Asserting Patent Infringement with the help of Doctrine of Equivalence
The overarching issue in SNPC Machines Private Limited & Ors. v. Mr. Vishal Choudhary revolves around the application of the doctrine of equivalents to determine patent infringement, focusing on whether functional similarities between two competing brick-making machines constitute a violation of patent rights, despite differences in their physical designs and mechanisms.
In April 2024, the plaintiff, SNPC Machines Private Limited & Ors. (SNPC), filed an infringement suit related to brick-making machines against defendant, Vishal Choudhary (Vishal Choudhary), sold under name of Padma Brick Making Machine in the Delhi High Court. The suit sought “permanent injunction” restraining Vishal from using, making, manufacturing, offering for sale or selling or importing impugned brick-making machines.
The suit patent in question is SNPC’s mobile brick-making machine that molds and lays bricks as it moves, controlled by an operator from a cabin. SNPC claimed that Vishal’s machine is doing the same work, in almost the same manner to accomplish the same results as SNPC’s brick-making machine.
However, Vishal contented that there were distinct differences between the two – Vishal’s machine lacked a cabin and steering mechanism, was designed to be towed by a tractor instead of an integrated mobility system like SNPC’s machine and utilized kinetic energy for operation, in contrast to the electrical energy powering SNPC’s machine.
Vishal argued that since their machine did not include every element specified in the patent claims, they did not infringe on the suit patent, invoking the ‘all elements rule’ as a defense. Furthermore, they raised the issue of prosecution history estoppel, stating that SNPC has previously focused only on roller and die assembly matters, which helps in shaping and forming the bricks, whereas now it was also emphasizing the machine’s integrated mobility.
SNPC countered stating that such differences were “trifling and insignificant” and that Vishal’s machine performed absolutely no function while it was stationery, and therefore included wheels to ensure mobility. They invoked ‘the pith and marrow of the invention’ principle and urged the Delhi High Court to not focus only on the “literal infringement”. Furthermore, they urged the Court to apply the “Doctrine of Equivalents”, to check whether the substituted element in the infringing product does “the same function” in substantially “the same way” to accomplish substantially “the same result” (triple identity test). In other words, SNPC claimed that Vishal had merely replaced the integrated mobility of SNPC’s machine with the tractor, to achieve exactly the same result.
The Court concurred with SNPC that the Doctrine of Equivalents should be applied, using the triple identity test, to determine if Vishal’s machine performs the same function in the same way to achieve the same result as SNPC’s product. The doctrine suggests that an invention can infringe on a patented invention if it functions almost the same way and produces a similar result as the patented invention, even if there may be minor differences between the elements or features of the two products. In other words, if the infringing product is equivalent to the patented invention in terms of its functionality, it may still be considered infringing.
Further the Court noted that while there were differences between SNPC and Vishal’s machine, these differences did not detract from the fundamental aspect of the invention – i.e., the mobility to ensure mobility of the assembly, albeit through different mechanisms. The Court concluded that these differences, according to the doctrine of “the pith and marrow”, were integral to the core functionality of the invention. The Court further interpreted that, without “mobility” the Vishal’s machine would serve no purpose considering it had a roller and die mechanism as well, therefore did not absolve them of infringement.
The Court considering all the facts and evidence, submitted granted a interim injunction in favor of SNPC, restraining Vishal from manufacturing and selling brick-making machines similar to the Plaintiffs’ patented brick-making machines. By focusing on the essential functionality of the patented invention, the Court helped protect SNPC against infringement, promoting innovation and fair competition in the market.
This judgment highlights the importance of the doctrine of equivalence in patent infringement cases, where there are two similar products and the question is whether one product performs the same function in the same way to achieve the same result as the patented invention, despite minor differences in their elements.
Delhi High Court on the use of trademarks as keywords in Google Ads Program
Significant changes to benefit patent applicants and owners
The Delhi High Court ruled on two appeals involving Google’s use of trademarks as keywords in its Ads Program, finding that using trademarks as keywords does not inherently constitute trademark infringement, thus upholding Google’s practice in both cases.
Delhi High Court Restricts Sale of Refurbished Goods for ‘Reverse Passing-Off
Reverse passing off is not something that courts encounter every day. It occurs when a defendant purchases a plaintiff’s product, repackages, and sells it under the defendant’s mark or name, resulting in the public coming to associate the qualities of the plaintiff’s product with that of the defendant.
When this adversely affects the goodwill of the plaintiff, it is a reverse passing off. Recently, the Delhi High Court addressed this issue in Western Digital Technologies Inc & Anr vs Geonix International Private Limited.
The plaintiffs, Western Digital Technologies Inc and its subsidiary (Western Digital), manufacture storage devices under the trademarks ‘WESTERN DIGITAL’ and ‘ULTRASTAR’. They sued Geonix International Private Limited (Genoix) for refurbishing and rebranding storage devices, media players, routers, switches, bridges, desktops and solid-state drives (SSDs) and hard disk drives (HDDs), originally manufactured by Western Digital and selling them as new under the trademark ‘GEONIX’.
Upon becoming aware of the violation, Western Digital investigated the activities of Geonix, and the findings confirmed the refurbishment and rebranding of their products by Geonix. It was found that Geonix physically altered Western Digital’s trademarks, serial and model numbers, and other identifiers from the HDDs. Further, they effaced the erstwhile model and serial number on the printed circuit board (PCB) of the HDDs by reformatting the PCB with their own markings. Thereafter, Geonix rebranded and repackaged the discarded HDDs under the mark ‘GEONIX’, and sold these to customers by misrepresenting them to be new and unused HDDs.
Western Digital argued before the Court that this constituted a violation of the statutory rights in their trademarks. Further, they raised the issue of protection of consumer interest from deceptive marketing practices of Geonix. Western Digital demonstrated through technical test reports that despite the reformatting, refurbishing, and rebranding of HDDs by Geonix, Western Digital could still be identified as original manufacturers of the HDDs. This was found when a report was generated by running the HDDs on a device. Based on this evidence, Western Digital argued that Geonix has been unsuccessful in fully erasing the connection between the HDDs and Western Digital, and that, this constituted reverse passing off.
Geonix’s defence that they sell the products under their own brand and that the principle of exhaustion of trademark rights would apply to the case was rejected by the Court. Finding a strong prima facie case, the Court granted an interim injunction to Western Digital and restrained Geonix from altering or selling HDDs bearing the trademarks of Western Digital. The case will now be listed on April 3, 2024.