Monthly Archives: April 2012

Question of claim amendments by patentee in India

We would discuss hereinbelow the various scenarios when the patentee can seek amendment of the specification and claims of his patent. Further this Article would examine as to when and when not the patent amendment should be allowed during pendency of patent infringement suit. The Author, at the end, presents a hypothetical case to raise questions unanswered by Indian courts at the moment.

The statutory provisions containing amendment of patent applications/patents are contained in sections 57 to 59. Section 57 explains that an Application for Amendment can be filed to the Patent Office any time after grant of the patent, subject to the condition that the Controller would not pass any order of refusal or acceptance during the pendency of a patent infringement suit or patent revocation proceedings. Further Section 58 points out that the High Court or Appellate Board instead of revoking a patent in a revocation proceeding may allow the patentee to amend the specification or claims in case the patent is held to be invalid. All these amendments must be by way disclaimer, correction or explanation and without going beyond the scope of the unamended specification (Section 59).

So the two scenarios seem to be clear:

  1. One is when the Patentee can file Application of Amendment at any time after the grant of the patent.
  2. Second is when patentee can amend his specification or claims after Application for revocation is filed against him and his patent (first independent claim) is held to be invalid.

We would now discuss the third scenario that is the amendment by the patentee during the pendency of a patent infringement suit. In one case before the Delhi High Court in 2009, the patentee (plaintiff) filed an application for amendment (under section 58) of claim 1 during pendency of patent infringement suit. (AGC Flat Glass Europe SA Vs Anand Mahajan and Ors) The patentee added words “a sensitizing material, typically tin” in claim 1 on a mirror without copper layer in its coating.

The question was whether this amendment was allowable or not. The defendant contented that this amendment changes the scope of the original invention. On this, the court referred to UK decisions and divided such amendments into two categories: “the first one is a situation where the patentee has been apprised of prior art by an opponent and amendment is undertaken to overcome the prior art; the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent”. The second category did not apply to this case. The amendment was held to be allowable in this case.

The Court pointed that the amendment was within the scope of the invention as the description clearly mentioned the presence of a sensitizing process as one of the three stages in manufacture of mirrors and patentee’s amendment is by way of explanation.

Till now it becomes clear that the Court may allow the patentee to amend his specification or claim during the pendency of infringement proceedings, of course subject to the conditions of Section 59.  However, there are no existing decisions upon certain other facts which I would like to bring here by way of a hypothetical case. Suppose, a patent has been granted to an Applicant in 2008 in India whose equivalent United States patent was granted in 2009. The Indian patent’s first independent claim says,

  1. A composition comprising “A” and “B” in weight percentages of “x to y” %  and “p to q” %.

Consider “A” and “B” as two broad classes of compounds. The dependent claims claim the specific compounds in narrowed concentration ranges.

The first independent in US has been narrowed down by the Applicant to the specific compounds contained in those classes following the rejections of novelty by USPTO in light of the closest prior art Z. The US equivalent’s first claim is:

  1. A composition comprising “A1” and “B1” in weight percentages of “x1 to y1” % and “p1 to q1” %.

Now suppose a competitor company launched a product in India containing the specific compounds A1 and B1. The patentee (patentee) filed a suit for infringement of its patent. The competitor company (defendant) files a counter statement invalidating the patent’s first independent claim in light of the prior art Z. The Patentee then files an application of amendment amending its claim 1 by bringing the claim limitations of dependent claims into claim 1 to overcome the prior art cited.

Now the question is, should patentee be allowed to do this claim amendment at this stage? From our understanding of the precedents, we believe that the patentee should not be allowed to make such claim amendment. Delhi High Court in the previous discussed case clearly referred to UK decisions on claim amendment issues which point that the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent.

In this hypothetical case that we are discussing, it is clear that the patentee had clear knowledge of the prior art Z since the US patent was granted but he did not take any steps to amend the Indian Patent after that. Further, isn’t the patentee under continued obligation under section 8 to keep the Controller updated of the office actions in other countries till the grant of the patent which the patentee failed to do so in this case. The Indian Patent was granted after the US patent grant. I believe the patentee should feel the brunt now for not amending the claim earlier and in this case, the patent should not only be revoked on grounds of anticipation, but also wrongful obtainment of patent Section 64 (1)(c). Further, if such claim amendment is allowed, the patentee, as a precedent, would always get a free hand to amend his claims anytime during the patent life, and to draft the first claim unreasonably broad, knowing fully well of the invalidation actions that can be put on in front of him post the grant of the patent.

About the Author: Meenakshi Khurana, Patent Specialist at Khurana & Khurana, Advocates and IP Attorneys.

Viacom vs. YouTube

Technology seems to have found its place in the courtrooms also, these days. Viacom, an American global mass media company, sued YouTube, a video-sharing site owned by Google on the basis that YouTube had indulged in rampant intentional copyright infringement of videos which were originally owned by Viacom. This suit was for a mind boggling $1 billion.

YouTube, being popular among the masses, gets 800 million users a month and roughly 60 hours of new videos are uploaded to the site every minute. Viacom filed a complaint against YouTube on March 13, 2007, alleging that the later had uploaded the copyrighted material owned by Viacom. Over 150,000 clips of Viacom were viewed more than 1.5 billion times on YouTube including popular shows like South Park, without the permission of Viacom. The allegation included that YouTube did this to earn more revenue through their advertisements and traffic incurred on their website.  The English Premier League, The Rodgers and Hammerstein Organization and the Scottish Premier League later on, were merged in the suit as the other complainants.

In July 2008, during the pre-trial phase, a U.S. District Court for the Southern District of New York ruling came in favour of Viacom, stating that details of all the users of YouTube had to be tracked by them. There was an uproar over this ruling that the users were now exposed and their privacy was infringed upon. However, Judge Louis Stanton was of the opinion that YouTube is not a ‘video tape service provider’ as provided in the Video Privacy Protection Act 1988 so the data of the users is not protected under this Act. However, later, Google agreed to hand over the data of the users to Viacom and the other complainants, but only after making it anonymous. Although, the setback was that the data of the employees of both the parties, were handed over, without any anonymity.

Viacom argued that both YouTube and its owner Google knew about the infringement but they did not do anything about it. Google and YouTube retaliated back saying that they were entitled to ‘safe harbour’ protection under Digital Millenium Copyright Act (DMCA) since they had insufficient notice of the alleged offences. This defense will not be available to someone who derived a financial benefit from copyrighted material if he had the right and ability to control it.

Under the Act, Web hosting companies are not required to keep a track on every file downloaded by their users.  The DMCA is flawed since it does not cover YouTube. YouTube claimed that they did not know about the infringement and that they do not keep a check on the videos uploaded. This is a completely flawed argument since YouTube removes videos which are reported as spam, if they have pornographic content or if the original owner restricted permission for the public at large.

On June 23rd 2010, Judge Stanton decided that , “When YouTube was given notices, it removed the material. It is thus protected from liability” under a provision in the Digital Millenium Copyright Act (DMCA). He further stated that while there was an occasion in 2007 when Viacom sent YouTube a single takedown notice for 100,000 videos and the later took them down by the next day.

While YouTube clearly emerged victorious in this case, this decision followed established judicial precedents that online services like YouTube are protected when they work cooperatively with copyright holders to help them manage their rights online.

Viacom has said that it plans to appeal against this decision.  Maybe then the DMCA will be interpreted in a more liberal manner. You can be sure, that all the online service providers would be watching this case, whenever the appeal happens.

 

About the Author: Ms. Madhuri Iyer, Trade Mark Attorney at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Gucci vs. Guess

Copying has become quite common in today’s times, and especially when a lower priced product or a small company imitates an expensive brand. However, a trademark infringement fight between two top most fashion brands is not something that we usually see.

Back in 2009, Gucci sued Guess for trademark infringement over the stylized initial “G”. The proceedings of the case started before the US district court in Manhattan on Thursday (5’th April 2012) after 3 years and is expected to remain in federal court for weeks. This lawsuit is the biggest fashion fight of its kind since Christian Louboutin sued Yves Saint Laurent over his trademarked red soles. “Gucci” is a registered trademark since 1969 and the brand was first used in 1953.  Guess has been accused of specifically ripping off four designs: Gucci’s green and red stripe; the interlocking “G” pattern; the square “G” and the brand name’s delicate script font.  Gucci has been in apparel business for more than 40 years and extremely popular and one of the most luxurious brands all over the world. Here in this case, the plaintiff does not need to prove the well-known stature of the trademark and any kind of dilution of the trademark Gucci will affect its brand value.

Since Gucci is such an established name, it is fair to assume that people are likely to get confused over the logo “G”. When a prudent person looks at a product from both the two brands with their respective logo on it, it’s difficult to differentiate between the two. The most important argument and allegation in this case is that Guess has blatantly copied the shoe design from Gucci and here in this case Guess could be in trouble.  There is a likelihood of confusion and dilution of the trade mark Gucci and it can be assumed that Guess has designed or copied the logo and design of Gucci to confuse the consumers.

However, the CEO of Guess Inc.  claims that Gucci has taken too long to file a law suit. The counsel for Guess claimed that Gucci cannot claim infringement because the company “sat on its rights” for at least seven years before deciding to sue.

According to Bloomberg Business week reports, Gucci has claimed $124 million in damages for $221 million worth of Guess product infringements.

It’s a battle of two heavyweight designer luxury companies and it’s interesting to know that now companies are ready to spend millions of Dollar in litigation to protect their Trade Marks. It will be interesting to read the final outcome of the case and what the Hon’ble US court decides in this matter. Meanwhile, one can check the design of both the shoes and decide how much similarity is there.

 

 

 

 

 

 

Image Source: http://www.telegraph.uk

About the Author: Mr. Kumar Janmejay, Trade Mark Attorney at Khurana & Khurana and can be reached at: Kumar@khuranaandkhurana.com

 

Setback for Force India

It seems like all is not well in the kingdom of the King of Good Times. Vijay Mallya, who is already facing a host of financial difficulties, with his airlines accumulating losses and statutory authorities putting pressure on the management to pay up the liabilities,has received yet another jolt. His F-1 team Force India lost an IP case against Aerolab SRL, a former designer of Force India cars.

Force India had entered into an aerodynamic development contract with Aerolab SRL in 2008.  The contract was however terminated by Aerolab, following a payment default by Force India in 2009. Aerolab, then started working withTeam Lotus (now Caterham F1).  Force India accused Team Lotus, Aerolab and Lotus Chief Technical Officer Michael Gascoyne (ex Force India Technical Director) of illegally copying Force India Formula One Team’s design from secure files held at Aerolab.  Force India claimed that the Lotus T127 had featured a large number of parts copied from Force India’s design.

Therefore, Force India’s claim for breach of confidence and infringement of Copyright did succeed and they were awarded compensation. Fair enough?

Well, here’s the catch:

All the F-1 teams are bound by the “Concorde Agreement” requiring each team to design almost its entire car apart from the engine, gearbox and tyres. It provides for each team to own the intellectual property rights to its car, and it prohibits the misuse by any team of another team’s confidential information.

Force India alleged that when it parted ways with Aerolab, the latter held substantial amount of confidential information and a number of CAD files that contained access to the designs of Force India’s parts.

Aerolab then joined hands with Caterham F1 and allegedly misused Force India’s design to build a wind tunnel model for them.

Following the publication of Team Lotus wind tunnel model pictures in October 2009, Force India Formula One Team lodged a complaint with the Criminal Court in Italy and subsequently commenced civil proceedings before the Chancery Division of England and Wales High Court, citing concerns in respect of illegal copying of Force India Formula One Team design intellectual property.

Force India contended that the confidentiality obligations in clause 5 of the Development Contract, and in particular clause 5(b), continued after termination, to which Aerolab objected.

It is well-known to all those involved in F1, including everyone connected with the case, that misuse of confidential information attracts severe penalties from the FIA.

The case was heard at length at the High Court during January 2012 with Mr Justice Arnold finding Team Lotus (now known as Caterham F1) and Aerolab liable for copyright infringement and using confidential information respectively and that some parts created using Force India’s confidential information were used on the Team Lotus race cars in the early part of the 2010 season.

Honourable Mr. Justice Arnold ruled that Aerolab had misused certain confidential information as a means of taking a “short-cut” to produce a wind-tunnel model that could begin to be used for testing as soon as possible. However, the court also opined that Force India had come “nowhere near” establishing systematic copying of files and that the misuse mainly consisted of opportunistic copying of CAD files by CAD draftsmen in order to take a short cut.

The court did not find the Chief Technical Officer of Team Lotus, Mr. Gascoyne jointly liable for inducing Aerolab to act in breach of Development Contract.There was no direct evidence of any kind to support the claim that Mr Gascoyne made an agreement that Force India’s CAD files would be used as the starting point for the design of the Lotus model.

The court awarded Force India €25,000 compensation for the accidental usage of a small amount of 2009 data. Since, Aerolab had sued Force India for non-payment of dues for which Force India was ordered to pay a sum of €846,230 to Aerolab, the sum of €25,000 would be set off against this amount.

Another noteworthy aspect of this case is the court’s opinion on “trade secret”. The case referred to was Cross J in Printers & Finishers Ltd v Holloway, (1965) 1 WLR 1, (1965) RPC 239 where it had to be considered whether an ex-employee should be restrained by injunction from making use of his recollection of the contents of certain written printing instructions which had been made available to him when he was working in his former employers’ flock printing factory. In was held:

-“In this connection one must bear in mind that not all information which is given to a servant in confidence and which it would be a breach of his duty for him to disclose to another person during his employment is a trade secret which he can be prevented from using for his own advantage after the employment is over, even though he has entered into no express covenant with regard to the matter in hand. For example, the printing instructions were handed to Holloway to be used by him during his employment exclusively for the plaintiffs’ benefit. It would have been a breach of duty on his part to divulge any of the contents to a stranger while he was employed, but many of these instructions are not really “trade secrets” at all. Holloway was not, indeed, entitled to take a copy of the instructions away with him; but in so far as the instructions cannot be called “trade secrets” and he carried them in his head, he is entitled to use them for his own benefit or the benefit of any future employer.

Force India has decided to appeal against the decision of High Court calling the settlement “totally unrepresentative”, considering the current value of a F1 car somewhere around £15 million.

The UK High Court judgement, in respect of the illegal copying, will now be referred for the consideration of Formula One’s governing body, the FIA, whilst the Italian criminal case against Mike Gascoyne, and others remain pending.

 

About the Author: Mr. Anirudh Sarin, Trade Mark Intern at Khurana & Khurana and can be reached at: Anirudh@khuranaandkhurana.com