Delhi HC asks patent infringer to deposit 54 crore

The Delhi High Court has directed an alleged infringer, a South Korean company—Ace Technology Corporation—to make an interim deposit of around Rs. 54 crores with the Court’s Registry to continue the sale of products manufactured through the patent technology.

The Court made it clear that in case of non-compliance, the infringer shall be restrained from manufacturing, selling, or offering for sale any such products.

A Bench of Justice Prathiba M Singh passed the orders on a patent infringement suit filed by Communication Components Antenna INC, a Canadian company, in connection with its patent titled “Asymmetrical Beams for Spectrum Efficiency”.

As per the Canadian company, the patent was for an antenna which has an asymmetrical beam pattern and other features as mentioned in its specification. Although the patent is not a standard-essential patent, the Canadian company has licensed it to various parties. In 2017, the Canadian company discovered that the German Company was infringing its patent.

After the suit was filed, the Canadian Company was directed not to offer for sale any such antennae to any cellular operators in India till the next date of hearing. The orders for imports were, however, allowed subject to the filing of the accounts relating to the same.

The plaintiff argued that its patent was novel and its purpose was to achieve greater efficiency without compromising on quality. It was thus submitted that the suit patent was a validly granted patent which introduced asymmetrical beam patterns in split-sector fixed beam antennae.

It was further submitted that although its antenna is described as a “smart antenna” and a large number of them were supplied by its predecessor in India, in recent times, several third parties had started supplies of infringing antennae in India which resulted in an erosion of the plaintiff’s market.

The German company, on the other hand, stated that validity of the suit patent was already a subject matter of another pending litigation before the Court. In that suit, the Court had expressed a prima facie opinion that since there was a credible challenge to the validity of the patent, an injunction could not be granted.

While adjudicating on the issue of “additional limitations” in the US patent with respect to the determination of the true purport, meaning and purpose behind the invention in India, the Court observed that the language of the patent claims in different jurisdictions, after it is granted in various domestic jurisdictions, would usually never be identical.

“Insofar as the sales made during the pendency of the suit are concerned, the total sales are to the tune of $21,835,000, which come to Rs.148,47,80,000, ten percent of which is approximately Rs.14.5 crores,” the court observed, and directed the German company to deposit the Bank Guarantee with the Registrar General of the Court within one month from date of judgment. “If the Defendants do not comply with the above directions within one month, the Defendants shall stand restrained from manufacturing, selling, offering for sale any models of antennae which infringe suit patent number IN 240893.”

Senior Advocate C. S. Vaidyanathan represented the Canadian company while Ace Technologies Corporation was defended by senior advocate Arun Kathpalia.