Patent Showdown: Kubota Triumphs in Jurisdiction Dispute Against Godabari Godabari Agro Machinery
Patents: Section 48(a); Section 20 of CPC, Rule 10 of the CPC
The appeal concerns a patent infringement suit filed by Kubota Corporation against Godabari Agro Machinery and its subsidiaries, alleging that the Defendants’ ‘RUILONG PLUS ++’ self-propelled combine harvester infringes Kubota’s patented technology. The core issue is whether the Delhi High Court has territorial jurisdiction to hear the case, as none of the parties has a physical presence in Delhi. Kubota, through its subsidiary, sells products via over 250 distributors in India and claims the Defendants’ harvester, marketed at a lower price, is infringing its patents.
Plaintiff’s Argument
The Plaintiff’s counsel argued that under Section 48(a) of the Patents Act, the Plaintiff has exclusive rights to prevent others from offering its patented product for sale in India. The Plaintiff presented evidence, including a price quotation from the Defendant’s Sales Manager in Delhi, to establish that the product was offered for sale, which is sufficient to establish jurisdiction.
Defendant’s Argument
The Defendant argues that neither party has a presence in Delhi, and the Plaintiff has not provided sufficient evidence of any sale or offer for sale within the jurisdiction. The quotation was issued by a third-party distributor, Agroharvest, not involved in the case, and the Plaintiff’s “trap purchase” outside Delhi is insufficient to establish jurisdiction. The Defendant also claims the Plaintiff is engaging in forum shopping to create a jurisdictional link. Further, reliance in this regard has been placed on a judgment of a division bench of this Court in Banyan Tree Holding v. A. Murali Krishna Reddy
Court’s Analysis
The Court analyzed the application under Order VII Rule 10 of the CPC, considering the Plaintiff’s specific averments that the product was offered for sale in Delhi. The Court found that the Plaintiff had provided substantial evidence, including an affidavit from the investigator and direct communications with Mr. Singh, which were sufficient to establish that the impugned product was offered for sale in Delhi. The Court distinguished the case from Kohinoor Seed Fields, noting that the Plaintiff’s evidence was more concrete. It also rejected the Defendant’s reliance on Banyan Tree, as the facts were different from those in the current case.
Conclusion
The Court concluded that the Plaintiff had successfully established a cause of action within the jurisdiction of the Delhi High Court. The application to return the plaint was dismissed. Further, the Court ruled that the Plaintiff’s evidence was sufficient to demonstrate that the impugned product was offered for sale in Delhi, and thus the territorial jurisdiction of Delhi was appropriate.
Court Sides with Aquestia, Shutting Down Hydromat Valve Sales
Patents: Section 49, Section 45
In Aquestia Limited vs Automat Industries Private Limited, the plaintiff, Aquestia Limited, holds Indian Patent No. 427050 for a fluid control valve with an asymmetric sealing diaphragm. The defendants, Automat Industries, were accused of infringing this patent with their “Hydromat” valves, which the plaintiff argued were similar. The defendants claimed their product was protected by their own patent, IN’536. The central issue was whether the defendants’ valves infringed the plaintiff’s patent, with the plaintiff seeking an interim injunction to halt sales of the allegedly infringing product.
Plaintiff’s Argument:
The plaintiff, Aquestia Limited, claimed that the defendants’ product infringed its patent (IN 427050), as the defendants’ valve includes key features such as unequal diaphragm areas and path lengths, which aligned with the plaintiff’s patent. The plaintiff challenged the validity of the defendants’ IN’536 patent, arguing it was contradictory to the defendants’ own specification. They also contended that the shape of the sealing bridge was irrelevant to infringement and criticized the defendants’ technical report as flawed and lacking proper testing data. The plaintiff justified the delay in filing the suit due to testing delays caused by the 2023 terrorist attack in Israel.
Defendant’s Argument:
The defendants, Automat Industries, argued that their product was based on a valid IN’536 patent, which was granted after reviewing the plaintiff’s patent as prior art. They asserted that their valve differs in design, including a symmetrical diaphragm and a curved sealing bridge, and operated on distinct principles, such as reducing turbulence and energy loss. They claimed the plaintiff’s suit is a tactic to stifle competition, citing delays in the lawsuit and a lack of evidence to support the plaintiff’s allegations. Additionally, they argued that granting an injunction would disrupt ongoing government contracts.
Analysis and findings
The Court held that the grant of a patent to Automat & others does not defend against an infringement claim, emphasizing that infringement should be assessed by comparing the claims of the suit patent with the impugned product. Upon examination, the Court found that the Hydromat valves’ asymmetric diaphragm, with a larger inlet area, matched the novel features of Claim 1 of the suit patent. The Court rejected the defendants’ argument regarding the curved sealing bridge, noting the suit patent itself allows for curved embodiments. The defendants failed to provide sufficient evidence of non-infringement, leading to the conclusion that the defendants’ product infringed the suit patent, justifying an interim injunction.
Conclusion
In conclusion, the Court found that the defendants’ “Hydromat” valves infringed the plaintiff’s patent (IN 427050), as they incorporated key features of the asymmetric sealing diaphragm outlined in Claim 1. The defendants’ reliance on their own IN’536 patent was dismissed, and their arguments regarding the curved sealing bridge and product differences were not substantiated. As a result, the Court granted the plaintiff’s request for an interim injunction, halting the sale of the infringing valves, in light of the lack of sufficient evidence from the defendants and the potential harm caused by continued sales.
Court Upholds Patent Refusal: Peer-to-Peer Network Invention Lacks Technical Advancement
Patents: Section 59, Section 3(k), Section 117A
In the case of Kroll Information Assurance, LLC vs Tiversa, Inc., the appellant Kroll Information Assurance, LLC filed a patent application (Indian Patent Application No. 8100/DELNP/2007) for a system, method, and apparatus to locate a type of person via a Peer-to-Peer network. The application was initially filed under the Patent Cooperation Treaty (PCT), claiming priority from a U.S. patent.
However, the Indian Patent Office raised several objections, including lack of inventiveness, insufficient claim definitions, and the subject matter being an algorithm or computer program per se, under Section 3(k) of the Patents Act. The appellant responded with amendments, but after a hearing, the Assistant Controller of Patents refused the application, citing that the claims were beyond the original scope, lacked inventive step, and were merely algorithmic in nature without a novel technical effect. The appellant appealed the decision under Section 117A of the Patents Act, 1970.
Key arguments:
The appellant argued that the proposed amendments to the claims were within the scope of the original filing and addressed the technical issue of identifying and securing sensitive data shared on peer-to-peer networks. They contended that the invention combined hardware and software to achieve a technical effect and disputed the prior art (D1) for not disclosing their invention’s key features.
In contrast, the respondent argued that the amendments were unsupported by the original claims, the invention was merely an algorithm without technical effect, and the claimed search method in peer-to-peer networks was obvious, lacking inventive step.
Court’s Analysis
The Court analyzed the proposed amendments under Section 59 of the Patents Act and found them permissible, as they narrowed the scope of the original claims without introducing new matter. However, the Court upheld the Controller’s refusal of the patent application under Section 3(k), determining that the invention was a mere “computer program per se” without any technical effect or enhancement to hardware. The invention, which involved keyword-based searches in a peer-to-peer network, lacked a technical character and did not offer any technical advancement. The Court concluded that the claims fell within the excluded category of algorithms or computer programs and thus dismissed the appellant’s appeal.
Conclusion
The Court concluded that the proposed amendments to the claims were permissible under Section 59 of the Act, as they narrowed the scope of the original claims without introducing new matter. However, it found that the invention claimed in the patent application was not patentable under Section 3(k) of the Act, as it was a mere computer program or algorithm without any technical effect or advancement to the hardware. The appeal was thus dismissed.
F. Hoffman-La Roche AG v. Zydus Lifesciences Limited: Court Denies Disclosure of Manufacturing Process in Biosimilar Patent Dispute
Patents: Section 104A, Section 48
The matter concerns a patent infringement suit filed by Roche Group (‘Plaintiff’) against Zydus Lifesciences Limited (‘Defendant’) over its biosimilar product “Sigrima.” The plaintiffs alleged that the product infringed their patents related to Pertuzumab (IN 268632 and IN 464646). They sought an injunction to prevent the defendant from launching the product, asserting that it fell within the scope of their patents. The defendant countered that Pertuzumab and its variants were in the public domain and that its formulations did not infringe the plaintiffs’ patents. The court directed the defendant to submit its manufacturing process under confidentiality, and the plaintiffs requested the creation of a confidentiality club for reviewing the sensitive information. An interim injunction was initially granted but later dismissed, with the case continuing for further adjudication.
Plaintiffs’ Argument:
The plaintiffs argued that Pertuzumab (sold as Perjeta) is covered by their patents IN’632 and IN’646, with IN’646 specifically protecting the manufacturing process of Pertuzumab and its variants. They contended that the defendant’s product, a similar biologic, was nearly identical to their reference biologic, and thus infringed their patents. The plaintiffs asserted that the defendant’s manufacturing process should be disclosed to the confidentiality club for proper claim mapping, as the process was crucial to determining infringement. They argued that the defendant’s refusal to disclose its process serves no purpose and that no prejudice will result if disclosure is allowed.
Defendant’s Argument:
The defendant argued that the plaintiffs’ application for disclosure was baseless, claiming it as an attempt to access their proprietary process without proving a prima facie case of infringement. The defendant contended that the plaintiffs’ argument on the need for disclosure was misleading, as the court had only directed claim mapping for product patent IN’632, not the process patent. The defendant further asserted that Section 104A of the Patents Act, which governs disclosure, had not been satisfied, as the products were not identical but similar biologics. They argued that similar biologics only share safety, efficacy, and quality, not identical formulations, and thus, there was no justification for disclosure.
Analysis and findings
The court ruled that Section 104A of the Patents Act applies to the plaintiffs’ request for the defendant to disclose its manufacturing process, but only if the plaintiffs can prove that the defendant’s product is identical to theirs, which was not demonstrated in this case. The court emphasized that “identical” means exactly the same, not merely similar, and since the defendant’s product was not shown to be identical to the plaintiffs’ product, Section 104A did not apply. The court also clarified that the Biosimilar Guidelines do not require biosimilars to be identical to reference biologics, only similar in key characteristics, and that trade secrets would be protected during any process disclosure. Additionally, the court rejected the plaintiffs’ reliance on CPC provisions, asserting that the specialized Patents Act prevails over general laws.
Conclusion:
The court concluded that the plaintiffs failed to meet the requirements of Section 104A of the Patents Act, and therefore, no direction could be issued to the defendant to disclose its manufacturing process. The application was dismissed, with the court clarifying that its observations were limited to this application and would not affect the final decision of the suit.
Yatra Online Limited vs Mach Conferences and Events Limited: Delhi High Court Rejects Yatra’s Plea Against ‘BookMyYatra’ Over Generic Term ‘Yatra’
Section 29 & Section 30 of the Trade Marks Act, 1999
In Yatra Online Limited vs Mach Conferences and Events Limited [CS(COMM) 1099/2024], a Single Judge Bench of the Hon’ble Delhi High Court vacated an ad-interim injunction issued against Mach Conferences and Events Limited, restricting them from using the marks bookmyyatra.com and BookMyYatra, citing deceptive similarity with the Yatra Online Limited’s prior marks.
BACKGROUND OF THE DISPUTE:
Yatra Online Limited (“Plaintiff”), one of India’s leading online travel portals operating under the brand YATRA.COM, filed a suit seeking to restrain Mach Conferences & Events Ltd. (“Defendant”) from using the marks “BOOKMYYATRA” and “BOOKMYYATRA.COM” in relation to travel booking services.
The Plaintiff relied on its long-standing use of the mark YATRA since 2006, its multiple device and composite mark registrations, and claimed common law rights and secondary meaning in the word “YATRA.”
The Defendant contended that “YATRA” is a generic/descriptive term meaning “journey” in Hindi, used by numerous travel operators. Moreover, the Plaintiff’s trademark registrations were subject to disclaimers against claiming any right over the term.
FACTS OF THE CASE:
The Plaintiff, registered proprietor of device trademark registrations incorporating “YATRA” and “YATRA FREIGHT” in Class 39, claimed a substantial market presence, highlighting a ₹5,607.57 crore turnover in 2023–24 and a customer base of 15 million, and asserted reputation and goodwill in the travel services sector. The Defendant proposed to launch “bookmyyatra.com” and filed trademark applications for “BookMyYatra” in Classes 9, 39, and 42, conducting a business identical to the Plaintiff’s. The Plaintiff argued that the Defendant’s adoption was dishonest, intended to capitalize on the Plaintiff’s goodwill, and that “BookMyYatra” was deceptively similar to the Plaintiff’s marks. The Defendant countered that “YATRA” is generic and descriptive for travel, hence is not capable of exclusive appropriation. Similarly, the Defendant also contended that the Plaintiff’s own registrations contain disclaimers against exclusivity, as well as that many third parties already use “YATRA,” and that “BookMyYatra,” read as a whole, is distinctive and sufficiently different from the Plaintiff’s marks.
DECISION
The Single Judge Bench of the Hon’ble Delhi High Court allowed the appeal and vacated the ad-interim injunction restraining the Defendant from using the BookMyYatra and BookMyYatra.com marks. The Court dismissed the Plaintiff’s claim that its long use and high turnover granted exclusivity or secondary meaning to “YATRA,” noting that widespread third-party use undercut claims of distinctiveness. It held that Yatra’s own registrations for its device mark in Class 39 were expressly subject to disclaimers denying exclusivity over “YATRA,” which prevents the Plaintiff from now claiming such a monopoly. The marks “BookMyYatra” and “BookMyYatra.com” were found visually, phonetically, and conceptually distinct due to the addition of the prefix “BookMy,” already common in the online travel space; the suffix “.com” was also deemed generic and not capable of conferring trademark rights
CONCLUSION:
The judgment reaffirmed the established principle in trademark law that generic and descriptive terms cannot be monopolized, regardless of the goodwill accumulated by a user. The Plaintiff’s reliance on secondary meaning was rejected because the continued widespread use of “YATRA” by third parties precluded the acquisition of exclusivity. The disclaimers appended to the Plaintiff’s registrations were held to be determinative, serving as effective notice to the public that exclusive rights over the term “YATRA” were not granted. Upon comparing the marks in their entirety, the Court found that the prefix “BookMy” was sufficient to distinguish the Defendant’s marks from those of the Plaintiff, preventing likelihood of confusion.
