Discussion On Claim Construction Through Jay Switches India Pvt. Ltd. Vs Sandhar Technologies Ltd. & Ors. Judgement

Name of the case- Jay Switches (India) Pvt. Ltd. Vs Sandhar Technologies Ltd. & Ors. (2024)

Honourable Judges/ Coram- Hon’ble Mr. Justice Amit Bansal of the Delhi High Court

PLAINTIFF’s CONTENTION:

Plaintiff/ Patentee Company, engaged in manufacturing of automotive components, holds a patent in respect of a fuel cap of a motor vehicle which is able to maintain the required air pressure within a fuel tank and avoid fuel spillage out of the fuel tank during running of a motor vehicle. The Patent was titled “Air Tight Fuel Cap” and was allowed vide Patent Controller’s order dated 27.03.2023. On the basis of the granted Patent, Plaintiff/ Patentee alleged that Defendants’ manufactured fuel tank cap product, being “Model No. COML-13”, was in violation of their statutory rights arising from the Suit Patent.

Defendants are also a leading automotive component manufacturing company which caters mainly to demands of the Original Equipment Manufacturers (OEMs). Apart from having a manufacturing unit, Defendants also have a research centre, aimed at developing automotive solutions so as to provide new technologies and innovative products.

For better understanding of the dispute and the controversy at hand, the main claim covered by the granted patent which highlights the different elements/ components of the claimed fuel cap invention, is set out as under:

“ 1. A fuel cap (1) to be secured intermittently to a fuel filler neck attached to an inlet of a feed oil pipe, comprising:

a cylindrical body (2) comprising a top portion (21), a middle portion (23) and a bottom portion (24), the said top portion (21) being separated from the middle portion (23) by a circular portion (22) and the said middle portion (23) being separated from the bottom portion (24) by a main circular plate (241); 

a body cover (3) encircling the middle portion (23) of the cylindrical body (2), the said body cover (3) comprising a cylindrical trunk portion (31) and a circular plate (32) located on a top end of the cylindrical trunk portion (31), the said circular plate (32) being provided with a pair of anti-rotation projections (323) on a bottom surface thereof;

a turning handle (6) being affixed to the circular plate (32) of the body cover (3) and encircling the top portion (21) of the cylindrical body (2);  a circular seal member (33) accommodated by the bottom surface of the said circular plate (32) of the body cover (3); and

a cylindrical locking member (5) encasing the cylindrical trunk portion (31) of the body cover (3), the said cylindrical locking member (5) comprising a pair of locking projections (52) on an outside surface thereof;

characterized in that each of the said locking projection (52) of the cylindrical locking member (5) is provided with a pair of beams on an inner surface thereof that terminate at a predetermined distance from a bottom end of the locking projections (52), and the said predetermined distance being equal to 10% to 100% of the length of the main circular plate (241) separating the middle portion (23) of the cylindrical body (2) from the bottom portion (24) of the cylindrical body (2).

  1. A fuel cap (1) as claimed in claim 1, wherein the main circular plate (241) comprises of a pair of engagement projections (242) engaged within predetermined distance provided in the locking projections (52).

For convenience reliance is placed on the below diagram with reference numbers forming part of the claims submitted by the Plaintiff/ Patentee:

    Figure 2

Fig-1

       Figure 4

    fig2

           fig3

The controversy arose out of incorrect interpretation sought to be placed by the Plaintiff/ Patentee on scope of Claim 1. The Plaintiff/ Patentee claimed that (referring to Figure 2 above) the pair of locking projections (52) on the outside surface of the cylindrical locking member (5) provides for a pair of beams (53) on the inner surface which terminate at a predetermined distance, which in the case of the granted Patent is to be equal to 10%-100% of the length of the main circular plate (241), which circular plate separates the middle portion of the cylindrical body from the bottom portion of the cylindrical body. The issue in question was as to what constitutes the “predetermined distance” and as to whether the predetermined distance (equal to 10-100%) is to be calculated by including the thickness of the “locking projections” (52) as well – which rests on the main circular plate (241).

jay switches
[Image Sources: Shutterstock]

PLAINTIFF’s CONTENTION:

  1. Relying upon specifications, claims and drawings, the Plaintiff/ Patentee contended that the engagement projections (242) are part of the main circular plate (241) and hence the predetermined distance is required to be calculated by including the engagement projections (242) resting on the main circular plate as well. Thus, the emphasis was on interpreting the claims not just by looking at the reference signs but that also by taking into consideration the description and drawings.
  2. Claim 2 of the Suit Patent describes and specifies what is included in the main circular plate as it clearly sets out that “the main circular plate (241) comprises of a pair of engagement projections (242) engaged within predetermined distance provided in the locking projections (52)”. This was being used to canvass an argument that such definition provided under Claim 2 narrows down the scope of a wider Claim 1 thereby justifying Plaintiff/ Patentee’s interpretation of Claim 1 to mean that the engagement projections have to be taken as an integral part of the main circular plate and hence the predetermined distance has to be calculated by taking into account thickness of the engagement projections (242) as well.
  3. Referring to use of “reference numerals” and importance to be given to such use of numerals during the process of interpreting Claims, Plaintiff/ Patentee contended that such numerals are only meant to be used as identifiers and cannot be used in isolation to the content of the description forming part of the Suit Patent.

On the basis of above contentions, Plaintiff/ Patentee claimed that defendants product was infringing the Suit Patent, since the predetermined distance in defendant’s products – after taking into consideration length of the circular plate, including the thickness of the engagement projections resting on the circular plate – amounted to 66.67% which was within the 10-100% range as specifically set out under Claim 1 of the Suit Patent.

DEFENDANT’s  CONTETNION:

  1. The term “length of the main circular plate (241)” as it appears in Claim 1 cannot be substituted and/or equated with “length of the engagement projections (242)” as both are separately identified features, though connected to one another. It would be clear that the length/thickness of both are not identical and therefore, a person skilled in the art would not consider them interchangeable as far as measurement of thickness is concerned. Also, Claim 1 itself defines that “main circular plate” “separates the middle portion from the bottom portion”, which is only and solely done by the main circular plate and not the engagement projections (242) in any manner as is evident from the bare perusal of the engagement projections (242).
  2. Specifications forming part of the Suit Patent consistently differentiates between the main circular plate and the engagement projections with the Plaintiff/ Patentee consistently determining the 10-100% ratio only by reference to the main circular plate and never using the engagement projection.
  • Even in numbering convention, the Plaintiff/ Patentee has consciously marked the main circular plate as 241 whereas the engagement projections are independently marked as 242. At no point have they been used interchangeably.
  1. Defendants highlighted the admissions and stand taken by the Plaintiff/ Patentee during the entire prosecution history, wherein the Patentee/ Plaintiff had initially described the pre-determined distance (PD) to be “10-100% of the main circular plate (242)”, which was voluntarily amended in January 2021 to ensure that the main circular plate is only identified with the numeral 241 and not 242. While the original claims as filed, did not contain any reference numerals, this was amended to comply with Rule 13(4) by specifically including the reference 241 to identify the main circular plate. Thus, to overcome clarity/definiteness objection in relation to the feature of 10-100%, Plaintiff/ Patentee defined the upper and the lower limit of the range only by reference to the length/ thickness of the main circular plate.
  2. Further, the Plaintiff/ Patentee in response to pre-grant oppositions before the Patent office, has taken a similar stand by claiming that the 10-100% ratio is always measured with reference to the main circular plate 241. In fact, the specific functioning and configuration of the main circular plate 241 (as opposed to engagement projections 242) and the “gap” i.e. distance between the bottom end and beams, was stated to be the inventive concept.

Accordingly, it was contended by the Defendants that their product does not infringe the Suit Patent in as much as in the Defendant’s product, the predetermined distance is 3mm and main circular plate (242) has a thickness of 2.5mm.

THE JUDGMENT

  1. The Ld. Single Judge while noting that in a Patent infringement suit, a core issue that arises is regarding “construction of claims”, it referred to Section 10(4)(c) of the Patent Act which provides that “claims define the scope of the invention” but held that claims of a patent have to be read alongwith the complete specification. Court also relied referred to para 40 of a recent judgement of a coordinate bench of Delhi High Court in the matter of “Guala Closures SPA Vs Agi Greenpac Ltd., 2024 SCC Online Del 3510” wherein this issue of “claim construction” was considered as under:

40. Claim construction is generally the first and foremost exercise carried out in adjudicating patent infringement suits, especially when confronted with products like tamper-evident closures which are based on mechanical features. The same has also been highlighted in ‘Chapter 9: Construction of the Specification and Claims’, in Terrell on the Law of Patents, Eighteenth Edition. As per Terrell, determination of the actual scope of the Claims of a complete specification, is one of the most significant issues, in litigation involving patents. Once the scope of the claims is clarified, questions regarding infringement and invalidity often find swift resolution. Therefore, it has been highlighted that patentees must navigate a delicate balance, as they have to assert their claim in such a way that the Claim is broad enough to cover infringement while not excessively broad to avoid coverage by prior art. On the contrary, it has been highlighted that Defendants, employ a ‘squeeze’ argument, often claiming that if a claim encompasses their activities, it must also encompass prior art. This highlights the pivotal role of claim construction in patent litigation, shaping the foundation for determining infringement and assessing patent validity. The relevant extract from Terrell is set out below:

“Determination of the true construction of the claims of a patent specification, which are to be read in the context of the specification, is commonly one of the most significant issues, if not the single most significant issue, in litigation involving patents.” ”

[Emphasis supplied]

Hon’ble Court, thus concluded and held that:

24. It is a settled position of law that claims have to be read as ordinary English sentences and words cannot be added or subtracted therefrom. A claim has to be understood by reference to the words used therein and not the subjective intent of the patentee. (Please refer Novartis A.G. & Ors. v. Natco Pharma Limited).”

  1. While bearing in mind the interpretation principle that “crux of the invention” is described where the expression “characterised” is used in the claims, the Ld. Single Judge examined the claims of the Suit Patent, more specifically Claim 1, and noted the express words used in Claim 1 wherein it is claimed that “the said predetermined distance being equal to 10% to 100% of the length (l) of the main circular plate (241) separating the middle portion (23) of the cylindrical body (2) from the bottom portion (24) of the cylindrical body (2)”. Single Judge, while interpreting scope of Claim 1 also relied on Figure 2 to arrive at the true meaning of what was covered by the Suit Patent and held as under:

33. A reading of the portions of Claim 1 extracted above shows that the range of 10% to 100% refers to the length of the main circular plate (MCP) (241). The words “main circular plate” in Claim 1 are followed by the numerical reference “241”. When numerical reference “241” is read in juxtaposition with Figure 2 of the invention, it becomes abundantly clear that the numerical “241” is in relation to the main circular plate (MCP). The numerical reference “242” which does not occur in Claim 1 but occurs in Claim 2, refers to the engagement projections (EP). As per Figure 2 above, the numerical “242” clearly indicates the engagement projections (EP).

34. In Virgin Atlantic Airways Limited v. Premium Aircraft Interiors Group Limited5, the England and Wales Court of Appeal (Civil Division) has held that the reference signs aid in the understanding of technical features, however, they do not limit the scope of the claim.

  1. In the present case, as discussed above, the numerical references clearly assist in understanding the technical features of the claim and therefore act as a useful aid for claim construction.
  2. The expression “main circular plate (241)” in Claim 1 is followed by the expression “separating the middle portion (23) of the cylindrical body (2) from the bottom portion (24) of the cylindrical body”, which can only be in relation to the main circular plate (MCP) and not the engagement projections (EP). It is clear from Figure 2 above that it is the main circular plate (MCP) that separates the middle portion of the cylindrical body (2) from the bottom portion (24) of the cylindrical body and not the engagement projections (EP).”
  3. The Ld. Single Judge while rejecting Plaintiff/ Patentee’s contention that the main circular plate is a non-functional part which does not contribute to the invention, referred to the detailed description of the complete specification of the Suit Patent and concluded that “the main circular plate (MCP) (241) has a significant role in the working of the Suit Patent as it serves as a structural component for housing and aligning key elements like the seal ring (4), coiled spring (7), and engagement projections (EP) (242) to enable airtight sealing through interaction with the circular seal member (33)” and that “it also works as a platform for spring compression, facilitating the locking and securing mechanism of the fuel cap”.
  4. While examining the scope of Claim 1, Hon’ble Ld. Single Judge once again referred to the complete specifications to hold that the plaintiff has used the words “main circular plate (MCP)” and “engagement projections (EP)” in the Complete Specification in a separate and distinct manner, wherein the engagement projections (EP) (242) are referred to as attachments to the main circular plate (MCP) (241) for the locking purpose”.
  5. Single Judge also rejected Plaintiff/ Patentee’s contention that Claim 2 has to be read in aid of Claim 1 and that it narrows the scope of wider Claim 1. In doing so it held as under:

“40. A reading of Claim 1 and Claim 2 also shows that Claim 1 does not make any reference to the engagement projections (EP), whereas Claim 2 makes a reference to both the main circular plate (MCP) as well as the engagement projections (EP). Claim 1 does not specify whether the main circular plate (MCP) has engagement projections (EP) or not. However, the dependent Claim 2 clearly envisages the main circular plate (MCP) having engagement projections (EP). Pertinently, Claim 2 does not talk about the range of 10 to 100% and the relationship between the predetermined distance (PD) and the length of the main circular plate (MCP), which is there in Claim 1. Thus, in my considered view, the aforesaid range of proportion given in Claim 1 cannot be read into Claim 2.”

  1. While referring to the amendment of the claims as brought about by the Plaintiff/ Patentee during the prosecution proceedings before the Patents Office whereby in Figure 4 of the Suit Patent Plaintiff/ Patentee had added the letter “l”, the Ld. Single Judge took note of the fact that in its post-hearing written submissions filed on 21.12.2022, Plaintiff/ Patentee had categorically admitted that the length of the main circular plate is clearly labelled as “l” in Figure 4 of the drawings filed alongwith the Patent application. Court also held that subsequently, now in the present suit for infringement, attempts by the Plaintiff/ Patentee to again amend Claim 1 by seeking to delete the letter “l” after the word “length” on the ground of it being a typographical error in the positioning of the reference letter, that too after filing of the written statement by the Defendants, was a belated act on the part of the Plaintiff/ Patentee “to defeat the defence taken by the defendants”. Such conclusion is reinforced by the fact that Plaintiff/ Patentee’s contention that “the length “l” pertains to the length of the main circular plate (MCP)” has been specifically taken note of by the Controller in his order dated 27.03.2023 while allowing the Suit Patent and rejecting the pre-grant opposition. The Ld. Single Judge further relied upon various submissions and admissions made by the Plaintiff/ Patentee before the Patents office during the pre-grant opposition proceedings and concluded that:

52. The aforesaid extract demonstrates the understanding of the plaintiff that expression “length” in the context of a “circular plate” means nothing but its thickness. Therefore, the expression “length” used in Claim 1 would refer to the thickness of the main circular plate (MCP) alone. By no stretch of imagination, can the engagement projections (EP) be considered to be a “circular plate”, and therefore, the expression “thickness” would not qualify the engagement projections (EP). It is also to be noted that the numerical references “241” and “242” have also been used in a functionally distinctive manner in the aforesaid extract”.

The Hon’ble High Court finally held as under:

57. Therefore, I am satisfied that the reference to the ‘length’ of the main circular plate in Claim 1 is to the ‘thickness’ of the main circular plate (MCP) (241) without the engagement projections (EP) (242) referred in Claim 2. Consequently, on a prima facie view, there cannot be any infringement by the defendants in respect of either Claim 1 or Claim 2.

  1. 58. Even assuming a best-case scenario for the plaintiff, the claims in the Suit Patent suffer from an element of ambiguity which is also reflected from the various amendments filed on behalf of the plaintiff. When the scope of claims itself is not clear, the Court cannot conclusively determine the scope of the patent at the stage of consideration of application for an interim injunction. The exact understanding of the claims and their interpretation by a person skilled in the art is a question of fact that requires evidence, including expert testimony, which can only be addressed during the trial.
  2. 59. In view of the discussion above, the plaintiff has failed to make out a prima facie case for grant of interim injunction. Balance of convenience is in favour of the defendants and against the plaintiffs. Irreparable injury and undue hardship would be caused to the defendants if the interim injunction is granted in favour of the plaintiff company.

60. Accordingly, the application for the grant of interim injunction is dismissed and the defendants are relieved from the undertaking given by the defendants in court on 11th May, 2023.”

While dismissing the interim injunction application, the Ld. Single Judge directed the Defendants to maintain complete accounts of the manufacture and sale of the impugned products and file statements of accounts on a half-yearly basis.

Author: Meenakshi Ogra Partner (Consultant) in the Litigation Department at Khurana & Khurana, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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