In the case of Itw Gse Aps & Anr. v Dabico Airport Solutions Pvt Ltd & Ors, the plaintiff, ITW GSE ApS (ITW) filed a suit seeking a permanent injunction against Dabico Airport Solutions Pvt. Ltd (Dabico) to prevent Dabico from dealing in products that allegedly infringes ITW’s suit patent.
The suit patent in question pertains to a Pre-Conditioned Air (PCA) unit supplying, heated or cooled air, to aircraft parked on the ground. Specifically, the invention involves a compressor with a Variable Frequency Drive (VFD) in multiple refrigeration systems of the PCA unit, allowing the power of the compressors to be varied. ITW supported its claims by noting the international recognition and nationalization of their patent, which has been granted in several major jurisdictions including the European Union, United States, and Japan. Additionally, ITW highlighted its extensive installations of PCA units across Indian airports such as Mumbai and Bengaluru.
ITW alleged that Dabico’s PCA units, as described on their website, infringed on Claim 1 of ITW’s European patent application. In their correspondence, Dabico continued to evade questions on how their PCA units infringe the suit patent and submitted a bid to tenders floated by the various Indian government for installation of PCA units. ITW initiated pre-litigation mediation after Dabico won tenders for PCA units at several airports in India, arguing that Dabico’s units matched the technical specifications of ITW’s patent claims.
Dabico, on the other hand, argued that their product was non-modular, unlike ITW’s patented PCA unit, and that their manuals and tender specifications were sufficient to prove non-infringement. They contended that the patent was not patentable under Sections 3(d) and 3(f) of the Patents Act, 1970, arguing it was merely a new use of a known apparatus or an arrangement of known devices functioning independently. Furthermore, they challenged the validity of ITW’s patent on multiple grounds, including obviousness and double patenting, claiming that the combination of specific technical features in ITW’s patent was already known in prior art and did not contribute any novel or inventive aspect to the field. They also accused ITW of double patenting, alleging that ITW had filed two patents with similar specifications to cover the same invention.
Dabico chose not to disclose their product details, arguing that their manuals and the tender specifications were sufficient to prove non-infringement. They submitted that their product was non-modular, unlike ITW’s patented PCA unit. Dabico presented a chart to support their claim, comparing the technical features of their PCA units with ITW’s patent. They argued that their product did not infringe upon ITW’s patent, as the chart allegedly showed significant changes such as differences in the design and operation of the refrigeration systems. However, the Court found that Dabico’s comparison did not convincingly demonstrate a lack of infringement.
ITW refuted these claims by clarifying that their suit patent covered both modular and non-modular embodiments and that their patent claims did not require modularity. They demonstrated that the suit patent focused on the use of VFDs in PCA units for efficiency, while another patent dealt with modularity aspects, allowing for easier assembly and disassembly of refrigeration modules. ITW also argued that the suit patent did not merely cover a new use of a known apparatus or an arrangement of known devices functioning independently but represented a novel and inventive technical solution. Additionally, ITW claimed significant financial losses due to Dabico’s alleged infringement, amounting to approximately $6 million in sales revenue.
The Court meticulously examined the claims on several aspects:
- Examination of Claims: The Court meticulously examined the claims, assessing whether the specific technical features of ITW's patent were indeed present in prior art and whether the combination of these features was obvious to someone skilled in the field. The Court found that the specific combination of features in ITW's patent was not present in the prior art, and thus the patent was upheld as novel and non-obvious. The Court also stated that hindsight mosaicing would not be permitted for inventive assessment.
- Evaluation of Double Patenting: The Court evaluated the allegations of double patenting by comparing the specifications and claimed scope of the two patents. The Court concluded that the two patents addressed different aspects and provided distinct technical solutions, dismissing the allegation of double patenting.
- Principles of Patent Infringement: The Court applied the principles of patent infringement, including the mapping of essential elements and the doctrine of equivalents. This involved a detailed comparison of the suit patent's claims with the elements of the defendants' PCA units. The Court found that Dabico's comparison did not convincingly demonstrate a lack of infringement and thus determined that Dabico's PCA units did infringe on ITW’s patent.
- Validity of the Patent: Dabico challenged the validity of ITW’s patent on multiple grounds, including obviousness and non-patentability under Sections 3(d) and 3(f) of the Patents Act. The Court dismissed these claims, noting that the suit patent presented a novel and inventive technical solution and was not merely a new use of a known apparatus or an arrangement of known devices. The patent was found to be valid and enforceable.
Based on its findings, the Court issued a preliminary injunction against Dabico, prohibiting future manufacturing, selling, promoting, and distributing of the infringing PCA units. Furthermore, the Court also asked Dabico to disclose its turnover from the sale of the infringing products within four weeks, under seal.
However, despite finding Dabico’s products infringing ITW’s patent, the Court allowed Dabico to continue with their airport deals, noting the public interest in maintaining operational efficiency and avoiding disruptions at airports. The Court ordered Dabico to compensate ITW for damages incurred due to the infringement, with specific details of the compensation to be determined in further proceedings.
The Court’s ruling highlights that comprehensive patent claims, which cover all possible embodiments, are crucial for protecting your intellectual property against infringement. This case serves as a strong reminder to patent owners to ensure their patents are well-prepared to defend against challenges of obviousness, lack of inventive step, and double patenting.