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Working of the invention playing a role in deciding Balance of convenience
This time Asian Electronics Ltd., referred to as Asian hereinafter, owner of the Indian Patent Application No. 193488 titled “Conversion Kit to change the fluorescent lighting units inductive operation to electronic operation” claimed injunction and consequential reliefs including damages against the Defendant, also referred to as Havells hereinafter.
Mr. Shah, Chairman, Asian, developed an improved conversion kit to change the 4 feet long T8 or T12 from inductive operation to electronic operation without any re-wiring to avoid the problem of flicker while starting and discharge of invisible gas which cause inefficiency in the energy spent and claimed the following features in the first independent claim:
“Claim No. 1.
Conversion kit to change fluorescent lighting units from inductive operation to electronic operation, comprising a pair of sleeve like adaptors which are adapted to be mounted at the ends of a straight fluorescent lighting tube, and a wiring assembly for electrically connecting the adaptors, the structural components forming the electronic ballast being mounted in one or both of the adapters, or being mounted in the wiring assembly.”
Following claims and/or arguments were made by Asian in support of the intended novelty of the invention
ü Patent being granted in 26 other countries
ü Awards being awarded for innovation
ü Publicity on the novelty of the invention giving the invention the due popularity
ü Sales Figures
A claim mapping study by Asian revealed that one of Havells fluorescent lighting unit comprises of all the elements of the claimed subject matter. The learned counsel of Asian argued that the novel and unique features of the Asian products are the two adaptors based on 2 sides which assist in the process of conversion to electronic current from induction and thus minimize flickering which is normally associated with fluorescent lights. The plaintiff also argued that the Defendant had got enough opportunity to oppose the grant of the application.
Havells, on the other hand, contended that the Indian Patent of Asian is completely based on US Patent 4246629 and further claimed that the Plaintiff’s Patent lacked the necessary inventive step as being a mere workshop improvement and mere re-arrangement under S. 64 (1) (d) of the Indian Patent Act. Havells further argued that all indications in the suit are that Asian does not work its patent, and that therefore, the balance of convenience if at all, is against the grant of ad-interim injunction.
If analyzed carefully, claim 1 of ‘629 US patent states the following:
(c) two end caps and means retaining same at respective ends of said housing; and
Two end caps as claimed by the US Patent clearly anticipates the novelty as claimed and proposed by the learned counsel of Asian. Havells also made further arguments relating to working of the invention in India and that the plaintiff had no proven sales in India.
The court also more importantly stated that in Franz Xaver Humer v. New Yash Engineers, ILR (1996) 2 Del 791, a Division Bench ruling of this court, suggests that if the product is imported, or not sold widely in India (not “worked” in India) the court should be cautious in granting injunction. It was therefore held that the plaintiff has failed to establish that the balance of convenience is in favor of grant of an interim injunction. This was further substantiated by no filing of Form 27 by Asian to demonstrate use and/or significant commercialization of the invention in India.
Case No. IA No. 8205/2009 in CS (OS) 1168/2009
About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.