Relying upon the landmark judgement of the Supreme Court in the case of Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries1, a Divisional Bench (DB) of the High Court of Delhi, in the matter of FAO (OS) No. 292/2014 involving 3M Innovative Properties Ltd. (hereinafter 3M) and Venus Safety & Health Pvt. Ltd. (hereinafter Venus), on 19 September 2016, observed that the proper way to construe a patent specification is not to read the claims first and then see what the full description of the invention is, but to read the description of the invention first.
Facts in Brief:
3M being patentee of Indian Patent No. 211175 for invention titled “Flat fold personal respiratory protection devices and process for preparing the same”, filed an application in a matter of infringement of the subject patent, seeking permanent injunction restraining manufacture of the Venus’s product V4410. Vide an order dated 19 December 2013, a Single Judge of the Delhi High Court granted an interim order in favour of 3M and restrained Venus from manufacturing the impugned mask. In response, Venus filed an application for vacation of the interim order. Citing three patents specifications as prior art references, Venus argued that the prior art references disclosed major elements of the subject matter claimed in 3M’s patent. In an order dated 30 May 2014 (impugned order), a Single Judge of the Delhi High Court vacated the interim order dated 19 December 2013. The instant appeal was filed by 3M against the impugned order.
The DB of the High Court of Delhi set aside the impugned order and the order dated 19 December 2013 was confirmed till disposal of the suit.
Analysis and Principle laid down:
The DB observed that by the impugned order, the Single Judge had held that the elements of the subject patent were taught by the prior art and are obvious to a person skilled in a trade and thus, a comparison of the subject patent with the alleged prior art was required to be made.
For the purposes of the comparison, in construing subject matter of 3M’s patent, the DB observed that, in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court had made reference to Arnold v. Bradbury2, to arrive at the principle that the proper way to construe a specification is not to read the claims first and then see what the full description of the invention is, but first to read the description of the invention, in order that the mind may be prepared for what it is, that the invention is to be claimed, for the patentee cannot claim more that he desires to patent. The DB added that the claims must be so construed as to give an effective meaning to each of them and that the specification and the claims must be looked at together and construed together.
Upon conducting a detailed comparison, the DB found that the learned Single Judge had erroneously combined the abstracts of the three patent specifications, to arrive at a conclusion that they together teach the elements of the subject patent.
Like other jurisdictions, the Indian Courts too, may tend to rely heavily on the intrinsic evidence, i.e., the specification, to construe the claims. Accordingly, when the meaning of a term in a claim is not clear, the description will be relied upon to understand the term in context of what is described in the specification.