bajaj vs tvs patent infringement - case study
TRANSCRIPT
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
BAJAJ AUTO LTD VS. TVS MOTOR Co. LTD
PATENT INFRINGEMENT – CASE STUDY
PREETHI NARAYANAN JUNIOR ASSOCIATE- PATENTS
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Digital Twin Spark ignition technology (DTSi) Vs Controlled Combustion Variable Timing Intelligent (CCVTi)
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
BRIEF SUMMARY OF THE CASE
•In 2007 Bajaj claims patent infringement against TVS at Chennai High Court. Single judge of Madras HC issued a temporary injunction on 16th February, 2008 of the manufacture and sale of TVS Bikes with alleged infringed twin spark
•TVS files a section 106 suit before the Madras High Court, claiming that Bajaj is making “groundless threats of patent infringement” and that the court should declare that TVS does not infringe
•Far from issuing such a declaration, the Madras High Court restrains (injuncts) TVS, albeit to a limited extent (it could execute pending orders, but couldnt take fresh orders for bikes).
•TVS asks for a vacation of said injunction and a Division Bench of the same High Court agrees and vacates the injunction.
•Bajaj then appealed at the Supreme court against the Madras Division bench decision and the supreme Court issued an interim order allowing TVS to manufacture but restrained it from selling till final order is passed
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Bajaj Auto Limited was granted Indian Patent No. 195904 in respect of a patent application titled "An Improved Internal combustion engine working on four stroke principle" with a priority date of 16th July 2002. The said invention relates to the use of twin spark plugs for efficient combustion of lean air fuel mixture in small bore ranging from 45 mm to 70 mm internal combustion engine working on 4 stroke principle.
BAJAJ XCD 125 DTS-Si:
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
CLAIMS FROM BAJAJ PATENT
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
DTSI ENGINE
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
M/s. TVS Motor Company Limited has launched motor bikes of 125-CC on 13/14.12.2007 under the trade mark 'FLAME' powered with a lean burn internal combustion engine of bore size 54.5 mm with a twin spark plug configuration, with the Controlled Combustion Variable Timing intelligent technology (“CC-VTi”) engine which according to the applicant, infringes its patent No. 195904.
TVS FLAME:
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
3- VALVE AND TWIN SPARK ENGINE
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
•According to plaintiff, they were invented a unique technology of using two spark plugs for efficient burning of lean air fuel mixture in a small bore engine in the size between 45mm and 70mm.•In small bore non-racing engines, the need to have more than one spark plus was never thought necessary if there were no advantages of a dual spark plug. The invention was on the application of twin plugs in small bore engine in a specific engine running condition of lean burn, to derive positive merits of improved fuel efficiency and emission characteristics.•Use of two sparks plugs was applicable in the large bore size. In case of the small bore engines were not lean burn.•The novelty of the invention lies on the use of lean burn engines.•The industrial applicability lies as it helped the automobile industry in cutting short the fuel consumption.
PATENTABILITY OF INVENTION
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
The argument forwarded by the respondents, following were the grounds used by the respondents to challenge the patent of the applicants1.The concept of two spark plugs being prior art- produced various published papers2.US patent no: 5320075 titled “Internal Combustion Engine with Dual Ignition for a lean burn”3.Takegawa Cylinder heads and Honda Bros, NC 25E. Kawasaki KZ 1000 SI have configured of two valves per cylinder with twin plugs.4.The third valve arrangement of the respondent is protected by patent licensed to it by AVL List GMBL: According to the respondent, the spark plugs in the engine in its vehicle “FLAME” are arranged in a different way in comparison to what is claimed by plaintiff’s applicant’s patent.
DEFENDANT RESPONSE ON PATENTABILITY OF INVENTION
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
The learned single judge, after considering the submissions of both parties and considering various facets of the case came to the conclusion. The court relied upon the principles in granting interlocutory injunction, including any patent action. The principles are:• The plantiff must prove prima facie case that the patent is valid and infringed;• Balance of convenience is in favor of plaintiff; and•Irreparable loss that may be caused to plaintiff by not granting an order of injunction.
JUDGMENT AND ANALYSIS:
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
Conclusion of prima facie reveals that the product of the applicant (BAL) for which the patent is granted as invention has found a special place in the market. The patent granted to the applicant relates back to the date of application (16 July 2002) or in event from the date of introduction of the product by the applicant, (Bajaj Pulsar “DTS-I Technology”) in 2003 and the said patent is valid for a period of 20 years as per the provision of Patents Act, 1970.
On the other hand, the respondent, who has not objected to the product of the applicant ever since the year the patent application was made, has chosen to file a revocation petition before the IPAB, challenging the patent granted to the applicant for the first time on 24th August 2007. Immediately within six days from the date of filing of the revocation petition, the respondent has chosen to introduce its product, including “FLAME”, which was not taken as bono fide conduct on the part of the respondent.
-- Continued
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com
1. Bajaj was given patent right as it was manufacturing the product for more than 5 years. Thus the patent was valid.
2. TVS has been allowed to sell its bike with Twin Spark Plugs, with a court Receiver being appointed to maintain books of profit.
3. In its interim order, the Supreme Court reiterated that in matters relating to trademarks, copyright and patents, the provision of the Code of Civil Procedure which mandate that civil disputed should be heard on a day to day basis without any adjournments, except in circumstances beyond the control of the parties. It also directed that the final judgment should be given normally within four months from the date of the filing of the suit. The supreme Court directed that the timeline stipulated above be adhered to “punctually and faithfully” by all courts and tribunals in the country.
FINAL JUDGEMENT:
CHENNAI3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,Mylapore,
Chennai - 600 004.Tel: +91 - 44 - 2498 4821
BANGALORE Suite 920, Level 9,
Raheja Towers,26-27, M G Road,
Bangalore - 560 001.Tel: +91 - 80 - 6546 2400
COIMBATORE#1533, Trichy Road,
Coimbatore, India – 641018.Tel: +91 - 422 – 6552921
WEBSITE
www.altacit.com