On 2nd May 2013 in LML Ltd v Bajaj Auto Limited the Intellectual Property Appellate Board (IPAB) upheld Bajaj Auto Limited’s Patent IN189097 and dismissed LML Ltd’s challenge to the validity of the patent on the grounds of anticipation, obviousness and insufficient disclosure.
During the 1990s most auto manufacturers produced scooters with two stroke engines. The scooters had low fuel efficiency and high emissions. The manufacturers, including the parties in the case at hand, were constantly tweaking the design of the scooters and their components to enhance fuel efficiency and reduce emissions. However, such tweaking created additional problems, such as increasing the number of components and the scooters' cost and weight.
Bajaj resolved the issues of low fuel efficiency and high emissions by designing a scooter with a monocoque chassis and an engine with transmission at one side of the scooter. According to the disputed patent, Bajaj had placed a reed valve in a small space between a crank case and the carburetter housing in the scooter's intake system while maintaining the monocoque chassis, the intake system, the chassis shape and the engine transmission positioning of the earlier (prior art) scooters.
After the patent was issued, Bajaj sent a cease and desist notice to LML. LML initiated revocation proceedings before the Delhi High Court. After the formation of the IPAB, the court transferred the proceedings to the board.
LML challenged the patent on the grounds of anticipation, lack of inventive step (obviousness) and insufficient disclosure. LML cited 12 different prior art documents, including patents, service manuals and engineering drawings. According to LML, four prior art documents anticipated the claims of the patent and a combination of other prior arts rendered the invention obvious.
Bajaj’s response included a detailed explanation highlighting how the invention differed from each of the prior art documents. Bajaj demonstrated that none of the prior art documents disclosed the claimed elements of the patent (ie, an intake system comprising an air filter, a carburetter, carburetter housing and an air filter positioned on the carburetter; the carburetter and an air filter accommodated within the carburetter housing; and a reed valve adapted and positioned between the carburetter housing substantially on one side of the vehicle).
The IPAB agreed with Bajaj that none of the prior art documents included all features of the claimed invention. The IPAB felt that LML had relied on different documents put together in the form of a mosaic of citations which was insufficient to prove anticipation.
The IPAB also disagreed with LML’s analysis of obviousness and stated that it was not possible for a person ordinarily skilled in the art to adopt the known (or off-the-shelf) shape, structure and mounting arrangement of the reed valve. The IPAB agreed with Bajaj’s contention that the arrangement was based on the T-type of intake system, the availability of space and the function of the reed valve. The IPAB felt that this made the claimed invention more than a mere workshop modification and arrangement; rather, it rendered the claimed invention non-obvious to a person skilled in the art. The IPAB cited Buchanan v Alba Diagnostics Ltd, quoting as follows:
"If the invention contained in a prior patent had been something which was made more useful or convenient by a subsequent patent, the latter was something which in ordinary language might be considered to be an improvement on the prior patent.”
The IPAB also dismissed the ground of insufficient disclosure as LML had provided no evidence to show insufficiency of the patent disclosure. LML had also challenged the patent under Section 3(f) of the Patent Act, contending that the patent involved a mere arrangement, rearrangement or duplication of known devices, each of which carried on its own functions independently. Bajaj countered that even though the parts per se were known, the function of the combination of the known parts was different. The IPAB agreed with Bajaj as the conventional functions of the individual parts did not suggest enhanced fuel efficiency and reduced emissions.
The IPAB's well-reasoned judgment included a detailed technical analysis in order to deduce the technical advancement provided by the patent over the cited prior arts.