Madras High Court
(Ora/2/2021/Pt/Ch) vs Wheels India Limited on 3 April, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:922
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Order reserved on 15.11.2024
Order pronounced on 03.04.2025
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
(T) OP(PT) No.60 of 2023
(ORA/2/2021/PT/CH)
M/s.STEEL STRIPS WHEELS LIMITED,
Village Somalheri/Lehi, P.O.Dappar,
Tehsil Derabassi, Distt.
Mohali-140506, Punjab. ... Petitioner
v.
1. WHEELS INDIA LIMITED
Padi, Chennai-600 050, India
Address for service in India:
Senthil Kumar N INTEPAT IP SERVICES Pvt. Ltd
176 Indra Complex, Sarakki Main Road, JP Nagar,
Ist Phar Bangalore 560 078.
2. The DEPUTY CONTROLLER OF PATENTS & DESIGNS
Patent Office Intellectual Property Building
GST Road, Guindy, Chennai-600 032
India ... Respondents
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PRAYER: This Transfer Original Petition (Patents) filed under
Sections 64 of the Patents Act, 1970, praying to (a) Revocation of the
Patent No.269220 in-toto, granted on October 12, 2015 in respect of
Indian Patent Application No.2492/CHE/2007 under section 64 of
the Patents Act, 1970; (b) Leave to file further evidence; and (c)
Award cost to the Petitioner.
For Appellant : Mr.Adarsh Ramanujan
Mr. Tarun Khurana & Ms.R.Hemavathi
for M/s.Khurana and Khurana
For Respondents : Mr.T.K.Bhaskar
Mr.P.Aravind
Ms.Pranaya Dayalu for R1
Mr.M.Karthikeyan, SPC for R2
ORDER
Background
The first respondent was granted Patent No.269220 (the Patent)
on 12.10.2015 by allowing application No.2492/CHE/2007, which
was filed on 01.11.2007. The grant was in respect of the invention
titled “Vehicle Wheels Having Non-Constant Thickness Rims”.
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2. By this petition, the petitioner seeks revocation of the Patent
under Section 64 of the Patents Act, 1970 (the Patents Act). In the
petition, the petitioner has raised four grounds of revocation. These
grounds are that the invention lacks novelty; the invention does not
involve either a technical advance or involve any inventive step; the
complete specification does not sufficiently and fairly describe the
invention and the method by which is to be performed; and that the
scope of the claims of the complete specification are not sufficiently
defined or such claims are not fairly based on matters disclosed in the
specification.
3. The assertions in the petition were refuted in the counter
statement of the first respondent. The first respondent asserted that
the claims satisfied the test of novelty because none of the cited prior
arts contain the whole of the invention. The first respondent also
contended that there are marked differences between the claims in
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the invention and the disclosures made in the three cited prior arts
(D1 to D3). The first respondent also stated that a person skilled in
the art (PSITA) would not arrive at the claimed invention on the basis
of disclosures made in D1 to D3. The averments with regard to lack
of clarity were denied by stating that claim 1 clearly describes the
location of the cylindrical section as being between the inner
transition section and inner bead seat. As regards claims 8 and 11, the
contention that these claims lack clarity in respect of location of the
cylindrical section was denied by stating that the cylindrical section
in these claims is between the outer flange and the outer bead seat of
the rim as per Figure 5 of the claims and page 11 of the specification.
4. Based on the pleadings, this Court framed the following
issues:
(i) Whether the Petitioner is a 'person interested' in terms of Section
64 of the Patents Act.
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(ii) Whether the invention under Indian patent No. IN 269220 lacks
novelty?
(iii) Whether the invention under Indian Patent No. IN 269220 is
obvious and/or does not involve an inventive step?
(iv) Whether the complete specification of Patent IN 269220 does not
sufficiently and fairly describe the invention and the methods by which such
invention is to be performed?
(v) Whether the scope of any claim of the complete specification of
Patent IN 269220 is not sufficiently and clearly defined or whether any
claim of the complete specification is not based on matters disclosed in the
specification?
(vi) Whether Indian Patent IN 269220 is liable to be revoked as per
Section 64 of the Patents Act, 1970?
(vii) Whether the petitioner is entitled to the relief claimed?
(viii) Whether the parties are entitled to any other relief?
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Counsel and their contentions
5. Oral arguments on behalf of the petitioner were advanced by
Mr.Adarsh Ramanujan, learned counsel, assisted by Mr.Tarun
Khurana. Oral arguments on behalf of the respondent were advanced
by Mr.T.K.Bhaskar. Mr.M.Karthikeyan, learned SPC, appeared on
behalf of the second respondent. Both the petitioner and the first
respondent filed written submissions.
6. The first contention of learned counsel for the petitioner was
that the petitioner qualifies as a “person interested” in terms of
Section 64 of the Patents Act. By referring to the judgment of the
Supreme Court in Aloys Wobben and another v. Yogesh Mehra and Ors.
('Aloys Wobben'), [2014] 15 SCC 360, particularly paragraph 21 thereof
read with Section 2(1)(t) of the Patents Act, he submits that the
expression 'person interested' is defined inclusively so as to even
include those involved in research in the relevant filed. He also
placed reliance on paragraphs 6 and 10 of the judgment of the
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Intellectual Property Appellate Board in Sankalp Rehabilitation Trust
v. F. Hoffmann-la Roche AG and another(' Sankalp Rehabilitation'), 2012
SCC OnLine IPAB 167. By pointing out that even the narrower
expression “person aggrieved” was construed liberally in Hardie
Trading Limited and another v. Addisons Paint and Chemicals Ltd.('Hardie
Trading')(2003) 11 SCC 92, learned counsel contended that the
expression “person interested”, which is undoubtedly wider in
ambit, should receive a wide construction.
7. As regards the petitioner, he submitted that the petitioner is
carrying on the business of designing and manufacturing
automotive wheels. After further submitting that this is self evident
from the name of the petitioner, he also pointed out that the
petitioner is active in research and development in this sector and
was granted several patents such as IN 258809, EP 327565 and BRP
110046622-4. Apart from the granted patents, he submitted that
Patent Application Nos.1653/DL/2012, 1654/DL/2012,
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1753/DL/2010 and 2457/DL/2009 are pending. In view of the
aforesaid, learned counsel concluded his submissions on this issue
by submitting that the petitioner certainly qualifies as a “person
interested” for the purpose of prosecuting the petition under Section
64 of the Patents Act.
8. Before referring to the grounds of revocation, learned counsel
provided an overview of the nature of the Patent. After stating that
the invention relates to the design of the profile of the rim, he
submitted that rims and discs are known components of wheels. In
fact, he submitted that it is part of common general knowledge that
the disc is attached to the rim. In this connection, he referred to the
standardization of configuration of the rim profile by way of the
European Tire and Rim Technical Organization (ETRTO) standard.
After pointing out that the impugned Patent claims to resolve the
problem of fatigue failure due to cyclical stresses, he submitted that
the impugned Patent comprises 17 claims. Of these claims, he stated
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that claims 1 to 8 are independent product claims and claims 9, 11
and 13 are independent process claims.
9. With this background, learned counsel proceeded to deal
with issue No.5, which pertains to whether the scope of any claim of
the complete specification of the Patent is not sufficiently and clearly
defined or whether any claim of the complete specification is not
based on matters disclosed in the application. His first contention on
this issue is that the claims suffer from lack of clarity with regard to
the location of the cylindrical section. By relying on the judgment in
Nautilus Inc. v. Biosig Instruments Inc. ('Nautilus'), 572 US 898 at page
12, he submitted that the claim in a patent application would be
construed as lacking in clarity, especially if it lacks clarity in relation
to an essential feature. Because the monopoly claim of the first
respondent is in relation to the thickness of the cylindrical section
relative to other sections, such as the inner transition section, the
outer transition section and the centre well section, he contended
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that the location of the cylindrical section is an essential feature of the
monopoly claim.
10. By starting with claim 8, learned counsel submitted that the
first respondent relied on the reference numeral 520 to identify the
location of the cylindrical section. By referring to the judgment in
Lufthansa Technik AG v. Astronics Advanced Electronic Systems and two
others ('Lufthansa Technik'),[2022] EWCA Civ 20, particularly
paragraph 37 thereof, he submitted that claim construction cannot be
undertaken by relying on the reference numeral. Specifically, he
pointed out that it was held in the cited judgment that reference
numerals help orient the reader as to how to read the map by
holding it up in the right way, but it cannot be used to identify a
location on the map. By applying the said principle, if reference
numeral 520 were to be disregarded, learned counsel submitted that
claim 8 is completely silent on the location of the cylindrical section.
Without prejudice, on a demurrer, he submitted that Figure 5
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suggests that reference numeral 520 is at a tri-junction where the disc
is attached to the outer bead. According to learned counsel, the tri-
junction point is not cylindrical in shape and cannot be construed as
the cylindrical section.
11. With regard to claim 1, he submitted that the plain
language of the claim suggests that the cylindrical section is located
between the inner transition wall and the inner bead. By further
submitting that there is no reference in the entire specification,
including the figures, as to the existence of multiple cylindrical
sections, learned counsel submitted that there is no support for the
cylindrical section being located between the inner transition wall
and the inner bead. As regards claim 11, he states that the plain
language states that the cylindrical section is located between the
centre well section and the inner transition section. Once again, he
submits that such location is completely unsupported by the
specification. He also submitted that the well section is the
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depression on the rim profile and is certainly not cylindrical. In view
of the complete lack of clarity and the inherent contradictions
between the claims and the complete specification with regard to the
location of the cylindrical section, learned counsel submitted that the
Patent is liable to be revoked.
12. With reference to the significance of fair basing, learned
counsel relied on Van Der Lely NV v. Ruston's Engineering Company
Limited, [1985] RPC 461, at pages 8 and 9 of the report, for the
proposition that the statutory stipulation of fair basing is intended to
ensure that the scope of the claim does not cover prior art. According
to learned counsel, fair basing was followed in modern patent law in
the UK, as is evident from Biogen Inc. v. Medeva PLC ('Biogen') [1997]
R.P.C. 44 at pages 48, 49 and 50 to 51 and later by the UK Supreme
Court in Regeneron Pharmaceuticals v. Kymab Ltd.('Regeneron') [2020]
UKSC 27, at paragraph 55.
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13. With this backdrop on fair basing, learned counsel turned to
claim 13. By referring to the plain language thereof, he submitted that
it covers every method for making a wheel having a non-constant rim
thickness using the spin forming method and joining the disc
thereafter. After pointing out that spin forming is disclosed in prior
art and that it is standard to attach the disc to the rim, learned
counsel submitted that the only feature that could allegedly
differentiate claim 13 is the non-constant rim thickness. While the
other claims of the Patent and the complete specification limit the
monopoly claim to a rim of a vehicle wheel where the thickness is
highest in the cylindrical section relative to the thickness in the
transition section and the centre well section, by contrast, he
contended that claim 13 is not limited in that fashion.
14. As regards claims 1, 8, 9 and 11, he reiterated that the
location of the cylindrical section is not supported by the
specification and that even the reference to numeral 520 is misleading
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because it identifies a different location from that disclosed in the
above claims.
15. Mr.Adarsh Ramanujan proceeded to address arguments on
Issue 4 which relates to whether the complete specification of the
Patent fails to sufficiently and fairly describe the invention and the
method by which such invention is to be performed. On this issue, he
placed reliance on the judgment of the House of Lords in Kirin-
Amgen Inc. and others v. Hoechst Marion Roussel and others('Kirin-
Amgen'), [2004] UKHL 46, at paragraph 126, wherein it was held that
in cases of serious ambiguity and where the claim lacks clarity with
regard to a central/essential feature, the claim will ipso facto fail for
lack of sufficiency. Since the claims lack clarity on the location of the
cylindrical section, which is an essential feature, he submitted that
the claimed invention is liable to be revoked on account of ambiguity.
He distinguished the judgment of the Court of appeals in Anan Kasei
Co. Ltd. v. Neo Chemicals and Oxides Ltd Limited and another [2019]
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EWCA Civ 1646 (Anan Kasei), paragraphs 22 and 23, in this regard, by
pointing out that the Court of Appeals concluded that some
uncertainty at the edges or the fuzzy boundaries of a claim will not
automatically invalidate the invention for lack of sufficiency.
According to him, the said principle will not apply to the present case
because it only applies in situations where the claim uses words of
approximation such as 'about', 'approximately' or when ranges are
specified in relation to certain parameters.
16. As regards issue 2 pertaining to lack of novelty, learned
counsel submitted that claims 8 and 13 and claims dependent thereon
lack novelty. With regard to claim 8, by comparing the same with
prior art D1, learned counsel submitted that prior art D1 shares the
same field of technology. He also pointed out that it addresses the
same problem of optimizing the weight of the wheel while
maintaining the strength thereof. He also pointed out that D1
discloses a wheel with non-constant thickness of the rim, and that
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the thickness is highest in the flange parts relative to the thicknesses
of the disc close fitted part, the drop parts, bead seat parts and the
side wall parts. According to him, it cannot be said that the
impugned patent is novel merely because it uses the expression
cylindrical section, which is not found in D1. He also submitted that a
comparison of the problem that the impugned Patent and D1 set out
to resolve and any differences in such regard cannot be the sole basis
to conclude that the impugned Patent is novel.
17. By comparing prior art D3 with claim 13, learned counsel
contended that claim 13 is lacking in novelty. In this connection, he
submitted that the general presumption is that the steps of a method
claim are presumed to be non-sequential. For this proposition, he
relied on the judgment in Interactive Gift Express Inc. v. Compuserve
Inc. 256. F. 3d 1323 (Interactive Gift Express) at inner page 8, and
pointed out that this presumption is intended to benefit patentees
because it prevents an infringer from circumventing the patent by
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merely changing the sequence of steps. As regards the reliance by
the first respondent on Mantech Environmental Corp. v. Hudson
Environmental Services Inc. and another, 152 F.3d 1368, learned counsel
submitted that the presumption that a method claim is non-
sequential can be rebutted only if the language of the claims itself
requires the method to be performed in a specific sequence.
According to him, the impugned Patent and, in particular, claim 13,
does not contain any disclosure or recital that it is required to be
performed in a specific sequence.
18. Revocation for lack of inventive step was dealt with
thereafter by learned counsel. On this issue, he submitted that
Section 2(1)(ja) of the Patents Act imposes two requirements, namely,
technical advance or economic significance and inventive step. After
further submitting that both D1 and D3 state that non-uniform
thickness is a mechanism to optimize wheel weight while
maintaining the strength thereof, he submitted that the underlying
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idea is that thickness should be increased in areas of maximum stress
and reduced in areas where stress is less. According to him, there is
clear teaching to this effect both in D1 and D3. Consequently, he
submitted that the impugned Patent does not disclose any technical
advance or economic benefit over D1 and D3.
19. According to learned counsel, the above argument also
applies to claims 1, 8 and 11. By stating that the PSITA would be a
researcher/practitioner in the field of rim making, he submitted that
deciding on the areas of the wheel rim, which should be thicker or
thinner, on the basis of the stress likely to be imparted to those areas
falls within the ordinary course of development of a PSITA equipped
with common general knowledge. With regard to this principle, he
relied upon the judgment of the Supreme Court in Bishwanath Prasad
Radhey Shyam v. Hindustan Metal Industries [1979] 2 SCC 511
('Bishwanath Prasad') at page 517.
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20. Without prejudice, he submitted that prior arts D2 read with
D1 render claim 13 obvious. According to learned counsel, the only
difference between claim 13 and D3 is that the disc is joined in claim
13 after formation of the rim, whereas the disc is joined before
formation of the rim in D3. Since there are only two realistic options
in this regard, learned counsel submitted that it would be obvious to
PSITA.
21. Before concluding, learned counsel refuted the contention
that the petition is liable to be rejected in view of the lack of expert
evidence. By relying on the judgments in Rockwater v. Technip France
SA and another, [2004] RPC 919 ('Rockwater') at paragraph 11 to 13,
and Glaverbel SA v. British Coal Corporation, [1993] R.P.C. 90,
paragraph 6 at internal page 25, he submitted that expert evidence
cannot be relied upon for purposes of reaching any conclusion with
regard to obviousness. At best, according to him, expert evidence
may be used only to assist the Court with regard to background
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technology and scientific concepts or terms. Therefore, in the case at
hand, he submitted that expert evidence was unnecessary since the
matter boils down to claim construction and an examination of
whether there is clarity in the claims and whether the claims are
novel or obvious over cited prior arts.
22. In response to these submissions, Mr.T.K.Bhaskar opened
his contentions by stating that the first respondent is one of the
largest wheel manufacturers in India. At the outset, he submitted that
the problem identified and resolved by the invention is dealing with
fatigue failures by using a wheel with a rim of non-constant
thickness.
23. With this preamble, learned counsel first addressed the
issue of whether the petitioner qualifies as a 'person interested' by
referring to the pleadings in the petition, counter statement and
rejoinder. By referring to the judgment in Aloys Wobben and the
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judgment of the Delhi High Court in Ajay Industrial Corporation v.
Shiro Kanao Ibaraki City, AIR 1983 Del 496, he submitted that the
expression 'person interested' is broad in amplitude, but is dependent
on the facts and circumstances of each case. Therefore, he submitted
that the onus was on the petitioner to adduce evidence to establish
that it falls within the scope of the expression 'person interested'.
Upon denial of the petitioner's assertions in this regard, he submitted
that the petitioner was under an obligation to establish that it is a
'person interested' by submitting documents to substantiate such
assertions, and that the petitioner failed to do so.
24. On this issue, he also submitted that the principle laid down
by the Hon'ble Supreme Court in Muddasani Venkata Narsaiah v.
Muddasani Sarojana, [2016] 12 SCC 1288 (Muddasani Narsaiah), is
inapplicable because the first respondent cannot be expected to have
any knowledge about the petitioner's asserted involvement in wheel
making or the further assertion that the petitioner has obtained
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patents. In those circumstances, he submitted that the first
respondent was fully justified in denying the assertion and putting
the petitioner to strict proof thereof. By relying on the judgments of
the Hon'ble Supreme Court in Gopal Krishnaji Ketkar v. Mohamed Haji
Latif and Ors. AIR 1968 SC 1413 and Anil Rishi v Gurbaksh Singh, AIR
2006 SC 1971, he submitted that pleadings do not qualify as evidence,
far less proof.
25. He proceeded to distinguish the judgment in Sankalp
Rehabilitation and Hardie Trading by pointing out that Sankalp
Rehabilitation related to a life-saving drug and the initiation of
proceedings by a non-governmental organization, which had been
set up for the benefit of HIV-afflicted persons. Therefore, he
concluded his submissions on this issue by stating that the petition is
liable to be dismissed at the threshold in view of the petitioner's
failure to establish that he is a 'person interested'.
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26. Without prejudice to this contention, he addressed
arguments on issue 5 relating to lack of clarity. After pointing out
that claims 1, 8, 9, 11 and 13 are independent claims, he first referred
to claims 1 and 9. In these claims, he submitted that the thickness of
the cylindrical section is greater than the thickness of other sections.
He also pointed out that the centre disc is joined to the rim adjacent
to the centre well section. If the claim is examined along with Figures
3 and 4, he submitted that the claims are clear and do not suffer from
the alleged lack of clarity.
27. As regards claims 8 and 11, he pointed out that the centre
disc is joined to the rim adjacent to the cylindrical section. By
referring to Figure 5, he submitted that the location of the cylindrical
section is evident therein. He also referred to the complete
specification and explanation with regard thereto in the second
paragraph at page 95 of the typed set filed by the petitioner. As
regards claims 11 and 13, he submitted that these are method claims.
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He refuted the contentions of learned counsel for the petitioner with
regard to the location of the cylindrical section in claim 8 by pointing
out that the invention provides for two configurations, whereby the
cylindrical section in claim 8 is at the place where the centre disc joins
the rim. By further submitting that Figure 5 corresponds to claim 5,
he contended that the location of the cylindrical section would be
clear to a PSITA.
28. With regard to the reference numeral 520, learned counsel
submitted that the claims and the specification disclose that reference
numeral 520 denotes the cylindrical section where the thickness is
more than the centre well section, the inner transition section and the
outer transition section. As regards claim 13, learned counsel
submitted that a bare reading of claims 14 to 17 and the reference
numerals would lead to the conclusion that the claim relates to the
formation of a rim of varying thickness, as claimed in claims 1, 8, 9
and 11, by spin forming and thereafter joining the centre disc.
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29. Learned counsel proceeded to deal with issue 4 relating to
the alleged lack of sufficient disclosure. After pointing out that all the
elements and the working of claims 1, 8, 9, 11 and 13 are disclosed in
the specification from pages 95 to 100 of the petitioner's typed set,
learned counsel submitted that claims 1 and 9 are based on Figures 3
and 4 and the working is disclosed and explained in the
specifications at pages 96 to 101 of the petitioner's typed set. As
regards claims 8 and 11, he submitted that they are based on Figure 5
and the working is disclosed and explained in the specification in the
second paragraph at page 101 of the typed set. Likewise, according to
him, claim 13 is based on Figure 2 and the working is disclosed and
explained in the specification at pages 99 to 101 of the petitioner's
typed set.
30. For reasons aforesaid, learned counsel submitted that the
judgments in Regeneron and Biogen are of no assistance to the
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petitioner. In this regard, by relying on the judgment of the House of
Lords in Generics UK Ltd. and others v. H. Lundbeck A/S, [2009] UKHL
12, particularly paragraph 26 to 28 thereof, learned counsel submitted
that Biogen dealt with a case where there were a large number of
embodiments. By contrast, he submits that the present invention
discloses the best method of performing or working the invention. By
relying on the judgment of the Court of Appeals in No-fume Limited
v. Frank Pitchford Company Ltd., [1935] 52 RPC 231 ('No-Fume')at page
238, learned counsel submitted that precise description is not
necessary. By relying on Anan Kasei, at paragraphs 22 and 23, learned
counsel distinguished Kirin-Amgen by contending that it dealt with a
case where there was conceptual uncertainty. By further relying on
the judgment in Unwired Plant International Ltd and another v. Google
[2016] EWHC 576 (Pat), learned counsel submitted that Kirin Amgen
was distinguished in paragraphs 157 to 160 thereof.
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31. As regards the contention that expert evidence is
unnecessary, by relying on Molnlycke AB v. Proctor and Gamble Limited
and others [1994] RPC 49 (Molnlycke), learned counsel submitted that
the primary evidence in such matters is that of an expert witness as to
whether, in such expert's opinion, the relevant step would have been
obvious to a PSITA. He also pointed out that the burden of proof is
on the petitioner in this regard.
32. With regard to alleged lack of novelty [issue (ii)], by relying
on the judgment of the Bombay High Court in Farberwerke Hoechst
Aktiengesellschaft Vormals Meister Lucius & others v. Unichem
Laboratories & others ('Farberwerke'), AIR 1969 Bom 255, learned
counsel contended that the petitioner can succeed with regard to the
objection on the ground of lack of novelty only if it discharges the
onus of showing that the prior publication contains the whole of the
invention. With this backdrop, by referring to claim 8 vis-a-vis D1,
learned counsel submitted that D1 does not teach a wheel comprising
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a rim of non-constant thickness and centre disc attached to the rim as
claimed in the present invention. He further submitted that the disc
fitting part is not characterized as the thickest in D1, wherein the
flange portion is the thickest. Likewise, by comparing D3 and claim
13, he pointed out that the centre portion is first attached to the pre-
formed rim in D3. By contrast, he submitted that the centre disc is not
attached during wheel formation in the impugned Patent. Therefore,
he submitted that the objection on the ground of lack of novelty is
untenable.
33. As regards the alleged lack of inventive step (Issue (iii)),
learned counsel referred to the judgment of this Court in Rhodia
Operations v. the Assistant Controller of Patents and Designs, 2024
MHC:449, wherein the steps in obviousness analysis were set out. By
comparing D1 with claims 1 and 8, learned counsel pointed out that
the problem resolved by D1 is arriving at an optimal balance between
weight and strength. By contrast, learned counsel submitted that the
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problem addressed by the impugned invention is to resolve the issue
of fatigue failure caused due to cyclical loads. He also pointed out
that the thickness in the flange portion is highest in D1, whereas the
cylindrical section is of highest thickness in the claimed invention.
Consequently, he submitted that D1 does not teach, motivate or
suggest a wheel with a rim of non-constant thickness, wherein the
disc fitting part is thicker relative to the other parts.
34. By comparing D2 and claim 13, learned counsel submitted
that D2 addresses the problem of bead seat eccentricity, which is
completely different from the problem addressed by the impugned
Patent. As regards claim 13 in comparison to D3, as stated earlier,
learned counsel submitted that in D3, the centre disc is attached to
the rim pre-form and spin forming is done thereafter. Since spin
forming is done in the impugned Patent prior to the attachment of
the centre disc to the rim, learned counsel submitted that D3 teaches
away from the impugned Patent.
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35. Before concluding, learned counsel submitted that the Court
is empowered to amend the specification under Section 58 of the
Patents Act instead of revoking the patent. For this proposition,
learned counsel referred to and relied upon several judgments
including the judgment of this Court in Galatea v. The Controller of
Patents and another, ('Galatea') 2024:MHC:1802 and the judgment of
the Division Bench of the Delhi High Court in Sukesh Behl v.
Koniklijke Philips Electronics,('Sukesh') 2015 (61) PTC 183 (Del).
Discussion, Analysis and Conclusion:
Issue (i):
36. The first issue that falls for consideration is whether the
petitioner qualifies as a 'person interested'. The expression 'person
interested' is defined in Section 2(1)(t) of the Patents Act as follows:
“(t) 'person interested' includes a person
engaged in, or in promoting, research in the same
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field as that to which the invention relates.”
The above definition discloses that the expression has been defined
inclusively and not exhaustively. In Aloys Wobben, the Supreme Court
concluded that the expression 'person interested' would embrace any
person with reasonable and tangible interest in the matter.
Effectively, this expression is wider than the expression “person
aggrieved” in other intellectual property statutes but narrower than
the expression “any person” in Section 25(1) of the Patents Act. The
petitioner is an entity under the name and style of “Steel Strips
Wheels Limited”, and this corporate name is, at a minimum,
suggestive of the nature of business. In the revocation petition, the
petitioner asserted that it is engaged in the manufacture of wheels
and has applied for and obtained patents relating to automotive
products.
37. The petitioner also provided information on granted and
applied for patents along with particulars such as patent or
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application number. The information provided is sufficient for cross-
checking the veracity and controverting, if necessary, on the basis of
data in the public domain. The petitioner is a listed company and,
consequently, apart from information provided in the petition,
substantial information about the petitioner is available in the public
domain. The 1st respondent is admittedly engaged in the automotive
wheel industry as one of the largest players. In these facts and
circumstances, as held in Muddasani Narasiah, it is insufficient for the
first respondent to merely deny knowledge of the petitioner's
business and put the petitioner to strict proof thereof.
38. The key policy objective underlying the enabling of both
pre-grant and post-grant challenges under the Patents Act is that an
unjust monopoly should not be permitted to be created and, if
allegedly erroneously created, any person interested should have the
opportunity to establish the charge that an invalid monopoly was
created. The entry barrier for such purpose should be set at an
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appropriate level. Neither so low as to encourage busybodies with no
tangible interest nor so high as to deter and impede those with
reasonable interest in the matter. Hence, the formulation of the
reasonable and tangible interest standard. Upon applying such
standard, I conclude that the petitioner fulfils the requirements of a
'person interested'.
Issue (v):
39. Issue (v) pertains to the alleged lack of clear and definitive
scope of the claims and the alleged lack of fair basing thereof on the
disclosures in the complete specification. This ground of challenge to
the Patent is founded on Section 10(5) of the Patents Act, which reads
as under:
“The claim or claims of a complete specification
shall relate to a single invention, or to a group of
inventions linked so as to form a single inventive
concept, shall be clear and succinct and shall
be fairly based on the matter disclosed in the
specification.” (emphasis added)
The text in bold font above prescribes and imposes on a patent
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applicant the obligation to ensure that the claim or claims of a
complete specification are clear and succinct and fairly based on
matters disclosed in the specification. If this stipulation is not
complied with, a revocation petition may be filed under Section
64(1)(i) of the Patents Act, which the petitioner has invoked and reads
as under:
“(1) Subject to the provisions contained in this
Act, a patent, whether granted before or after the
commencement of this Act, may be revoked on a
petition of any person interested or of the Central
Government or on a counter-claim in a suit for
infringement of the patent by the High Court on
any of the following grounds, that is to say -
(i) that the scope of any claim of the complete
specification is not sufficiently and clearly defined
or that any claim of the complete specification is
not fairly based on the matter disclosed in the
specification;”
40. Mr.Adarsh Ramanujan relied on Kirin-Amgen to submit that
if there is lack of clarity on a central/essential feature, the claims
would ipso facto suffer both from lack of clarity and sufficiency. On
the contrary, Mr.Bhaskar relied on Anan Kasei and contended that if
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there is uncertainty at the edges or boundaries, such fuzziness does
not automatically invalidate the claim for lack of clarity or
sufficiency.
41. Before proceeding to examine the specific objections and
relevant claims, by way of preamble, it is pertinent to point out that,
as in the case of all texts with legal implications, claim construction
should be undertaken on the basis of text read in context. A
distinction between claim construction and the construction of most
other legal texts is that claims are typically replete with terms of art
drawn from the field of invention. Therefore, while construing these
terms of art, the meaning that the skilled addressee would place on
these terms should be borne in mind. In claim construction, the text is
the language of the claims and the context is the complete
specification, including the drawings therein. Extrinsic evidence is
resorted to, if required, to aid in understanding the technical issues
and terminology while recognising that the claims and complete
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specification are the primary sources for claim construction.
42. Since the claims define the scope of monopoly, claim
construction, in a nutshell, is gleaning the scope of each claim from
text and context. The reference to and reliance on contextual material
is for purposes of understanding the meaning of the text of the claim
concerned, and not for expanding or whittling down the scope
thereof. Hence, in my view, use of terminology such as purposive
construction compounds confusion and is best avoided. Reference
may be made profitably to principles laid down in Biswanath Prasad
and Jasper Motors Pvt. Ltd. and another v. The Proprietor, Basantree
Batter Operated Rickshaw and others, 2018 SCC Online Cal 4785, both of
which were cited at the bar. While the principles governing claim
construction have evolved over time, I concur substantially with the
principles formulated by the UK Supreme Court in Actavis v. Eli Lilly,
2017 UKSC 48, in this regard, and proceed with analysis on such
basis.
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43. The petitioner's objections that the scope of the claims of the
complete specification are not sufficiently and clearly defined and
that the claims of the complete specification are not based on matters
fairly disclosed in the specification are based on the alleged lack of
clarity in respect of the following: location of the centre well section
in claims 1, 8, 9 and 11; location at which the centre disc joins the rim
in claims 1 and 9; location of the cylindrical section in claims 1 and 9;
location of the cylindrical section in claims 8 and 11; and location at
which the centre disc joins the rim in claims 8 and 11.
44. Given that claim 9 is the method claim corresponding to
product claim 1 and, likewise, claim 11 is the method claim
corresponding to product claim 8, it becomes necessary to test these
objections against each set (i.e. claims 1 and 9; and 8 and 11) of the
independent claims of the impugned Patent.
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45. Independent claims 1 and 9 are set out below:
“1. A wheel for a motor vehicle, said wheel
being adapted to receive a pneumatic tire, said
wheel comprising a rim (300) having a non-
constant thickness and a center disc (240),
wherein said rim (300) comprises:
A center well section (330), said center well
section (330) having a base and two sidewalls, said
center well section (330) further having a center
well section thickness; an inner bead seat (310) for
receiving a bead on a side wall of a tire; an outer
bead seat (320) for receiving a bead on an another
side wall of a tire; an inner transition section (340)
joining said center well section (330) and said
inner bead seat (310); an outer transition section
(350) joining said center well section (330) and
said outer bead seat (320); a cylindrical section
(520) between said an inner transition section
(340) and said inner bead seat (310), said
cylindrical section (520) further having a
cylindrical section thickness; a center disc (240) is
joined to said rim (300) adjacent said center well
section (330); characterized in that said inner
transition section (340) has a thickness less than
said cylindrical section thickness; said outer
transition section (350) has a thickness less than
said cylindrical section thickness; and said center
well section (330) has a thickness less than said
cylindrical section thickness.
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9. A method for forming a motor vehicle
wheel having a non-constant rim thickness, said
wheel comprising a rim (300) includes an outer
rim (210) and a center disc (240), the method
comprising the steps of: forming an outer rim
(210) blank by rolling a flat piece into a tubular
shape; forming a center well section (330) in said
blank, said center well section (330) having a base
and two sidewalls, said center well section (330)
further having a well section thickness; forming an
inner bead seat (310) for receiving a bead on a side
wall of a tire; forming an outer bead seat (320) for
receiving a bead on an another side wall of a tire;
forming an inner transition section (340) joining
said center well section (330) and said first inner
bead seat (310); forming an outer transition
section (350) joining said center well section (330)
and said outer bead seat (320); forming a
cylindrical section (520) between said inner
transition section (340) and said inner bead seat
(310), wherein said cylindrical section (520)
further having a cylindrical section thickness; and
joining a center disc (240) is joined to said outer
rim (210) adjacent said center well section (330);
characterized in that said inner transition section
(340) has a thickness less than the thickness of
cylindrical section thickness; said outer transition
section (350) has a thickness less than the
thickness of said cylindrical section thickness; and
said center well (330) has a thickness less than
said cylindrical section thickness.
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Location of centre well section and joining of centre disc with rim
in claims 1 and 9
46. Each section or part of the wheel in both claims 1 and 9 has
been ascribed a reference numeral. The largest components, the rim
and centre disc, are assigned reference numerals 300 and 240,
respectively. The reference numeral ascribed to the centre well
section is 330. The said section is described as having a base and two
side walls and as having thickness. After ascribing the reference
numerals 340 and 310 to the inner transition section and inner bead
seat, respectively, these claims provide that the inner transition
section joins the centre well section and the inner bead seat. Similarly,
after ascribing the reference numerals 350 and 320 to the outer
transition section and outer bead seat, these claims recite that the
outer transition section joins the centre well section and the outer
bead seat. With regard to the centre disc (240), it is recited that it joins
the rim (300) adjacent to the centre well section (330).
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47. In order to further test if the description in the claims is
fairly based on and supported by the specification, I turn to the
complete specification. The detailed description of the invention
therein contains a reference to the drawings, i.e. Figures 1, 2a , 2b, 3, 4
and 5. Figure 3 of the drawings is referred to by specifically using the
reference numerals therein. As regards the centre well section, it is
stated as under:
“The center well section 330 may be a u-shaped
section, having a diameter at the base of the well
that is less than the outer diameter of the legs
which form the sides of the well section....”
With regard to the point at which the centre disc is joined to the rim,
it is stated as under:
“A center disc may be joined to the rim adjacent
the well....”
48. While Figure 3 does not indicate the location at which the
centre disc joins the rim, Figure 4 does. Hence, these descriptions
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should be read with Figures 3 and 4, which are as under:
Upon examining claims 1 and 9 with the complete specification and
Figures 3 and 4, both the location of the centre well section and the
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location at which the centre disc is joined to the rim are clear. As is
noticeable from the above, they are also fairly based on the
specification.
Location of cylindrical section in claims 1 and 9
49. It is apparent from claims 1 and 9 that the reference numeral
assigned to the cylindrical section is 520. Claims 1 and 9 specify the
location of the cylindrical section as under:
“a cylindrical section (520) between said inner
transition section (340) and said inner bead seat
(310), said cylindrical section (520) further having
a cylindrical section thickness;”
Figure 3 corresponds to claim 1. It is noticeable that Figure 3 does not
bear the reference numeral 520. The reference numeral for the other
sections and parts, such as inner transition section (340) and inner
bead seat (310), are, however, specified in Figure 3. Since these claims
recite that the cylindrical section (520) is between the inner transition
section (340) and inner bead seat (310), if the description of the
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location of the cylindrical section in claims 1 and 9 is read with Figure
3, the location of each section, including the cylindrical section, is
clear.
50. Mr.Adarsh Ramanujan contended, in this regard, that a
claim cannot be construed on the basis of the reference numeral by
relying on Lufthansa Technik. Undoubtedly, a reference numeral
cannot be relied on to expand or curtail the scope of a claim. To that
extent, he is correct. But, as is evident from the following extract of
Telsonic AG's Patent [2004] R.P.C. 38 from Lufthansa Technik, reference
numerals can certainly be used to identify the location of a claim
element:
“17. ....That is not to say that numbers are
pointless. They help a real reader orient himself at
the stage when he is trying to get the general
notion of what the patent is about. He can see
where in the specific embodiment a particular
claim element is, but no more....” (emphasis
added)
Thus, in specific, the reference numerals in claims 1 and 9, including
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the reference numeral 520, can certainly be read with Figure 3 and the
reference numerals therein for purposes of identifying the cylindrical
section in claims 1 and 9.
51. Learned counsel also contended that the location of the
cylindrical section is not fairly based on disclosures in the complete
specification. Figure 3 is referred to in at least three paragraphs of the
complete specification. At page 14 of the complete specification, it is
stated, in relevant part, as under:
“....As shown in Figure 3, the rim profile is made
with varying thickness to reduce the weight at the
farther region to reduce the mass moment of
inertia for the rim....”
Likewise, at page 15 thereof, Figure 3 is again referred to and the
thickness of various sections, including the cylindrical section, is set
out in Table 1 infra. Therefore, it cannot be said that the claim is not
fairly based on disclosures in the complete specification.
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Location of centre well section and joining of centre disc with rim
in claims 8 and 11
52. For purposes of examining the captioned aspect, it is
necessary to reproduce claims 8 and 11:
“8. A wheel for a motor vehicle, said wheel
being adapted to receive a pneumatic tire, said
wheel comprising a rim (300) having a non-
constant thickness and a center disc (240),
wherein said rim (300) comprises:
a center well section (330), said center well section
(330) having a base and two sidewalls, said center
well section (330) further having a center well
section thickness; an inner bead seat (310) for
receiving a bead on a side wall of a tire; an outer
bead seat (320) for receiving a bead on an another
side wall of a tire; an inner transition section (340)
joining said center well section (330) and said
inner bead seat (310); an outer transition section
(350) joining said center well section (330) and
said outer bead seat (320); and a cylindrical
section (520), said cylindrical section (520) having
a cylindrical section thickness; and a center disc
(240) is joined to said rim (300) adjacent said
cylindrical section (520); characterized in that said
inner transition section (340) has a thickness less
than said cylindrical section thickness; said outer
transition section (350) has a thickness less than
said cylindrical section thickness; and said center
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well (330) has a thickness less than said
cylindrical section thickness.
11.A method for forming a motor vehicle wheel
having a non-constant rim thickness, said wheel
comprising a rim (300) includes an outer rim
(210) and a center disc (240), the method
comprising the steps of: forming an outer rim
(210) blank by rolling a flat piece into a tubular
shape; forming a center well section (330) in said
blank, said center well section (330) having a base
and two sidewalls, said center well section (330)
further having a center well section thickness;
forming an inner bead seat (310) for receiving a
bead on a side wall of a tire; forming an outer bead
seat (320) for receiving a bead on an another side
wall of a tire; forming an inner transition section
(340) joining said center well section (330) and
said inner bead seat (310); forming an outer
transition section (350) joining said center well
section (330) and said outer bead seat (320);
forming a cylindrical section (520), said
cylindrical section (520) joining said center well
section (330) and said inner transition section
(340), wherein said cylindrical section (520)
having a cylindrical section thickness; and joining
a center disc (240) to said outer rim (210) adjacent
said cylindrical section (520); characterized in that
said inner transition section (340) has a thickness
less than the thickness of said cylindrical section
thickness; and said outer transition section (350)
has a thickness less than said cylindrical section
thickness; and said center well section (330) has a
thickness less than said cylindrical section
thickness.”
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53. The reference numerals used across claims is common. As in
the case of claims 1 and 9, the reference numeral 330 is ascribed to the
centre well section, and the description of the centre well section as
“having a base and two side walls ... having a center well thickness”
also tallies with the description in claims 1 and 9. Likewise, in these
claims also, the reference numeral 240 is ascribed to the centre disc.
When these claims are examined in the context of the complete
specification, for reasons set out while discussing claims 1 and 9, the
location of the centre well section is clear.
54. The location at which the centre disc joins the rim is,
however, different from claims 1 and 9. These claims recite, in this
regard, as under:
“and a center disc (240) is joined to said rim
(300) adjacent said cylindrical section (520)”
The complete specification contains the following disclosure in this
regard:
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“Although Figure 4 illustrates the center
disc 410 being joined to the rim at the center well
section 420, the present invention is not limited to
such a configuration. In particular, the center disc
510 may be joined to the rim with the cylindrical
section 520, such as is shown in Figure 5....”
Thus, the complete specification leads to Figure 5 for purposes of
identifying the location at which the centre disc is attached to the rim
in claims 8 and 11. Figure 5 is as under:
If claims 8 and 11 are read along with the complete specification,
including Figure 5, there is clarity on the location at which the centre
disc is attached to the rim.
Location of cylindrical section in claims 8 and 11
55. The petitioner alleged lack of clarity in the location of the
cylindrical section especially by comparing claims 1 and 8. On
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examining claims 8 and 11, as in the case of claims 1 and 9, it is
noticeable that the reference numeral 520 continues to be used to
refer to the cylindrical section. Unlike claims 1 and 9, which identify
the location of the cylindrical section as “a cylindrical section (520)
between said inner transition section (340) and said inner bead seat (310)”,
claim 8 merely recites “a cylindrical section (520), said cylindrical section
(520) having a cylindrical section thickness”. Claim 11, which is the
method claim corresponding to claim 8, purports to identify the
location of the cylindrical section as under:
“forming an inner transition section (340)
joining said center well section (330) and said
inner bead seat (310);
...
forming a cylindrical section (520), said
cylindrical section (520) joining center well
section (330) and said inner transition section
(340), wherein said cylindrical section (520)
having a cylindrical section thickness;”
56. The text of Claim 11 clearly provides that the inner
transition section joins the inner bead seat and the centre well section,
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thereby indicating that the inner transition section lies between the
inner bead seat and the centre well section. With regard to the
cylindrical section, claim 11 recites that it joins the inner transition
section and the centre well section without providing any indication
as to the location of the cylindrical section in relation to the inner
bead seat. Nonetheless, at a minimum, these descriptions indicate
that the cylindrical section is located on the same side as the inner
transition section and the inner bead seat. In fact, the absence of any
reference to inner bead seat while describing the cylindrical section
as joining the inner transition section and the centre well section
could lead to the surmise, if not clear inference, that the cylindrical
section lies between the inner transition section and the centre well
section. The explanation of the 1st respondent on this issue, therefore,
assumes importance.
57. In the counter statement, at paragraph 33 thereof, it is
stated, in relevant part, as under with regard to the location of the
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cylindrical section in claims 8 and 11:
“....It is submitted that the “cylindrical
section” in claims 8 and 11 is provided
between the outer flange and the outer bead
seat of the wheel rim based on Fig. 5 of the
drawings and Page 11 of the specification. It
is reiterated that the claims have to be considered
and read wholly in order to ascertain the working
of the invention. Claim 11 clearly shows the
position of the cylindrical section by stating that,
“the cylindrical section (520) having a cylindrical
thickness; and joining a centre disc (240) to said
outer rim (210) adjacent said cylindrical section”.
It is further stated: “In particular, the center disc
may be joined to the rim with the cylindrical
section 520, such as is shown in Figure 5.”
(emphasis added)
As noticed in the preceding paragraph, the above explanation is
untenable as regards claim 11 because the text thereof, even if read
with the complete specification, is not compatible with the position of
the cylindrical section being between the outer flange and the outer
bead seat.
58. As regards claim 8, it bears repetition that the claim contains
no indication about the location of the cylindrical section. If claim 8 is
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read with Figure 5 for purposes of identifying the location of the
cylindrical section, there is clear indication that the centre disc joins
the rim at or adjacent to the cylindrical section (520). There is also
indication that the cylindrical section is close to the outer flange, but
not that it is between the outer flange and the outer bead seat. If
construed in this manner, however, the cylindrical section in claim 8
would be on the outer flange side, whereas the cylindrical section in
claim 11, which is the method claim corresponding to claim 8, would
be on the inner flange side. The 'without prejudice' explanation of the
1st respondent that the cylindrical section in claim 11 is also at the
place where the centre disc joins the outer rim is not corroborated by
the record and is, in fact, contradicted by the text of claim 11.
59. Both in oral and written submissions, learned counsel for
the 1st respondent contended that the contention of learned counsel
for the petitioner regarding the difference in the position of the
cylindrical section, as between claims 8 and 11, was not supported by
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pleading. While this assertion is correct, the petitioner did plead that
the position of the cylindrical section in claims 8 and 11 is unclear.
Obviously, both claims 8 and 11 are on record as are the descriptions
of the cylindrical section therein. Therefore, notwithstanding the
objection, this aspect calls for adjudication. Before doing so, it is
instructive to examine precedents cited at the bar.
60. In the factual context of a patent in relation to a heart rate
monitor comprising a live electrode and a common electrode as
elements mounted in spaced relationship with each other but
without any parameters to determine appropriate spacing, in
Nautilus, the Supreme Court of the United States, after recognising
the inherent limitations of language, held, in relevant part, as under
at page 12 of the Lexis Nexis Report:
“At the same time, a patent must be precise
enough to afford clear notice of what is claimed,
“thereby appris[ing] the public of what is still
open to them”....”
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Claim 19 of the patent was challenged in Kirin-Amgen on the ground
that the claim and specification did not specify the urinary
erythropoietin (uEPO), and the House of Lords held as under, in
relevant part, at paragraph 126 of the report:
“The lack of clarity does not merely create a
fuzzy boundary between that which will work and
that which will not. It makes it impossible to work
the invention at all until one has found out what
ingredient is needed.”
61. In No-Fume, in the factual context of a claim for an ash
receptacle which, without the use of movable parts, retains the smoke
rising from objects thrown into it, the failure to provide the
dimensions of the elements of the receptacle were held to be
insufficient to hold the patent invalid for insufficiency or ambiguity.
In relevant part, it was held as under at page 238 of the report:
“.... It seems to me that the proportions can
be ascertained without the exercise of any new
inventive faculty, if the directions laid down are
followed; because the purpose of the invention is to
construct a space for cooling smoke, and yet that is
to be done within the limits of what might be
called the conventional ash receptacle....”
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Anan Kasei concerned a patent for ceric oxide used as a catalyst for
purifying vehicle exhaust gases. The claim used the expression
“consisting essentially of ceric acid” and an insufficiency attack was
mounted on the ground that the other ingredients were not disclosed.
In that context, after noticing that the above expression would be
understood by the skilled addressee as excluding any other material
ingredient, the Court of Appeals distinguished Kirin-Amgen as
dealing with conceptual uncertainty and rejected the insufficiency
challenge. While other precedents were cited on this issue, it is
unnecessary to deal with them. The common thread running through
these precedents is that the nature of alleged insufficiency or
ambiguity should be assessed to determine whether it impacts
determination of the scope of the monopoly, and whether it impacts
working of the invention by a person skilled in the art. I turn to the
facts so as to apply and test these principles.
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62. The core of the invention is the formation of a wheel with
uneven thickness of different sections of the rim as a solution to the
problem of dealing with fatigue failure without increasing wheel
weight. The object of the exercise is to avoid unduly increasing the
mass moment of inertia. In each independent claim, including claims
8 and 11, the thickness of the cylindrical section of the rim is higher
than the other sections. Without identifying the location of the
cylindrical section with a reasonable degree of clarity, it would not be
possible to either determine the scope of monopoly or work the
invention. Hence, the location of the cylindrical section is central to
the invention and qualifies as an essential feature. Even the relative
thicknesses in Table 1 of the complete specification are for the
embodiment shown in Figure 3, which corresponds to claims 1 and 9
but not to claims 8 and 11. On account of the lack of clarity on the
location of an essential feature of the invention in claims 8 and 11, the
grant in respect of these claims is liable to be revoked.
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63. Claim 13 is an independent method claim relating to the
method of forming a motor vehicle wheel with a rim of uneven
thickness, and warrants independent examination to decide on the
lack of clarity objection. Claim 13 is as under:
13. A method for forming a motor vehicle
wheel having a non-constant rim thickness,
the method comprising the steps of: spin
forming an outer rim (210) for said wheel,
wherein said outer rim (210) having a non-
constant rim thickness; and joining a center
disc (240) to said outer rim (210) to form
said motor vehicle wheel”
As regards claim 13, the petitioner contended that the claim is not
restricted to or dependent on claims 1, 8, 9 or 11. On closely
examining the language of claim 13, as contended, it does not contain
any restriction by making the claim dependent on claims 1, 8, 9 or 11.
In other words, claim 13 would extend monopoly even to a rim with
non-constant thickness in areas different from those mentioned in
independent claims 1 and 8. To that extent, the petitioner is justified
in contending that claim 13 unfairly expands the scope of monopoly
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and is not fairly based on the specification. Whether this entails
revocation or amendment is considered next.
64. Section 58 of the Patents Act is as under:
“58. Amendment of specification before High
Court.—(1) In any proceeding before the High
Court for the revocation of a patent, the High
Court, may, subject to the provisions contained in
section 59, allow the patentee to amend his
complete specification in such manner and subject
to such terms as to costs, advertisement or
otherwise, as the High Court may think fit, and if
in any proceedings for revocation the High Court
decides that the patent is invalid, it may allow the
specification to be amended under this section
instead of revoking the patent.
(2) Where an application for an order under this
section is made to the High Court, the applicant
shall give notice of the application to the
Controller, and the Controller shall be entitled to
appear and be heard, and shall appear if so directed
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by the High Court.
(3) Copies of all orders of the High Court allowing
the patentee to amend the specification shall be
transmitted by the High Court to the Controller
who shall, on receipt thereof, cause an entry
thereof and reference thereto to be made in the
register.”
The above provision clearly enables the Court to direct an
amendment of the specification instead of revoking the patent
provided it is within the scope of Section 59. The Controller of
Patents, who is required to be put on notice for such purpose, is a
party to this proceeding and is represented through counsel.
65. The overarching condition in Section 59 is that the
amendment should by way of disclaimer, correction or explanation.
If claim 13 were to be amended by linking and restricting the scope to
that of claims 1 and 9, the consequence would be to whittle down the
width of claim 13 by confining it to the production of a wheel with a
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rim of non-constant thickness, as per claim 1, and to which the centre
disc is joined either at the position specified in claim 1 or that
specified in claim 9. Consequently, such amendment would fall
squarely within the scope of Section 59.
66. Given that it was previously held that claims 8 and 11 fail
for lack of clarity, it is necessary to confine claim 13 to the
characterization specified in respect of the areas of non-constant
thickness in claims 1 and 9. This can be accomplished by amending
claim 13 as under:
“Claim 13: A method for forming a motor
vehicle wheel having a non-constant rim
thickness, the method comprising the steps of:
spin forming an outer rim (210) for said wheel,
wherein said outer rim (210) having a non
constant rim thickness according to claims 1 or
9;
joining a center disc (240) to said outer rim (210)
according to claims 1 or 9 to form said motor
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vehicle wheel.”(emphasis added)
This will impact all claims dependent on claim 13, namely, claims 14-
17 by importing the same limitation therein. The Controller shall
comply with the requirements of sub-section (3) of Section 59 and any
other requirements in this regard shall be complied with both by the
Controller and the 1st respondent.
Issue (iv)
67. Issue No.4 pertains to whether the complete specification of
the impugned Patent sufficiently and fairly describes the invention,
and the best method of working the same. The obligation to fully and
particularly describe the claimed invention, its operation and use and
the method by which it is to be performed is imposed on a patent
applicant under Section 10(4)(a) of the Patents Act. Section 10(4)(b)
thereof imposes the additional obligation of disclosing the best
method known to the patent applicant of performing the invention
in respect whereof such applicant is entitled to claim protection.
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Section 10(4(a) and (b) are as under:
“(4) Every complete specification shall -
(a) fully and particularly describe the
invention and its operation or use and the method
by which it is to be performed;
(b) disclose the best method of performing
the invention which is known to the applicant and
for which he is entitled to claim protection;”
68. The petitioner alleges non-compliance with this obligation
by invoking, as a ground for revocation, Section 64(1)(h), which is as
under:
“(1) Subject to the provisions contained in this
Act, a patent, whether granted before or after the
commencement of this Act, may be revoked on a
petition of any person interested or of the Central
Government or on a counter-claim in a suit for
infringement of the patent by the High Court on
any of the following grounds, that is to say -
(h) that the complete specification does not
sufficiently and fairly describe the invention and
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the method by which it is to be performed, that is
to say, that the description of the method or the
instructions for the working of the invention as
contained in the complete specification are not by
themselves sufficient to enable a person in India
possessing average skill in, and average knowledge
of, the art to which the invention relates, to work
the invention, or that it does not disclose the best
method of performing it which was known to the
applicant for the patent and for which he was
entitled to claim protection.”
69. In the complete specification, after describing the problem
to be solved as dealing with fatigue failure and other stress factors,
such as rotational speed of the wheel and vehicle cornering, it is
stated as under at page 14 :
“As shown in Figure 3, the rim profile is
made with varying thickness to reduce the weight
at the farther region to reduce the mass moment of
inertia for the rim. Appropriate thicknesses are
determined through analysis of the loads to be
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applied to the wheels, such as through finite
element analysis, and consideration of the required
fatigue life of the rim section. The fabrication
process for forming the profile may be selected
such that work hardening of the rim material
improves the strength of the material, particularly
in areas of reduced thickness, to provide improved
material characteristics to allow strength and
fatigue resistance criteria to be met in spite of
reduction in the thickness of the rim”
The relative thicknesses of different sections of the wheel rim for the
embodiment in Figure 3 with specific bead seat parameters were
thereafter set out in Table 1 infra. As regards the spin forming
process, the patentee/1st respondent set out comparative data in
Table 3, which is as under:
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70. On examining the complete specification at pages 95 to 101
of the typed set of the petitioner along with independent claims 1 and
9, including claims dependent thereon, and claim 13, as amended
above, including claims dependent thereon, and the drawings
relating thereto, I see no reason to conclude that the disclosures are
insufficient to enable a person of average skill and knowledge in the
art in India to work the invention as regards independent claims 1
and 9 and claims dependent thereon. By contrast, as regards
independent claims 8 and 11 and claims dependent thereon, for
reasons set out while considering revocation under Section 64(1)(i), I
conclude that the disclosure is insufficient to enable a person of
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average skill and knowledge in India to work the invention.
Therefore, Issue 4 is disposed of on the above terms.
Issue (ii)
71. This issue pertains to the alleged lack of novelty in the
invention. This contention was raised by contending that claim 8
lacks novelty in view of prior art D1. According to the petitioner,
prior art D1 provides for a rim for large and medium size tubeless
wheels, wherein the patent addresses the problem of optimizing
weight by maintaining strength. The petitioner contends that D1 also
teaches the feature of producing a rim of non-constant thickness as
the means to achieve the objective of optimizing weight while
maintaining strength.
72. On comparing prior art D1 with the claimed invention, it is
noticeable that the complete specification of the claimed invention
identifies the problem to be resolved as reducing fatigue failure on
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account of cyclical loading. Any reference to fatigue failure, whether
on account of cyclical loading or otherwise, is absent in D1. Thus, the
problem addressed by the Patent and D1 are not the same. Moreover,
D1 does not provide for a cylindrical section with highest thickness
relative to other sections. The settled legal position while testing
novelty, as can be seen in Farbewerke, is that a patent cannot be
rejected on this ground unless all the features of the claimed
invention or of the patent, as the case may be, are contained in a
single prior art. Since such is not the case when the impugned Patent
is compared with prior art D1, the challenge on the basis of alleged
lack of novelty fails.
73. The same contention was also raised with regard to claim
13. By comparing claim 13 with prior art D3, the petitioner contended
that the only difference between claim 13 and prior art D3 is that
prior art D3 teaches formation of a rim with non-uniform thickness
after the disc is attached to the rim by a spinning process, whereas
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the impugned Patent provides for the attachment of the disc after
formation of the rim with non-uniform thickness. According to
Adarsh Ramanujan, this is purely a case of change in sequence of
steps involved in the method claim. By relying upon the judgment in
Interactive Gift Express, he contended that such change of sequence is
by itself not consequential while deciding whether the method claim
comprising a series of steps is novel.
74. On closely examining prior art D3, it is evident that it
provides for mounting an intermediate unit comprising a rim pre-
form and an attached centre portion (disc) within the forming
apparatus so as to form the rim of non-uniform thickness. Thus, the
monopoly claim in D3 involves the mounting of the rim pre-form and
disc on a forming apparatus so as to undertake spinning. This is a
particular method of forming a vehicle wheel with non-uniform
thickness of the rim while the vehicle rim is attached to the centre
wheel. It certainly cannot be said that all the features of the
impugned Patent are contained in D3 or vice versa. Therefore, the
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impugned patent cannot be revoked on account of lack of novelty.
Issue (iii):
75. The next issue that falls for consideration is whether the
impugned Patent lacks an inventive step. Learned counsel for the
first respondent argued that the petitioner failed to lead expert
evidence and, therefore, did not discharge the burden of proving that
the impugned Patent lacks an inventive step. He relied on Molnlycke
for support. The petitioner relied on the decision of the Court of
Appeals in Rockwater, wherein it was observed that the primary
function of the expert is that of a teacher, i.e. to assist the court in
understanding the scientific terminology and technology. The Court
further held that the expert plays a facilitatory role as the maker of
the mantle; and that it is for the court to don the mantle of the
notional PSITA for the purpose of inventive step analysis. Expert
evidence would probably have aided obviousness analysis in this
case, particularly in understanding terminology and relevant
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concepts. The eventual adjudication of inventive step is, however, a
core judicial function to be performed in course of adjudicating such
matters with or without the aid of expert evidence. Hence, the
absence of expert evidence does not per se lead to a rejection of the
obviousness challenge.
76. Learned counsel for the petitioner relies on prior arts D1 to
D3 to contend that the impugned Patent lacks an inventive step. He
also contended that there is no technical advance over cited prior art.
After providing data in the form of Table 3, which is reproduced
supra, the complete specification provides as under:
As can be seen, the spin forming process imparted
significant work hardening of the material, which
resulted in significant increases to the ultimate
tensile strength at the spin formed region.
Furthermore, the weight of the rim section using
the non-constant thickness is only approximately
78% of the ETRTO Standard rim, which greatly
decreases the mass moment of inertia of the rim.
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Finally, the fatigue life to failure of the compared
rims has been determined to be increased between
17 and 20% by using the spin formed non-
constant thickness rim section when cornering
force fatigue life and radial fatigue life are
compared.
In the absence of evidence from the petitioner that this does not
represent a technical advance over cited prior arts, the impugned
Patent cannot be revoked on this ground.
77. The 1st respondent relied on the decision dated 18.09.1990 of
the Boards of Appeal of the European Patent Office in Detergent
Composition / UNILEVER, T 606/89(1990) to contend that if the
technical problem addressed by the closest prior art is different, then
the inventive step requirement is satisfied. In my view, a comparison
of the problem addressed by prior arts and that addressed by the
invention is material but is not the sole factor in obviousness analysis.
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78. As discussed earlier, D1 identifies the problem as weight
optimization while maintaining wheel strength. This problem is
resolved by producing a rim of non-constant thickness wherein the
thickness of the flange part is highest relative to the thickness of
other parts. On examining independent claim 1 of the Patent, it is
noticeable that it is a two-part claim consisting of the part known in
prior art and the part in respect of which the monopoly is claimed.
The part in respect of which monopoly is claimed follows the words
“characterized in that”. In effect, the monopoly claimed in claim 1 is
in respect of a wheel for a motor vehicle, which is adapted to receive
a pneumatic tyre, wherein the wheel comprises a rim with non-
constant thickness characterized by the thickness of the inner
transition section being less than the thickness of the cylindrical
section; the thickness of the outer transition section also being less
than the cylindrical section thickness; and the centre well section's
thickness also being less than that of the cylindrical section.
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79. In the complete specification, the relative thicknesses of
specific sections are disclosed as under:
“ In the embodiment shown in Figure 3, and using
a wheel having a distance between bead seats of
approximately 8 ½ inches and a bead seat diameter
of approximately 22 ½ inches the relationships
between the thicknesses can be shown. For an
optimized wheel having a joint formed between the
center disc and the rim adjacent to the center of the
well section, and utilizing the proportions
approximated in the Figure, the ratios between the
thicknesses of the various sections can be shown as
below:
The above Table corroborates and supports independent claim 1, i.e.
that the cylindrical section has the highest thickness. Indeed, even
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when the cylindrical section is located in a different position, as in
independent claims 8 and 11, the impugned Patent provides that the
cylindrical section would have the highest thickness.
80. Given the fact that the impugned Patent endeavours to
resolve the problem of fatigue failure, it appears that the solution
provided in the impugned Patent is to provide for higher thickness
relative to other sections in areas where the cyclical load is greater.
Such feature is not present in prior art D1, wherein the non-constant
thickness appears to be a measure targeted at weight reduction. D1
also does not contain any cues that would lead PSITA to look at
solutions to fatigue failure especially by providing for a rim with the
cylindrical section having the greatest relative thickness.
81. As regards prior art D2, it provides for first forming a rim
blank of uniform thickness and then forming an area of reduced
thickness. Any reference to the specific areas of reduced or increased
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thickness is conspicuous by its absence in the complete specification
and claims of prior art D2.
82. Turning to prior art D3, as discussed earlier, the problem to
be resolved therein is the avoidance of misalignment and the
consequential improper riding and steering. The solution proposed
to that problem is to attach the centre portion of the wheel to the rim
pre-formed by welding or casting. Once this is done, the rim pre-
formed with the attached centre portion is mounted on a machine or
apparatus by simulating the manner of attachment to the axle of the
vehicle. Thereafter, the desired portion is stretched to reduce the
thickness thereof. Thus, prior art D3 teaches a particular method of
reducing the thickness, wherein an intermediate unit comprising a
rim pre-form and attached centre portion are mounted on a forming
apparatus so as to reduce the radial depth of a portion of the rim.
83. If PSITA were to be armed with D3, PSITA would look at
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methods of reducing thickness of a portion of the rim by adopting a
process similar to that adopted in D3. Such process would
consequently entail mounting an intermediate unit, including the
attached centre portion /disc, on the forming apparatus. Hence, there
is teaching away in D3 and PSITA would not be led to the claimed
invention on the basis of D3, even if D3 were to be looked at in the
context of D1. For reasons set out above, I conclude that the
impugned Patent would not be obvious from any of the cited prior
arts. This concludes the discussion on all the grounds of challenge
and the relief to be granted flows from conclusions recorded while
discussing the respective ground.
84. In the result, (T)OP(PT) No.60 of 2023 is disposed of as
under:
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(i) The challenge is rejected in respect of independent claims 1
and 9 and corresponding dependent claims 2-7 and 10.
(ii) The grant of patent is partially revoked in respect of
independent claims 8 and 11 and corresponding dependent claim 12.
(iii) The grant of patent in respect of Claim 13 is maintained
subject to claim 13 being amended as under and, consequently,
dependent claims 14-17 also being similarly limited:
“Claim 13: A method for forming a motor vehicle
wheel having a non-constant rim thickness, the
method comprising the steps of:
spin forming an outer rim (210) for said wheel,
wherein said outer rim (210) having a non
constant rim thickness according to claims 1 or 9;
joining a center disc (240) to said outer rim (210)
according to claims 1 or 9 to form said motor
vehicle wheel.”
(iv) All procedural requirements in relation to the amendment
and the partial revocation shall be complied with by the Controller
and, if any action by the 1st respondent is necessary in this regard, the
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1st respondent shall comply with directions of the Controller.
(v) There will be no order as to costs.
03.04.2025
Index : Yes/No
Internet : Yes/No
Neutral
Citation : Yes/No
kal
To
The DEPUTY CONTROLLER OF PATENTS & DESIGNS
Patent Office Intellectual Property Building
GST Road, Guindy, Chennai-600 032
India
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SENTHILKUMAR RAMAMOORTHY J.
kal
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Pre-delivery order in
(ORA/2/2021/PT/CH)
03.04.2025
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