Calcutta High Court

Guangdong Oppo Mobile ... vs The Controller Of Patents And ... on 13 June, 2023

                         IN THE HIGH COURT AT CALCUTTA
                             SPECIAL JURISDICTION
                                  ORIGINAL SIDE

BEFORE:
The Hon'ble Justice Ravi Krishan Kapur


                             AID NO. 20 OF 2022


       GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD.
                           VERSUS
            THE CONTROLLER OF PATENTS AND DESIGNS



For the Appellant               : Mr. S. Majumdar, Adv.
                                  Mr. Paritosh Sinha, Adv.
                                  Mr. K.K. Pandey, Adv.
                                  Mrs. Mitul Dasgupta, Adv.
                                  Ms. Enakshi Saha, Adv.

For the Controller of Patents   : Mr. Indrajeet Dasgupta, Adv.
                                  Ms. P. Bhowmick, Adv.

Reserved on                     : 19.01.2023

Judgment on                     : 13.06.2023

Ravi Krishan Kapur, J.:


   1. This is an appeal under section 117A of the Patents Act, 1970 (the

      Act) challenging an order dated 24 August 2022 passed by the

      respondent rejecting Patent Application No. 201737035802 filed in

India on 9 October 2017 for an invention titled "CHARGING SYSTEM

AND CHARGING METHOD, AND POWER ADAPTER".

2. The appellant is a leading electronics manufacturer inter alia engaged

in developing, manufacturing and marketing communication

equipment. The major products manufactured by the appellant

include smart-phones, smart devices, audio devices, power banks,

and other electronic products. The appellant has a global presence

and has been granted patent for the subject invention in different

jurisdictions around the world.

3. Briefly, the subject invention relates to a power adapter for a mobile

terminal such as smart phone. The subject invention enables a voltage

with a pulsating waveform (i.e., third voltage with a ripple waveform)

output by a power adapter to be applied to a battery of the mobile

terminal directly, thereby realising miniaturization and cost-efficiency

of the power adapter while prolonging the service life of a battery. The

power adapter has several electronic components including first

rectifier, a switch unit, a transformer, a second rectifier, a first

charging interface, a sampling unit and a control unit. The device

generates a first ripple waveform, thereafter, a second ripple waveform

and eventually a third ripple waveform. The arrangement of the

components and the generation of ripple waveform in multiple stages

enables the elimination of an electrolytic capacitator. The elimination

of the capacitator also helps to reduce the size of the power adapter as

well as reduce the cost of the adapter. Apart from these benefits, the

charger in the subject invention has an additional benefit of

maintaining a moderate temperature by not allowing the build-up of

temperature and thereby allows reliability, safety and service life of

the battery. Such advantages and benefits are achieved by the use of,

inter alia, a first rectifier, a switch unit, a transformer, a second

rectifier, a first charging interface, a sampling unit, and a control unit.

As a result, the voltage with the ripple waveform output by the power

adapter directly applies to the battery.

4. It is contended that the subject invention allows faster charging rate

and lowers cost the while maintaining safety. The arrangement of

components in the subject invention results in the generation of a

ripple waveform of electric current in multiple stages that enables the

elimination of an electrolytic capacitor which tends to generate heat

by constant voltage supply. Instead, the charging system comprises of

rectifiers and charging interfaces resulting in a rippled waveform of

electricity. The elimination of the capacitor allows the adapter to be

smaller and decreases heat emission by making it cost effective.

5. By the impugned order, the patent application has been rejected on

the ground that the same is inter-alia not patentable under section

2(1)(j) and section 10(4) of the Act.

6. It is contended that the impugned order is a non-speaking order

inasmuch as there are no reasons. It is also submitted that the

respondent has failed to appreciate that the objections on the ground

of lack of novelty and lack of inventive steps cannot stem from the

same document. It is also alleged that the impugned order uses the

words "novel" and "inventive" interchangeably without appreciating

the meaning and content thereof. It is also contended that two

additional prior arts D5 and D6 were cited for the first time at the

hearing notice without giving any opportunity to the appellant to

respond or make amendments to the same. The appellant was also

not granted any opportunity to dispute the alleged insufficiency of

disclosure under section 10(4) of the Act with regard to the term

"transformer" which was only raised for the first time at the hearing.

7. The appellant also contends that the respondent has not given any

reasons as to why the prior art D1 to D6 ought to be read together to

conclude lack of inventive steps in the subject invention. In this

connection, the appellant relies on the decisions of J. Mitra v. Kesar

Mediaments, 2008 SCC OnLine Del 255, and Enercon v. Alloys Wobben

([2013] IPAB 87), to contend that there has to be a coherent thread

leading up from the prior arts to conclude that the subject invention is

obvious.

8. Finally, it is contended that no Second Examination Report (SER) was

issued even though the appellant amended their claims after the

objections had been raised in the First Examination Report. Non-

issuance of SER also violates the mandate of section 13(3) of the Act

which obliges the respondent authorities to examine the amended

specification.

9. On behalf of the respondent it is contended that, an application for

patent can only be examined upon a request for examination under

section 11B of the Act. Moreover, the Act neither provides nor

stipulates for issuance of any SER. It is also contended that when the

complete specification of an invention is objected to on the ground of

an anticipation, the Act does not contemplate that each and every

component of the subject invention has to be present in the prior art

documents. It is further contended that the subject invention lacks

technical advancement and that the differentiating claim had been

considered and highlighted by the Controller and compared to the

prior arts. It is also alleged that the amended claims are an

aggregation or rearrangement of existing teachings instead of the

same being restricted to a specific invention. The same is also in

violation of section 10(5) of the Act.

10. The subject application has been rejected by the respondent for want

of novelty. The test for novelty, as formulated in Halsbury's, Laws of

England [(3rd Edition) Vol. 29, at p. 27)] is as follows:

"To anticipate a patent, a prior publication or an activity must contain the whole of the invention impugned; i.e., all the features by which the particular claim attacked is limited."

In other words, the prior art document must disclose the whole of the

invention which enables the invention. Thus, the prior art document

must deal with the subject invention in completeness. An anticipating

prior art must also contain sufficient information to allow the

invention to be put into practice (F. H. & B. Corporation v. Unichem

Laboratories, AIR 1969 Bom 255 at paragraph 15). By the impugned

order, the respondent has failed to demonstrate how the prior art D1

contains all the elements and deals with the subject invention in its

entirety. In finding that the document D1 rendered the subject

invention obvious as well as was as an anticipating document the

respondent has erred in law. The same document cannot be said to be

rendering an invention obvious in combination with other documents

where it is supposed to deal with every feature of the subject invention

and its mode of operation. There are no reasons in the impugned

order which demonstrate why the subject invention lacks novelty.

11. Moreover, the impugned order records that D1 features a fixed voltage

applied to the battery in contrast with a "second rectifier configured to

apply the third voltage with the third ripple waveform to a battery". In

arriving at such conclusion, the respondent has created a mosaic of

the prior arts D1 and D2 and also D1-D6 to conclude that the subject

invention is obvious. While mosaicing in patents is permissible, the

reasons for doing so must be clearly spelt out. Although, D1 was

stated to have all features of the subject invention, on a reading of the

impugned order, I find that the respondent has not been able to

demonstrate how D1 destroys the novelty of the subject invention. In

any event the prior art D1 having been claimed as an anticipated prior

art leading to the subject invention, the same could not have

simultaneously rendered the subject invention obvious when read

with documents D1 to D6. In fact, the grounds of lack of novelty

cannot work in tandem with the lack of inventive steps in opposing

grant of any patent. The tests for novelty and obviousness are

different and cannot coexist in connection with the same document.

Thus, an invention cannot be considered to involve an inventive step if

it is obvious to a person skilled in the art whereas an invention would

lack novelty if a single prior art document contains an enabling

disclosure of the claimed invention. In such circumstances, the

impugned order erroneously finds that the prior art D1 contains all

features of the subject invention whilst also finding that the claims of

the subject invention are obvious when read with D1 to D6.

12. Moreover, any claim passes the test of inventive steps if it discloses a

technical advancement in comparison with the closest prior art and

the features comprising inventive steps are not obvious to a person

skilled in the art (Avery Dennison Corporation v. Controller of Patents

and Designs, 2022 SCC OnLine Del 3659). If several prior art

documents are to be read in combination, there must be some

common thread linking the claim with the prior art documents

obvious to a person skilled in the art. It must be shown that the

skilled person when faced with the claim would turn to some other

citation to supplement the claim. Otherwise, the combined reading of

the prior art documents or mosaicing of the same is impermissible.

13. In Enercon (India) Limited v. Aloys Wobben (ORA/08/2009/PT/CH)

Order No.123 of 2013, it has been held as follows:

"43. The mere existence in the prior arts, of each of the elements in the invention, will not ipso facto mean obviousness. For after all most inventions are built with prior known puzzle-pieces. There must be a coherent thread leading from the prior arts to the invention, the tracing of the thread must be an act which follows obviously. We must apply this reasoning to test if indeed it is obvious, or if it seems to us to be obvious to the person skilled in the art because of what we know now. If it is the latter, it is

hindsight deduction and is not acceptable, but if it is the former, then the patent must go."

Reasons are the links between the facts and the conclusion. Reasons

indicate the basis on which a conclusion is arrived at on a given set of

facts. There is simply no reasoning on this aspect of the matter in the

impugned order.

14. On the question of issuance of the Second Examination Report,

section 13(3) of the Act makes it apparent that upon amendment of

the claims, the amendment application ought to be examined in a

manner similar to the original application. When a complete

specification is amended, such amended specification should be re-

examined and a Report issued in the manner stipulated under section

12 of the Act. In passing the impugned order, there has been a

violation of the statutory provisions in issuing the hearing notice