Also, the Court observed that these prior arts are used to combine different elements to somehow demonstrate a lack of inventiveness, which basically is the mosaicking of unrelated documents and is not permissible in inventive step analysis unless the documents are interlinked or cross-referenced.
On double patenting, the Court held that issuance of the FERs for both the suit patent and IN ‘952 by the same Controller and on the same date confirms that the IPO was aware of the two inventions, negating the possibility of any misrepresentation by the plaintiffs in securing the suit patent.
Regarding the infringement, after the comprehensive mapping of the features of the defendants’ product, as could be derived from the operational manual and the defendants’ Goa tender bid, the Court found the features to be mapping with the claims of the suit patent. Moreover, in the absence of any arguments by the defendants to rebut the specific mapping claims, the Court was persuaded, at least prima facie, to accept the claim mapping submitted by the plaintiffs, subject to the final adjudication post the trial.
The Court, therefore, held that the plaintiffs have made out a prima facie case for an interim injunction, and the grounds stated for irreparable harm and balance of convenience are also in favour of the plaintiffs. The Court directed not to displace the already won tenders of defendants, as it may affect third-party rights and may also cause loss to the State Exchequer. The Court, therefore, allowed the interim injunction, restraining the defendants from manufacturing, selling, promoting, distributing, and dealing with the contentious PCA unit that infringes the IN’145 patent. Further, the defendants were directed to disclose their turnover from the existing deployment of their infringing product within a period of 4 weeks.
While this judgement primarily decides on the issue of interim injunction, it also reiterates essential principles of claim construction, double patenting, and inventive step analysis, making it a critical decision for consideration by the stakeholders. All these aspects must be considered by the applicants/patentees along the course of prosecution of their applications and enforcement of the patents, ensuring successful commercialisation of their innovation. Such judgements serve as a beacon of light for the applicants/patentees navigating the lanes of IP protection and commercialisation and, in turn, foster a more conducive IP framework in the country.
