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Spice Mobiles Ltd. and Another Vs. Somasundaram Ramkumar and Others - Court Judgment

LegalCrystal Citation
CourtIntellectual Property Appellate Board IPAB
Decided On
Case NumberORA/17 of 2009/PT/CH & ORA/31 of 2009/PT/CH
Judge
AppellantSpice Mobiles Ltd. and Another
RespondentSomasundaram Ramkumar and Others
Excerpt:
order(no.140/2012) d.p.s. parmar, technical member (patents): 1. two applications ora/17/2009/pt/ch by spice mobiles limited [herein after referred as first applicant] ora/31/2009/pt/ch by m/s. samsung india electronics pvt. ltd [herein after referred as second applicant] are filed for revocation of patent no.214388 granted to shri somasundaram ramkumar. the patent relates to mobile telephone with a plurality of simcards allocated to different communication networks. 2.ora/17/2009/pt/ch was heard on 16.08.2011. shri s. majumdar appeared for the applicant and shri gopalakishna raju and sh ebinezer inbaraj appeared for the respondent 1. 3.ora/31/2009/pt/ch was heard on 26.12.2011. shri praveen anand and ms. archana shankar appeared for the applicant and ms. n. devi appeared for the.....
Judgment:

ORDER(No.140/2012)

D.P.S. Parmar, Technical Member (Patents):

1. Two applications ORA/17/2009/PT/CH by Spice Mobiles Limited [Herein after referred as first Applicant] ORA/31/2009/PT/CH by M/s. Samsung India Electronics Pvt. Ltd [Herein after referred as second Applicant] are filed for revocation of patent No.214388 granted to Shri Somasundaram Ramkumar. The patent relates to Mobile Telephone with a plurality of Simcards allocated to different communication networks.

2.ORA/17/2009/PT/CH was heard on 16.08.2011. Shri S. Majumdar appeared for the applicant and Shri Gopalakishna Raju and Sh Ebinezer Inbaraj appeared for the respondent 1.

3.ORA/31/2009/PT/CH was heard on 26.12.2011. Shri Praveen Anand and Ms. Archana Shankar appeared for the applicant and Ms. N. Devi appeared for the respondent 1. In this application applicant has not made Controller of Patents as respondent which should have been done. Controller of Patents is always a proforma party in all revocation proceedings.

4.Since the revocation relates to the same invention it was agreed that a common order may be passed.

5. The Counsel for both of the applicants submitted that the affidavit and counter statement submitted by the respondent are defective in this case and therefore should not be taken on record. Further, the respondent 1 has not paid the costs to the petitioners as directed by the Honble Board in the order dated 14th June 2011 and therefore the respondent 1 shall not be heard.

6. In our order dated 14.06.2011 we have stated that

“If the cost is not paid the mere filing of counter will not entitle the respondent to be heard on 16.08.2011.”

7. The counsel for respondent 1 filed his counter in open court on 16.08.2011 but costs has not been paid so far to any of the applicants. Since the respondent has not complied with the direction of this Board, we allowed to the counsel of applicants to proceed with their case and the matter was heard ex-parte on 16.08.2011, 28.09.2011 and 26.12.20011.

Brief facts of the case:

8. Patent application No.161-MAS-2002 bearing patent No.214388 was filed on 4.03.2002. First Examination Report was sent to respondent 1 on 30.11.2005. The response to first examination report by the respondent 1 was filed on 27.05.2006. Further, examination report dated 19.10.2006 was replied by the respondent on 27.11.2006.Patent was granted on 11.02.2008.

9. The patent specification as originally filed on 04.03.2002 was for the mobile phone that has the capacity of incorporating two or more SIM cards. The 4 claims in the originally filed specification are as under:

“1.) A mobile phone having provision for incorporation of two or more than one SIM cards wherein two (or) more than one SIM card to receive and/or send two signals or more than one signal at a time.

2. A mobile phone having provision for incorporation of two or more than one SIM cards as claimed in claim 1 wherein the circuitry of the mobile phone is modified so as to accommodate any number of a mobile phone having provision for incorporation of two or more than one SIM cards.

3.) A mobile phone having provision for incorporation of two or more than one SIM cards as claimed in claim 1 wherein signals can be received from different mobile company towers at a time without any delay.

4.) A mobile phone having provision for incorporation of two or more than one SIM cards as described in the pages of complete specification.”

10. Series of amendments and alteration of specification have been effected during the prosecution of the application before the respondent No.2 .The claims of the impugned patent have been increased from 4 as originally filed to 20 as granted. They are reproduced below:

“1.) A mobile phone is to be incorporated with a provision for a plurality of current simcards and/ or modified simcards, a plurality of current t simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/ earphone jacks for accepting a plurality of headphone/ earphone plugs and / or a plurality of Bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality f of incoming and/or outgoing calls can be communicated simultaneously with the said respective simcards.

2.) A mobile phone as claimed in claim (1), a mobile phone is modified for utilizing a plurality of current simcards and / or modified simcards allocated to different communication networks in order to simultaneously operate said mobile phone in said different communication networks; a plurality of current simcards and/or modified simcards can trans receive a plurality of different communication networks in order to operate simultaneously; signals can be trans received among different communication networks in order to operate simultaneously without any delay; service method towards a plurality of different communication networks in order to operate simultaneously; a mobile phone can transreceive the entire features of a plurality of different communication networks simultaneously.

3.) A mobile phone as claimed in claim (1), when two or five simcards are provided in a mobile phone, a particular simcard can operate by pressing a key which is provided in the keypad for outgoing calls, each simcard is given connection to respective keys viz. 1,2, 3, 4 and 5 and these numbers for the keys can be changed; the mobile phone has a plurality of connections for a plurality of simcards.

4.) A mobile phone as claimed in claim (1), when the mobile phone is 'ON', the first incoming and / or outgoing call for any mobile service provider with respect to any simcard, the first incoming and / or outgoing call can be communicated by the speaker and/or microphone provided in the mobile phone, another incoming and/or outgoing call for any other mobile service provider with respect to any other simcards, another incoming and / or outgoing call can be communicated simultaneously by diverting the another incoming and / or outgoing call to the respective jacks and/ or bluetooth devices provided in the mobile phone; during the communication, a provision is provided to change the communication of first incoming and / or outgoing call to the respective jacks and/or bluetooth devices and also the communication of another incoming and for outgoing call can be changed to the speaker and microphone provided in the mobile phone.

5.) A mobile phone as claimed in claim (4), when the mobile phone is 'ON' and when an incoming call comes, it is indicated by the buzzer, also when an another incoming call comes, it can be indicated by the buzzer and by 'Beep' sound also, but an another incoming call arrives at that time, it is indicated by a buzzer and it gives room for disturbance as it is noisy; therefore the mobile phone which has the provision to indicate the incoming call by buzzer or by beep which is provided in the settings like call register, phone setting and so on in the mobile phone, the neither buzzer or beep can select in the settings for indicating the incoming call with respect to plurality of simcards provided in the mobile phone.

6.)A mobile phone as claimed in claim (1), all the simcards with respective mobile service providers can be displayed on the display t screen of the mobile phone, selected simcard displays the selected mobile service provider on the display screen; the mobile phone on the line with the outgoing or incoming calls in simcard (first) in operation, another incoming call from any other mobile service ) provider with respect to other four simcards can be indicated by 'Beep' sound as all the simcards are alert; the mobile phone, now, on the line with the simcard (first) in operation can simultaneously receive the incoming call from any other mobile service providers with respect to other four simcards and also can simultaneously contact any other service providers with respect to other four simcards, the respective simcard number and or mobile service provider is displayed on the screen now, the mobile phone on the line, with simcard (first) can communicate by providing the voice in the speaker and by sending the voice through the microphone provided in the mobile phone and can simultaneously receive the incoming call from any other mobile service providers with respect to other four simcards, by diverting the incoming call through the respective jack and / or bluetooth device provided in the mobile phone, the headphone/earphone plug is connected to the respective jacks for communicating the respective incoming call.

7.) A mobile phone as claimed in claim (6), the call for the first simcard can be communicated by the speaker and the microphone provided in the mobile phone and the incoming and / or outgoing call through J any other mobile service provider with respect to other for simcards can be communicated simultaneously by diverting the incoming and/ or outgoing call to the respective jacks and/ or bluetooth devices provided in the mobile phone, another incoming and / or outgoing call with respect to simcard (second), simcard (third), simcard (four) and simcard (five) can be connected to jack (first), jack (second), jack (third) and jack (four) and/or bluetooth device (first), bluetooth device (second), bluetooth device (third) and bluetooth device (four) provided in the mobile phone; the mobile phone which has the provision for changing the communication of incoming and / or outgoing calls with respective simcard (first), simcard (second), simcard (third), simcard (four) and simcard (five) to any of the jack (first), jack (second), jack (third), jack (four) and/ or bluetooth device (first), bluetooth device (second), bluetooth device (third), bluetooth device (four) and the speaker / ) microphone provided in the mobile phone, the communication of call j can change from the simcard (first) to any of the jack (first), jack , (second ), jack (third ), jack (four) and/or bluetooth device (first), bluetooth device (second), bluetooth device (third), bluetooth device (four) and the communication of call can change from the simcard (second) or simcard (third) or simcard (four) or simcard (five) to speaker and microphone provided in the mobile phone.

8.) A mobile phone as claimed in claim (6), the simcard preferred at first remains on the display screen till changes to another simcard, another provision of facility can be arranged to display all the mobile service providers with respective simcards on the display screen at a time; while operating the mobile phone, a particular key is press to select the mobile service provider with respective simcard and the phone number can be displayed on the particular space provided for that particular mobile service provider am dot can also be displayed that phone number with particular service provider on the entire display screen and it can reach its place where facility is arranged to display all the mobile service providers.

9.) A mobile phone as claimed in claim (8), when an incoming call from any m)obile service provider with respect to any simcard, then the name of the mobile service provider of an incoming call with respective simcard and phone number can be displayed on the entire display screen of the mobile phone, when another incoming and / or outgoing call is simultaneously attended from any mobile service provider with respective simcard, the name of the mobile service provider of another incoming and / or outgoing call with respective simcard and phone number can also be displayed with the name of the mobile service provider of an incoming call and phone number on the display screen of the mobile phone, after completing the incoming and for outgoing call with the mobile service providers, then all the mobile service providers with respective simcards can be-displayed on the display screen at a time in a mobile phone.

10). A mobile phone as claimed in claim (1), when plurality of earphone/ headphone jacks are provided in a mobile phone, the call for the plurality of simcards is achieved by connecting the plurality of the ea1phone/ headphone plugs to the plurality of ea1phone/ headphone jacks provided in the mobile phone.

11.) A mobile phone as claimed in claim (1 0 ), when plurality of provisions for number of separate headphone/ ea1phone sections are provided in the jacks with respective simcards (with respective mobile service providers) is arranged, the call for the respective . simcards can use separately by connecting a plurality of headphone/ ea1phone plugs to the plurality of headphone/ ea1phone jacks provided in the mobile phone and a plurality of incoming and / or outgoing call can simultaneously communicate by connecting a plurality of headphone/ ea1phone plugs to the plurality of headphone/ earphone jacks with the respective simcards provided in the mobile phone and conference is possible by pressing a key and their all mobile headphone/ earphone jacks connections are interconnected by switches and thereby conference is achieved.

12.) A mobile phone as claimed in claim (1), when plurality of bluetooth , device are provided in a mobile phone, the call for the plurality of simcards is achieved by activating the plurality of bluetooth devices provided in the mobile phone.

13.) A mobile phone as claimed in claim (12), when plurality of provisions for number of separate voice call sections are provided in the bluetooth devices with respective simcards (with respective mobile service providers) is arranged, the call for the respective simcards can use separately by activating a plurality of Bluetooth devices provided in the mobile phone and a plurality of incoming and / or outgoing calls can Simultaneously communicate by activating a plurality of bluetooth devices with the respective simcards provided in the mobile phone and conference is possible by pressing a key and their all mobile bluetooth devices connections are interconnected by switches and thereby conferences achieved.

14.) A mobile phone as claimed in claim (1), the mobile phone incorporates a plurality of miniaturized modified simsockets such that modified simcards having a reduced format can be used, thus ~ less space is used when the plurality of said modified simcards are inserted into the simsockets.

15.) A mobile phone as claimed in claim (14), the dimension or format of . simsocket are modified and the dimension or format of simcard also modified with respective dimension or format of modified simsocket, the different models of modified simsocket are manufactured but the dimensions of modified simsocket is constant for any models of modified simsocket; the modified simcard (reduced format) can easily fit in different models of standardized simsocket in know mobile phone and also fit in modified simsocket.

16.) A mobile phone as claimed in claim (15), the dimensions of the simcard is reduced by cutting the plastic material which is combined with the chipset (chipcard); the electrically conductive contact zone which is provided on the surface of the chipcard or gold plate of chipcard (simcard) is coated with non-conductive material except the portion or contact point in the gold plate of chipset (simcard) which are fit to the gold contacts of the simsocket; the non-conductive material can he any suitable material, the small portion or contact point of the gold plate of the chipset (simcard) is the conductive layer which are fit to the gold contacts of the simsocket; the modified simcard cannot scratched or written on the goldplate as it is coated with non-conductive material; the plastic material which are used for the simcard should be hardened, the modified simcard is designed to be non-bent and unfolded type: the modified simcard cannot be affected at the time of fitting the simcard into the simsocket; therefore the modified simcard can be used to reduce the space in a mobile phone; the space of the simsocket is also reduced in the mobile ) phone; therefore the modified simcard is designed to be non-bent, unfolded type, hardened, cannot be scratched or written on the gold plate as it is coated with non-conductive material.

17.) A mobile phone as claimed in claim (1), a facility of conference is differently arranged to provide a conference of voice signals when using said mobile phone, said conference can be included in the mobile phone which has inbuilt of a plurality of headphone/ earphone jacks can accept a plurality of headphones/ earphones plugs, said conference can be included in the mobile phone which has inbuilt of a plurality of Bluetooth devices, said conference can be included in the mobile phone which has inbuilt of a single headphone/earphone jack can accept a single plug is incorporated with the plurality of headphones/ earphones or said conference can alternatively be incorporated in an external adapter connected to a single jack of said mobile phone, wherein a plurality of headsets can be connected to said adapter and / or said conference can be the plurality of bluetooth headsets can trans receive the signals with the plurality of bluetooth devices of the said mobile phone.

18.) A mobile phone as claimed in claim (17) in a mobile phone, having a facility of plurality of headphone/earphone jacks, the plurality of headphone/ earphone plugs can connect in the provided jacks of the mobile phone; in a mobile phone having a facility of plurality of bluetooth devices, the plurality of bluetooth devices can activate in the provided mobile phone; a single speaker and microphone section and a plurality of jacks and / or bluetooth devices are provided in the mobile phone the plurality of jacks and / or bluetooth devices arc connected to the plurality of switches which are connected in series among the plurality of jacks and / or bluetooth devices provided in the mobile phone, plurality of switches which are activated (ON) means plurality of jacks and / or bluetooth devices are interconnected or deactivated (OFF) at a time by pressing a key; therefore the plurality of headphones/ earphones and / or bluetooth headsets can communicate to particular mobile service provider through the plurality of jacks and / or bluetooth devices provided in a mobile phone; the plurality of headphones/earphones and / or bluetooth headsets can communicate to a plurality or selected mobile service provider with respective simcard through the plurality of jacks and / or bluetooth devices provided in a mobile phone; the plurality of headphones/ earphones and / or bluetooth headsets can communicate to a plurality of mobile service providers with respect to plurality of simcards through the plurality of jacks and/or bluetooth devises provided in a mobile phone; therefore the conference is achieved by a single mobile phone having plurality of headphone/ earphone jacks and/ or bluetooth devices; the headphones/ earphones with wire (cord) or wireless (cordless) headphone/ earphones which can be used for said conference.

19.) A mobile phone as claimed in claim (17), a mobile phone has only one earphone jack; the conference is achieved by incorporating a plurality of headphone/ earphone in a single plug, conference can achieved by modified socket, plurality of headphones/ earphones plugs which are connected to the jacks of the modified sockets for communication; the plurality of headphones/earphones are incorporated in a single socket (plug); the number of headphones/ earphones (more than one) can fit to the modified socket, the modified sockets are connect to a plurality of headphone / earphone plugs; in the modified socket, the jack of the modified socket is used to connect the plug of the headphone/ea1phone and the plug of the modified socket is connected to the jack of the mobile phone, the circuit connections are parallel between the jacks which are connected in series to the plugs of the modified socket; amplifying circuits can be chip called IC (Integrated Circuit) can also be used in a plurality of headphones/ ea1phones to communicate clearly; the interface (socket and pins) varies from one mobile phone to another, but every mobile phone has interface (socket and pins) facility for headphone/ earphone, the pin numbers of speaker and microphone in a headphone/ earphone vary from one interface to another interface of different mobile phone, the same method of modified sockets (interfaces) and the circuit diagrams can be applied to all the different models of mobile phones having different types of interfaces (sockets and pins), the circuit connections are same as mentioned earlier which is suitable for implementing for all the different types of interfaces of different models of mobile phones.

20.) A mobile phone is to be incorporated with a provision for a plurality of current simcards and / or modified simcards, a plurality of current simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/ ea1phone jacks for accepting a plurality of headphone/ ea1phone plugs and / or plurality of bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and / or outgoing calls can be communicated simultaneously with the said respective simcards as described in the pages of complete specification.”

Spice Mobile

Locus standi

11. The First applicant Spice Mobiles Limited is a Company incorporated in India under the Indian Companies Act, 1956, and having its Registered Office at D-1, Sector-3, Noida – 201 301, Uttar Pradesh. The company is engaged, interalia in the Mobile Handsets business since June 2005. The company is listed at Bombay Stock Exchange and National Stock Exchange and is the only Indian mobile phone company listed in India. The applicant has wide range of mobile handset products including GSM/CDMA handsets – with or without Dual Mode phones. The present mobile handsets portfolio of Spice consists of approx. 24 models ranging from black and white phones to 2.0 mega pixel camera phones, with features such as FM stereos, cameras, pre-embedded local language content, local language capability, polyphonic ring tones, GPRS connectivity. After obtaining the impugned patent No. 214388, the respondent No.1 filed a civil suit being No.1 of 2009 in the Honble High Court at Madras against several parties including the First applicant. The First applicant is the defendant No.3 in the said suit. The said suit is pending and the respondent No.1 has not been able to obtain any order of injunction against the petitioner in the said suit. The First applicant has sold Dual SIM phones worth over Rs.150 crores since its launch. In December 2008, First applicant sold Dual SIM Phones worth Rs.5.90 crores. The sales increased to Rs.9.76 crores in January 2009, registering a month on month growth of 165%, based on this growing demand of Dual SIM Phones. The Customs Authority (Delhi) post the issuance of notice dated 27/1/2009 from the Office of the Commissioner of Customs, Intellectual Property Rights Cell, had detained consignments of Dual SIM Phones of the applicant. As a result, the First applicant has already lost business worth about Rs.35 crores in the month of February and March 2009, its operations are likely to be substantially and adversely affected in future.

12. The action instituted by the Customs authorities is on the basis of the registration of the impugned patent with the Customs authorities under the Customs Act. As a result of such action on the part of the Customs authorities the First applicant had to stop shipment from the overseas vendors. Furthermore, the launch of D-1111 – Indias First Dual Mode (GSM+CDMA) PDA has been put on hold, which was committed to the Distributors. This default in commitment has resulted in irreversible loss of business revenue, reputation of First applicant and other stakeholders like employees, distributors, dealers, suppliers and public shareholders.

13. The First applicant is aggrieved by the baseless and malafide actions of the respondent No.1 as aforesaid and thus has locus standi to file the present revocation application under Section 64(1) of the Indian Patents Act.

Samsung India Electronics Pvt. Ltd

Locus standi

14. The second Applicant is the subsidiary of M/s Samsung Electronics Company Ltd. of South Korea which is a global leader in semi-conductors, telecommunications, digital media and digital convergence technologies and is a leading producer of digital TVs, memory chips, mobile phones and TFT-LCDs. As part of its business, the 2nd applicant is engaged in the manufacturing, import and sale of mobile phones that can hold dual SIM Cards in India. As the 2nd applicant are persons engaged in the technical field to which the impugned patent relates, they are “persons interested” under Section 2(1)(t) of the Indian Patents Act and therefore have a locus standi in filing the present revocation petition under Section 64(1) of the Indian Patents Act.

15. In view of above, both of the applicants have the locus standi to file this application.

Questions of Law

A. Maintainability Issue

16. The respondent 1 in the counter statement has raised a question of law relating to maintainability of these applications before Honble Board. Both of the applicants have in the grounds supporting the applications, admitted about a similar claim pending before the Honble Madras High Court in C.S. No.221/2009 wherein an application for allowing counter claim is pending. Since both these applications are still pending, these applications for revocation are not maintainable.

17. The Counsel for the applicants contended that their applications are maintainable and submitted that in MIPR 2011(1) 0025 Dr. Aloys Wobben Vs. Yogesh Mehra and Ors Honble Delhi High court had relied onAndhra Pradesh Financial Corporation Vs. Gar Re-rolling Mills [1994 (2) SCC 647] where it was heldthat

“7. ……………………….. ………….. …………………

The Doctrine of Election clearly suggests that when two remedies are available for the same relief, the party to whom the said remedies are available has the option to elect either of them but that doctrine would not apply to cases where the ambit and scope of the two remedies is essentially different…” [Para 7]

8. ……………………….. ………….. …………………

Even in the decision relied on by the applicant the Andhra Pradesh Financial Corporation (supra) the Supreme Court proceeded to clarify that concurrent statutory remedies could be pursued:

To hold otherwise may lead to injustice and inconsistent results. Since, the Corporation must be held entitled and given full protection by the Court to recover its dues it cannot be bound down to adopt only one of the two remedies provided under the Act. In our opinion, the Corporation can initially take recourse to Section 31 of the Act but withdraw or abandon, it at any stage and take recourse to the provisions of Section 29 of the Act, which section deals with not only the rights but also provides a self-contained remedy to the Corporation for recovery of its dues. If the Corporation chooses to take recourse to the remedy available under Section 31 of the Act and pursues the same to the logical conclusion and obtains an order or decree, it may thereafter execute the order or decree, in the manner provided by Section 32(7) and (8) of the Act. The Corporation, however, may withdraw or abandon the proceedings at that stage and take recourse to the provisions of Section 29 of the Act. [Para 8 ]

held that

“9. It is worthwhile noticing at this stage that a patent, unlike other intellectual property rights, does not come with a presumption. Apparently there are public policy concerns which have been reflected by Parliament, which allow patents to be challenged at various stages firstly, at the stage of grant (Section 25(1), later after grant by a “person interested” (Section 25(2) orders of the Controller, including one on a post grant opposition, are appealable, to the Board, under Section 117-A. There is an independent remedy for cancellation or revocation of patents, under Section 117-C, to the Board. In addition, in the event of a suit, the Defendant can, besides contending non-infringement, also counter claim and seek revocation under Section 107. Though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition Applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before, he may prefer an application before the Board for cancellation or revocation. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable or alternatively he is asked not to raise the ground of cancellation in his written statement, his defence would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy; that would be plainly against public policy.”

Other Citations referred in the decision

AIR 1956 SC 593 – Nagubai Ammal and Ors. Vs. B. Sharma Rao and Ors.

AIR 1965 SC 241 – C. Beepathuma and Ors. Vs. Velasari Shankaranarayana Kadambolithaya and Ors.

1995 Supp (2) SCC 539 – Prashant Ramachandra Deshpande Vs. Maruti Balaram Haibatti

(1998) 6 SCC 507 - P.R. Deshpande Vs. Maruti Balaram Haibatti

(2005) 7 SCC 653 – Devasahayam (Dead) By LRs. Vs. P. Savithramma and Ors.

AIR 2007 SC 2907 – Appala Narasimha Raju and Ors. Vs. Natinoal Insurance Co. Ltd.

(9004) 9 SCC 619 – MD, Army Welfare Housing Organisation Vs. Sumangal Services (P) Ltd.

18. In view of the above we hold that the present applications for revocation are therefore maintainable.

B. Amendments done during prosecution stage : Addition of New matter

Spice Mobile argument

19. The Counsel for the first applicant submitted that the respondent No.1 has amended the patent application without filing request for the amendment in such a way that the basic nature of the invention as originally filed and granted has been completely altered from a Dual SIM card phone to a phone capable of simultaneous communication. The series of amendments carried out during the prosecution of the applications are given in the table below

 Original Specification as filed on 4th March 2002Amended/Granted specification
Claims0420
Pages1024
Figures1116
TitleMobile Phone with Multiple Number of SIM Cards to Receive and/or send Multiple Number of Signals at a timeMobile Phone with a Plurality of SIM Cards Allocated to Different Communication Networks
20. The counsel for applicant submitted that the general description of the invention comprises the following:

- SIM card, SIM IC, interface IC and CPU.

Also, the patents specification refers to a SIM Card (7a), SIM Socket (7b) modified SIM card (8a) and SIM socket (8b) on page 3 of the patent specification

- The patent specification as filed on 04.03.2002 does not have any additional details with regard to circuitry that has to be modified of the mobile phone to accommodate two or more SIM cards.

21. The counsel for the first applicant submitted that leave to amend the complete specification under section 57 was obtained by fraud. It was contented that the patent specification as filed originally on 4th March 2002 contained four claims which were later amended and made into twenty by wholly incorporating, new features and new matters wholly outside the scope of the original disclosure and claims. The originally filed specification did not have any additional details of the circuitry that has to be modified to accommodate two or more SIM cards. The technology and the additional constructional details of the said mobile phones were also not discussed. The amendment incorporated by the Respondent No.1 on or about 17th November 2006 is an attempt to enlarge and totally modify the claims beyond the original disclosure and rectify the defects of the original patent specification. While doing so, Respondent No.1 has completely violated the provisions of Section 59 of the Patents Act, 1970. The law relating to amendments does not permit widening/broadening of the disclosure/claims. In the present case the scope of protection as well as the disclosures in the patent specification have been altered by the incorporation of entirely new features of Head phone, Ear phone, Ear plug, Blue tooth device which were not disclosed or claimed in the original patent specification. The amendments have wholly altered the scope of the invention and are therefore contrary to section 57 read with Section 59 of the Act .Even the patent examiner does not have the authority to call for amendments which are violative of Section 59 and go to incorporate new matter which would alter the scope of protection. The counsel submitted that section 21 and 22 of UK Patent and Design Act 1907 and section 29 of Patents Act 1949 which relate to amendment of specification with leave of Comptroller are similar to the provisions under section 57 read with section 59 of the Indian Patents Act ,1970.

22. The counsel relied on the following judgments relating to amendments of the specification and claims during prosecution of the application :

(i) In application for revocation of Letters Patent No.308932 granted to Georges Eveno 49 RPC 385 it was held

"that under Section 26 the Comptroller and the Court have no wider powers of amendment than those permitted by Section 21 and 22; that the amendments ordered by the Assistant-Comptroller conferred a monopoly for an invention not suggested as the subject-matter or part of the subject matter of any original unamended claim, and were inadmissible, and it being admitted that the Claims of the Specification as unamended were invalid by reason of the prior grant to the Applicant, the Patent was ordered to be revoked".

(ii) In the case of Flexible Directional Indicators Ltd.'s Application reported in [1994] RPC 207 it was held that

"During examination of the application, the applicant introduced claims which limited the scope of the invention by reference to various structural features of the bollard and a definition of its resistance to vehicle impact but which did not require the presence of a second polymer ingredient.

The examiner objected that these claims constituted additional subject- matter contrary to section 76(2) of the Patents Act 1977 and that they lacked an inventive step over the prior art. Held, dismissing the appeal :-

(a) to ascertain through the eyes of the skilled addressee what was disclosed, both explicitly and implicitly, in the application as filed;

(b) to do the same in respect of the application as sought to be amended;

(c) to compare the two disclosures and decide whether any subject-matter relevant to the invention had been added, whether by deletion or addition

The comparison must be strict, in the sense that subject-matter would have been added unless such matter was clearly and unambiguously disclosed, either explicitly or implicitly

(2) The disclosure was what was set out in the application, a document in which the applicant disclosed his invention in a manner clearly enough and completely enough to enable it to be performed. The limitation of an invention in a particular way, might have been done so for good reason. The fact that the skilled reader would think of doing it in another way was irrelevant. "

Samsung Argument

23. Counsel for second applicant without raising the question of law however contended that the amendment and alteration of specification carried out during the prosecution of the application before the respondent No.1 has completely changed the scope of patent specification by adding an additional peripherals such as Head phone, Ear phone, Ear plug, Blue tooth device which were not disclosed in the patent specification as filed. The counsel for the applicant submitted that the patent specification as originally filed on 04.03.2002 was for the mobile phone that has the capacity of incorporating two or more SIM cards.

24. Counsel for the applicant submitted that the amendment and alteration of specification have been effected during the prosecution of the application before the respondent No.2 and respondent No.1 has completely changed the scope of patent specification by adding an additional peripherals such as Head phone, Ear phone, Ear plug, Blue tooth device which were not disclosed in the patent specification as filed.

25. The Counsel for the second applicant submitted that the respondent No.1 has amended the patent application without filing request for the amendment in such a way that the basic nature of the invention as originally filed and is granted has been completely altered from a Dual SIM card phone to a phone capable of simultaneous communication. According to the counsel, the Respondent 1 is under a duty to disclose that he was adding new matter and non-disclosure of such amounts to fraud. The counsel for Petitioner relied on following material to elaborate this position of law through the following materials:

a) Manual of Patent Practice and Procedure, United Kingdom (at page 31, clause 18.63)

b) Code of practice for Patent Applicants and Agents, IPO United Kingdom (at Point 6, at page 11)

c) Guidelines for examination, European Patent Office (at Chapter II, clause 1)

d) Manual of Patent Examining Procedure, 1.125 (b) and 608.01(q) on substitute specification

e) Manual of Patent Office Practice, Canadian Patent Office (at 19.02.01)

Respondents reply to added matter

26. In the reply statement the respondent 1 stated that the contention of the applicants that the Patent Specification as originally filed on 04.03.2002 was amended time to time up to grant is devoid of truth. The circumstances and the application form etc. will show that the Respondent who is not sponsored by any research institute and is a novice of Patent law, applied for the patent on 04.03.2002 but the Controller of Patent satisfied with his prima facie innovation, invoked S. 15 of the Act which empowers the Controller to "require the application, specification or the other documents as the case may be, to be amended to his satisfaction before he proceeds with the application...". Further, sub-section 6 of Section 57 of the Act reserves the right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions issued by the Controller beforethe grant of patent. Hence the Controller of Patents had asked for clarifications and amendments, which have been made by the Respondent as and when required, and in principle, there have been no additional claims as stated by the Applicant. The fact remains that the diagrams submitted by the Respondent along with the application were further clarified and for such clarification, amended diagrams and necessary explanations have been given by the Respondent in order to satisfy the Controller. The Controller, after application of mind and satisfaction about the documents furnished and explained by the Respondent, had granted the patent after due deliberations and demonstrations by the Respondent in person. Furthermore the communications between the Respondent and Controller of Patent will show there is no voluntary amendment to the original application dated 04.03.2002. There is nothing mala fide in the grant of patent.

27. In the reply statement it is stated that Respondent 1 has clearly explained in his prior art references about three prior arts namely [1]DE 19919389 A1 Siemens AG; [2] WO0I30097 (PCT Application) [3] WO 2001 00 3413 and highlighted the variation and thus there is no suppression of facts to the Controller of Patents. The other references are not relevant for the subject. As such there is no contravention of the Act

28. In the reply statement it is stated that reading of the application and subsequent amendment would clearly show that the subsequent amendments are nothing but a detailed version of method used in the original specification. Furthermore as per the Act, “inventive step” means a “feature of an invention” and as such the feature has also been explained in the subsequent amendment by specifically earmarking Bluetooth, headphone and earphone, plurality of headphone/earphone. It is a fact that Claim 20 clearly shows that it is not a new claim but original circuit diagram properly explained. The Claim 20 is nothing but entire scope of the invention and it is fortified in the Claim 1 to 19 as per section 10 (4) (c) of the Act. In others words Claim 20 is amalgamated statement regarding the claim and seeking protection and it is an integral part of Claim 1 to 19 and overall reading would show that it is nothing but the original claim in the application is restated.

29. In Bonzel (T.) and Anr. v. Intervention Limited and Anr. (No.3) [1991] RPC 553 at page 574 the well known test for deciding if new matter has been added has been set out clearly. According to this

“The task of the court is threefold:

(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.

(2) To do the same in respect of the patent as granted.

(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.” [Emphasis added}

Further the Court of Appeal in A. C. Edwards Ltd. V. Acme Signs and Displays Ltd [1992] RPC 131 quoted from the decision of the EPO Technical Board of Appeals in Thomson-CST (T151/84) [1998] E.P.O.R. 29 as follows ( emphasis added ):

“3. In order to determine whether or not the modification made to a claim extends the subject-matter of the patent application beyond the contents of the application as filed, it is necessary to find out whether the resulting overall modification to the contents of the application (whether by addition, modification or withdrawal) is such that the information presented to the skilled man is not derived directly and unambiguously from that which the application contained previously, even taking account of the elements which are implicit to the skilled man (Guidelines for Examination at the EPO, C-VI, 5.4).In other words, it is necessary to find out whether the new claim presented is supported by the original description.

3.1 In the case in point, the important thing is therefore not that a logical analysis of the text be carried out in order to determine whether or not the initial intention of the applicants was to limit the protection claimed to the particular combination of characteristics described and represented, but rather that it be discovered whether the skilled man reading the patent application as filed would consider that the characteristic under discussion, namely the presence of permanent magnets, is or is not a characteristic which is indispensable to the operation of the device described in the application.”

30. As Whitford J observed in Polymer Corporations patent [1972] RPC 39 at 45 :

“Explanation means making plain or making clear.” “It can make the ambiguous clear, but not the insufficient sufficient. It is therefore a question of fact in each case as to the information contained in the original specification and it requires to be further explained. The essence of explanatory amendments are in that they often make explicit what is clearly implicit to a fair minded and properly instructed person reading the document carefully as a whole, but might not be so clear in the more casual or biased reader. They are made for the avoidance of doubt, even an unreasonable doubt. The amendments shall be in a sense of the kind which is otherwise unnecessary.”

31. If we see the purpose of amendments under section 57 (6) and the limitation imposed on the amendments under section 59 we find that it is necessary, in our view to take into consideration the following:

1.) Does Section 57(6) permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material?

2.) Are all the routes for amending defects, subject to Section 59?

3.) Does even refining of description in the specification by way of explanation be held to be an amendment to cure the deficiencies that are not permissible under section 59?

32. In considering the whole question of discretion in respect of amendments under section 57 (6) in the present case it is also necessary, in our view to take into consideration the nature and extent of amendment, when they are primarily for explanation and it is in public interest to allow them, in absence of very compelling reasons to the contrary. However these amendments in any case cannot be stretched beyond the limitations imposed by section 59. The purpose of Section 57(6) is not to permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material.

33. When we apply the above tests relating to the amendment to the present case we find all the matter which was added during the prosecution of application was not merely explanatory as additional elements such as plurality of headphones/earphones jacks; a plurality of Bluetooth devices; concept of simultaneous communication with respective SIM Cards and providing a conference facility of voice signals to simultaneously enable more than one person participate in a communication were added. These elements were not disclosed in the specification even implicitly. Additional drawings relating to additional matter were also filed to support the claims for these elements. We find that effect of the added matter in the specification and claims is such that it described the matter not in substance disclosed or shown in the specification before the amendment. Further amended claims 1-20 do not fall wholly within the scope of the claims 1-4 as originally filed. We are convinced that amendments carried out during the prosecution of the application in the specification, drawings and claims extend the scope of disclosed matter and claims, which is particularly prohibited by Section 59. The applicants therefore succeed in proving that new matter has been added by the Respondent 1 during the prosecution of the application which was allowed by Respondent 2. The Respondent 2 ought to have sought for explanation from the Respondent 1. Respondent 2 ought to have applied his discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present case. Therefore, we are constrained to set aside the amendments allowed during prosecution of the application.

34. We shall now deal with the merits of the case. The counsel of both of the applicants contended that claimed invention as filed is not novel and lack inventive step and invention is a mere arrangement and rearrangement of known elements, insufficiency of description. We shall now deal with each ground.

Lack of novelty {Section 64(1)(e)

Spice mobile argument

35. The counsel for the applicant cited the following document in support of the anticipation.

US 6178335 (23.01.2001) ‘Wireless communication system

According to the counsel US335 is fora personal communication system having a plurality of removable Insertible Subscriber Identity Module (SIM) accommodated in plurality of slots in the handset. The provision of plural SIM cards in the handsets enables the user to subscribe two or more different service providers and is thereby able to remove at least one of the modules for use in another handset.

The learned counsel submitted that in US335 in the background the author has discussed about the drawbacks of the prior art using single SIM which is associated with a unit service provider and has stored therein different subscriber information. This information is transmitted to a receiving radio base station cell to obtain network access. This one SIM may be associated with the subscribers business telephone number and another with his or her personal telephone number. If a subscriber is on travel to a different geographical occasion he needs only to remove the SIM from the handset and have to take a new handset at the other location to match the radio frequency coverage of that location as the radio frequency coverage of his own handset is different.

The learned counsel further submitted that the other problem with a single Subscriber Identity Module is that multiple subscriber number service is not possible with a single SIM in the handset. Since it can only be provided with one mobile subscriber integrated digital network number for voice service per GSM standards.

The learned counsel submitted that the inventors of US335 has been able to overcome the aforesaid problems by providing a personal communication system handset having a plurality of slots wherein each one of the slots is adapted to store a corresponding one of plurality of SIMs storing different subscriber information.

The learned counsel submitted that claim 1 of the impugned patent IN214388 recites a mobile phone having provision for a plurality of current and / or modified SIM cards, a plurality of current SIM Sockets and / or modified SIM Sockets accommodating a plurality of current and/or modified SIM cards. It further relates to plurality of headphone/earphone jacks for accepting plurality of headphone and earphone plugs and plurality of blue tooth devices in order to operate simultaneous in different communication networks and allowing plurality of incoming and or outgoing calls simultaneously with said respective SIM cards.

The learned counsel submitted that features of US335 as described in the paragraphs hereinabove also teaches a mobile phone with provision for plurality of slots adapted to hold plurality of SIM cards having capable to subscribe to one or more different service providers. Further the handset as described in US335 comprises a microprocessor, a memory, a clock, a battery and transceiver couple to an antenna, an electronic switch is disposed in the handset for electrically coupling of the SIMs to the transceiver selectively in accordance with a signal received by the transceiver from one of plurality of base station cells. It is stated that the electronic switch with plurality of input ports as taught in US335 are connected to different SIM cards. US335 further discloses the ability of the handset to receive signals from different service providers even in different geographical locations.

36. The learned counsel contended that the invention as claimed in the impugned Patent No.214388 describes a mobile set which comprises plural SIM slots for accommodating SIM cards and has a processor, a clock, memory, a battery and transceiver and receivers similar to as described in US335. The applicant states that reading US335 it would be quite obvious for a person skilled in the field to extrapolate the idea of multiple SIM cards, multiple SIM sockets and communication through multiple network service providers in different geographical regions. Therefore, the subject matter of the claims of the impugned application was publicly known prior to the priority date of the impugned patent and the same is liable to be rejected on this ground.

Samsung Argument

37. The Counsel for the second applicant submitted that for the purpose of “priority date”, the present patent has two priorities. For the original priority matter 4th March, 2002 (original specification) and for newly added matter November 27, 2006 (amended specification).

38. Counsel for the second applicant relied on the following citation against novelty.

Prior Art DocumentPage No.FeatureGround
WO 99/1492197Use of several SIM cards simultaneously in a mobile phoneNovelty – Original specification and claims
 103/105Simultaneous communicationNovelty amended specification and claims
US 5987325183Dual SIM cardsNovelty – Original specifications and claims
 188Simultaneous communicationNovelty – amended specification and claims
 188Dual SIM cards and simultaneous communicationNovelty – Original and amended specification and claims
JP 2001/238284111Provides an earphone by which plurality of talkers can simultaneously take part in conversation with one mobile phoneObviousness – Claim 1 of amended specification read with other prior art documents referred to below
 112Figure 2 
WO 01/03413158Inter phone apparatus that comprises two headphones each associated with a microphoneObviousness – Claim 1 of amended specification read with other prior art documents referred to below
US 6178335198Plurality of SIM Cards in a socketNovelty amended specification and claims
DE 1991 9389122A mobile radio telephone incuding two connections to two or several access authorization modules (SIM cards)Novelty amended specification and claims
WO 2001/030097120Use of several SIM Cards simultaneously in a mobile phone Simultaneous communicationNovelty and obviousness
39. The Counsel for the second applicant compared the prior arts with the patent documents for the purpose of novelty and submitted that the impugned patent lacks inventive step, which can be analysed with the help of WO 99/41921 and JP2001238284 as shown in the table below:
Impugned PatentIN 214388Prior Art documents WO 99/41921(US 6,799,057) + JP 2001238284)COMMENTS
Filed: 4, March 2002Issued: 2, November, 2008WO 99/41921Filing date: 15, February, 1999

Publication Date: 19, August, 1999

JP 2001238284

Filing Date: 22, February, 2000

Publication Date: 31, August, 2001

WO 99/41921published before filing of IN214388JP 2001238284

Published before filing of IN214388

Claim-1:A mobile phone is to be incorporated with a provision for a plurality of current simcards and/or modified simcards, a plurality of current simsockets and/or modified simsockets for accepting a plurality of current simcards and/or modified simcards.“IMAGE”[Page 3, line 22 – 24]!

On the contrary, the control block BLK2 has a program memory unit M containing an additional software program M assigned for the multiple management of the SIM cards that are eventually inserted in the housings I and II.

WO 99/41921diagram clearly shows a plurality of simcards
Claim-1(contd.):a plurality of headphone/earphone jacks for accepting a plurality of headphone/earphone plugs and/or a plurality

of Bluetooth devices

JP 2001238284 (figure-2)“IMAGE”JP 2001238284Teaches plurality of headphones as shown in diagram
Claim-1(contd.):In order to operate simultaneously the said mobile phone in said different communication networks is presented, andWO 99/41921(Page 5, line 9-13)Advantageously, the GSM cellular terminal according to the present invention allows independent management of two or more SIM cards on one GSM cellular terminal alone. Such a management, in virtue of the availability of several transreceiver circuits, can be a simultaneous one, i.e. calls can be received or made using both or more SIM cards simultaneously.

[Claim 1]

1. A GSM cellular terminal comprising antenna means. Signal processing means, where SIM cards can be associated with the signal processing means for connection to corresponding service networks, said GSM cellular terminal being apt to host several SIM cards simultaneously and switch between them, characterized in that corresponding respective signal processing means (BLK3, BLK3) can be associated with each SIM Card.

WO 99/41921clearly anticipates the impugned patent as regards simultaneous communication.
a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective simcards.WO 99/41921[Page 5, line 9 ~ 13]Advantageously the GSM cellular terminal according to the present invention allows independent management of two or more SIM cards on one GSM cellular terminal alone. Such a management, in virtue of the availability of several transreceiver circuits, can be a simultaneous one, i.e. calls can be received or made using both ore more SIM cards simultaneously.

WO 99/41921 [Claim 1]

1. A GSM cellular terminal comprising antenna means. Signal processing means, where SIM cards can be associated with the signal processing means for connection to corresponding service networks, said GSM cellular terminal being apt to host several SIM cards simultaneously and switch between them, characterized in that corresponding respective signal processing means (BLK3, blk3) can be associated with each SIM card.

WO 99/41921anticipates the impugned patent as regards plurality of calls being communicated simultaneously.
40. The Counsel for the second applicantalso cited following documents in support of anticipation

1. WO 01/33880 (enclosed inAnnexure F) discloses a multi card device for telecommunication and a process for automatically managing telephone communication. The object of this patent is to provide a process for automatically managing multiple telephone communication items that allows exploiting a device of the above-described type in order to manage a plurality of communication providers or carriers in general, and a plurality of SIMs in particular.

2. Benefon “Twin” (enclosed in Annexure E) is a model of mobile phone introduced on December 1999 having two sim cards and two sim card holders.

3. US6,178,335(enclosed in Annexure M) dated January 23, 2001

The Counsel for the second applicant submitted that US 6,178,335 teaches a mobile phone with provision for plurality of slots adapted to accommodate plurality of SIM cards and having capability to subscribe to one or more different providers. It also teaches provision of an electronic switch with a plurality of input ports which can be connected to different SIM cards. It further discloses the ability to receive signals from different providers even in different geographical locations.

4. PT0075270B (enclosed in Annexure N)

PT 0075270B provides a telephone with multiple earphones.

5. CN 2434831 (enclosed in Annexure O)

CN2434831 discloses a double SIM card mobile telephone

6. CN1282168 (enclosed in Annexure P)

CN 1282168 discloses a dual simcard mobile telephone.

7. CN2446725 (enclosed in Annexure Q)

CN 2446725 discloses another dual SIM card mobile telephone.

8. DE 19934926 (enclosed in Annexure R)

DE 19934926 discloses a mobile telephone apparatus with more than one SIM card in which each card is selected or activated by software or hardware.

9. CN 2424582 (enclosed in Annexure S)

CN 2424582 discloses a dual card dual number mobile telephone.

10. ETSI TS 100 922 V8.0.0 (2000-2004) (enclosed in Annexure T)

Digital cellular telecommunications systems (phase 2+);

Subscriber Identity Modules (SIM);

Functional characteristics (GSM 02.17 VERSION 8.00 Release 1999)

The above mentioned document discloses mobile equipment accepting multiple SIMs (Page 11).

11. PCT/EPoo/06265,which was published on January 11, 2001 drawing priority from July 2, 1999 to Telit Mobile Terminals S.P.A. and JP2001238284 (A) published on August 31, 2001 drawing priority from February 22, 2000 specifically discloses the technology related to multiple microphone/headphone that can freely be plugged into a single jack via external adapter.

12. EP 19990109099 relates to a telecommunication device, particularly a mobile phone, comprising several reading devices connected to a control unit, for receiving several data carriers containing different calling numbers to enable the user of the telecommunication device to be called under several calling numbers using a single telecommunication device, and to place outgoing calls over the least-cost route.

13. US Patent No 6,557,753 (enclosed inAnnexure I) titled “Method, a smart card and terminals for effecting transactions through a telecommunication network “filed on May 19, 2000. This prior art teaches a method for effecting transactions through a telecommunication network by means of a telecommunication terminal provided with at least 2 smart cards reading interfaces, one of which receives a SIM smart card associated with telephony by means of a first protocol. The other for receiving a smart card for receiving without telephony. Communication facilities are added to the SIM smartcard with a set of commands. The present patent is close to the prior art in having at least 2 cards, hence obvious to the person skilled in the art.

14. European Patent No.EP0672328 (enclosed in Annexure II) titled “Digital mobile telephone system in which each subscriber is assigned a telephone number and several subscriber identify module (SIM) card “describes about a digital mobile communication system comprises a switching center (MSC), a subscriber register (HLR) connected thereto, mobile terminals, such as mobile telephones, and subscriber linked subscribers cards, such as smart cards. Each subscription is allocated a subscribers number and at least two subscribers cards adapted to be activated so as to open a mobile terminal to incoming as well as outgoing traffic when inserted therein. When one the subscribers cards is activated, the other card or cards are necessarily deactivated so as to open a mobile terminal only to outgoing traffic when inserted therein. The subscriber register (HLR) is adapted to control the activation and the deactivation of the cards by the order of the subscriber. Therefore, the present invention is obvious and hence known to the person skilled in the art.

15. DE 19919389 (enclosed in Annexure D) titled “Mobile radio telephone” published on November 02, 2000 teaches about a mobile radio telephone that includes two connections for two or several access authorization modules especially chip cards and this several access authorization can be activated optionally/simultaneously. The several access authorizations are simultaneously activated with each call set up. One of the activated access authorizations is more selectable. The prior art is close to the present invention in having two or more access authorization modules and optional/simultaneous activation several access authorization. Therefore, the present invention is obvious to the person skilled in the art.

16. WO/2001/030097 (enclosed in Annexure C) relates to a radio station which is provided with several user identification modules that are allocated to different communications networks. Said radio station is simultaneously logged into different communication networks on the basis of said different user identification modules.

17. WO 0073987 (enclosed in Annexure K) relates to a portable integrated circuit device which has a chip card that has a reduced format in comparison with standard format chip cards, comprising two parallel planar surfaces, whereby one surface has contact pads and the integrated circuit is connected to said contact pads. The invention is characterized in that the contact pads form the planar surface of the device on which the latter are placed. The invention cab be used for mobile telephones.

41. The Counsel for the second applicant submitted that Claims 2 to 9, being dependent on claim 1 are also liable to be revoked on the same grounds as mentioned above.

42. The Counsel for the second applicant submitted that Claim 10 being dependent on claim 1 relates to providing plurality of jacks for headphone/earphone; for plurality of SIM card in a single phone. In view of the claim 17 where the applicant has admitted that multiple jacks constitute an optional feature as a single jack with an external adapter can fulfill the purpose of multiple jacks is nothing more than an added accessory that do not constitute any technical advancement and hence the provision of multiple jacks do not constitute an inventive step under section 2(1)(j)(a) of the Patents Act 1970 and hence is liable to be revoked. The additional feature of provision of a key to switch between different calls is already well documented and in use and thus it does not amount any novel feature.

43.The Counsel for the second applicant submitted that Claim 11 is dependent on claim 10 as mentioned above and hence is liable to be revoked on the same grounds as mentioned above in para 12 of the instant petition.

44. The Counsel for the second applicant submitted that Claims 12 and 13 of the impugned patent relate to mere use of multiple Bluetooth devices instead of earphone/headphone jacks and such are mere replacement of headphone/earphones by known Bluetooth devices and do not constitute an inventive step under Section 2(1)(j) of the Patents Act, 1970 and hence the claims are liable to be revoked. The additional feature of provision of a key to switch between different calls is already well documented and in use and thus it does not amount to any novel feature.

45. The Counsel for the second applicant submitted that Claims 14 and 15 relate to mere reduction in dimension by cutting the plastic material which does not contribute to any functional component of a SIM Card. This being an entirely cosmetic change in the dimension of the SIM card does not involve any technical advancement whatsoever and thus is devoid of any merits to constitute an inventive step under Section 2(1)(j)(a) of the Patents Act 1970 and hence is liable to be revoked.

46. The Counsel for the second applicant submitted that Claim 16,being dependent on claims 14 and 15 as mentioned above is also liable to be revoked for the reason as mentioned hereinabove.

47. The Counsel for the second applicant submitted that Claim 17 relates to providing multiple SIM cards with multiple sockets; plurality of headphones/earphone jacks or plurality of blue tooth devices. However the claim insists that a single headphone/earphone jack that can accept a single plug with plurality of headphones/earphones connected through external adapter works equally effectively for simultaneous communication/facility of conference with different communication networks. It is pertinent to note here that in PCT/EPOO/06265 which was published on January 11, 2001 drawing priority from July 2, 1999 to Telit Mobile Terminals S.P.A. and JP2001238284 (A) published on August 31, 2001 drawing priority from February 22, 2000 specifically disclose the technology related to multiple microphone/headphone that can freely be plugged into a single jack via external adapter. In the light of the said patents as mentioned above, the subject matter of claim 17 and all dependent claims i.e. Claims 18 and 19 in the instant impugned patent are obvious to any person skilled in the art and do not constitute an invention under Section 2(1)(j) of the Patents Act 1970 being a mere workshop modification.

48. The Counsel for the second applicant submitted that Claims 18 and 19, being dependent on claim 17 as mentioned above are also liable to be revoked for the reason as mentioned hereinabove in para 17 of the instant petition.

49. In view of the aforementioned documents, the impugned patent lacks novelty and inventive step as any person skilled in the art can include multiple earphones, head phones, blue tooth devices in order to be able to send and receive signals and calls from multiple SIM cards and therefore liable to be revoked.

50. The Counsel for the second applicant submitted that It is worthwhile to mention here that the impugned patent application as originally filed contained only 4 claims. However the application as granted has 20 claims which warrants post dating of the application subject to filing of Form 13 with discretionary powers vested with the Controller of Patents. Moreover, the claims as granted go way beyond the original descriptions disclosed in the original patent application which is a further ground for the impugned patent to be revoked in toto.

Respondents Reply

51. In the counter statement the respondent submitted that the applicant plead that the product is known and already in the public domain but the applicants have not produced any documentary evidence of such knowledge and existence particularly in India. Nobody has claimed to be manufacturer or inventor of similar product or objected to the patent as manufacturer or inventor in India at the relevant time.

52. We shall now deal with citations WO 99/41921, US 5987325 and US 6,178,335 which we find are the closest prior art

1. WO 99/41921 (16.02.1998) improved GSM cellular terminal

WO 99/41921 is directed to invention relating to use of several SIM CARDS in a mobile phone.

According to the specification –

“Advantageously, the GSM cellular terminal according to the present invention allows independent management of two or more SIM cards on one GSM cellular terminal alone. Such a management, in virtue of the availability of several transreceiver circuits, can be a simultaneous one, i.e. calls can be received or made using both or more SIM cards simultaneously.

Advantageously, the various SIM cards usable with the GSM cellular terminal according to the present invention can be associated with different tariff types freely referred to a sole service provider or various service providers, anyway in compliance with the subscribers agreement activations towards the service providers chosen by the subscriber.This will ensure several flexibility and saving levels in using the services supplied by the various providers or by a single provider as described above as well as allow for possible additional performances presently not available in automatic mode. For instance, the use of several SIM cards will lead to a larger territory coverage using SIM cards from two different providers. Similarly, the coverage will also be possible in other countries using different GSM transmission standards, such as the United States. The availability of the second transreceiver device will in fact advantageously allow to preset it for its operation with a different standard.

It is obvious that many changes are possible for the man skilled in the art to the GSM cellular terminal described above by way of example, without departing from the novelty spirit of the innovative idea, and it is also clear that in practical actuation of the invention the components may often differ in form and size from the ones described and be replaced with technical equivalent elements.

The describing block diagrams of the GSM cellular terminal may change through the future technologic developments in microelectronics, which will lead through a natural integration process to the manufacture of terminals with equivalent circuitry consisting of a sole electronic component with equivalent multiple functions.

Similarly, future service provision and usage levels will also lead to a plurality of customized SIM cards, integrated on the same physical support, but the resulting diagram of the cellular terminal cannot be considered different for this reason from the one described above by way of example. Switching between integrated SIM cards on the same physical support will be performed through a special manual switch or software. The additional keyboard segment to select call transmission towards the SIM card can consist of a sole malfunction key.”

CLAIMS 1-6 are reproduced below

1. A GSM cellular terminal comprising antenna means, control means, signal processing means, where SIM cards can be associated with the signal processing means for connection to corresponding service networks, said GSM cellular terminal being apt to host several SIM cards simultaneously and switch between them, characterized in that corresponding respective signal processing means (BLK3, BLK3) can be associated with each SIM card.

2. A GSM cellular terminal according to claim 1, characterized in that said signal processing means (BLK3, BLK3) comprise signal reception and transmission means (D, D1).

3. A GSM cellular terminal according to claim 2, characterized in that said control means (BLK2) comprise program memory means (M) associated with a management program (M) of the plurality of SIM cards and of the corresponding signal reception and transmission means (D,D1).

4. A GSM cellular terminal according to claim 3, characterized in that said SIM cards can be integrated in one sold physical support.

5. A GSM cellular terminal according to claim 3, characterized in that said control means (BLK2) comprise a keyboard unit (K), which has an additional keyboard segment (K) for the transmission of signals being apt to switch between the plurality of SIM cards.

6. A GSM cellular terminal according to claim 5, characterized in that said additional keyboard segment (K) is a specific malfunction “send” and/or selection key.”

2. US5987325 (19.05.1997) Multiple SIM card phone and method

US 5987325 relates to invention for a dual SIM card and simultaneous communication:

Abstract “A telephone, such as a radiotelephone, is provided having the capability to concurrently operate with two subscriber identification module (SIM) cards. The telephone advantageously permits a single phone to have two telephone numbers associated therewith.

The specification further states that

“In accordance with the principles of invention a communications device 101 is provided with the capability to accept multiple SIM cards 105, each with their own user specific encryption algorithms, and therefore be able to provide service (in particular, to be able to accept incoming calls) for more than one user. As each different SIM card is inserted into the communications device 101 the device 101 can keep track of the encryption necessary for each user and, if necessary, register that person on the system currently providing service.”

US 325 also relates to radiotelephone (mobile phone) having the capability to concurrently operate with two subscriber identification module (SIM) cards. The telephone advantageously permits a single phone to have two telephone numbers associated therewith.

3. US 6,178,335dated January 23, 2001 Wireless communication system

On perusal of US 6,178,335 we find it teaches a mobile phone with provision for plurality of slots adapted to accommodate plurality of SIM cards and having capability to subscribe to one or more different providers. It also teaches provision of an electronic switch with a plurality of input ports which can be connected to different SIM cards. It further discloses the ability to receive signals from different providers even in different geographical locations

53. Further US335 also teaches a mobile phone with provision for plurality of slots adapted to hold plurality of SIM cards having capable to subscribe to one or more different service providers. The handset as described in 214388 and in US335 have a microprocessor, a memory, a clock, a battery and transceiver couple to an antenna, an electronic switch. The electronic switch with plurality of input ports as taught in US335 are connected to different SIM cards. This switch is disposed in the handset for electrically coupling of the SIMs to the transceiver selectively in accordance with a signal received by the transceiver from one of plurality of base station. Impugned Patent No.214388 describes a mobile set which comprises plural SIM slots for accommodating SIM cards and has a processor, a clock, memory, a battery and transceiver and receivers similar to as described in US335. US335 further discloses the ability of the handset to receive signals from different service providers even in different geographical locations which is also a feature of IN 214388. Therefore, we are inclined to agree that the subject matter of the claims of the impugned patent was anticipated by US 335 and the claimed invention was publicly known prior to the priority date of the impugned patent. The patent 214388 is liable to be rejected on this ground alone.

54. As we have set aside the amendments we find the invention as originally claimed is for a mobile phone having provision for incorporation of two or more than one SIM cards wherein two (or) more than one SIM card to receive and/or send two signals or more than one signal at a time (simultaneously).

55. On perusal of the WO 99/41921, US 6,178,335 and US 5987325 which we find is the closest prior artto the impugned patent we are inclined to agree that the invention as claimed in originally filed application is not novel. As we have already set aside the all amendments carried out during processing of the application see para ante we are not dealing with the other citations though relevant relating to anticipation and inventive step as we are considering the impugned patent application as originally filed with 4 claims only. In the view of the above analysis and findings the impugned patent is liable to be revoked on this ground alone.

Lack of inventive step Section 64(1)(f):

Spice Mobile argument

56. The counsel for the first applicant argued that the alleged invention is nothing but combination of known components which discharge their own known functions of given results which are wholly expected and does not require any innovation. The principle object of the invention is to economise on the device part by using a single handsets / earsets and alternatively Bluetooth devices which also deal with speed of communication. He further submitted that the benefits claimed has no evidence as to what is the data on economy vis-à-vis in low cost phone available in the market. The use of multiple SIM cards to communicate with different networks in a cellular phone is not new. The use of Bluetooth or headphone / earphone to use the phone from a given distance is also known. The only inventive feature is the provision for multiple headphone / earphone or bluetooth so that plurality of users may use the same phone. The applicant submitted that there cannot be any technical advancement when the patentee admittedly uses all known components and features but only provides multiple independent systems in a single handset and different users can use the same by the use of headphone / earphone or Bluetooth.

57. According to the learned counsel WO99/41921 published on 19th August, 1999 teaches a GSM cellular terminal comprising antenna means, control means, signal processing means, where SIM cards can be combined with the signal processing means for connection to corresponding service networks, said GSM cellular terminal being apt to host several SIM cards simultaneously and switch between them. WO‘921 further teaches “It is the object of the present invention to solve the above drawbacks and provide a GSM cellular terminal having a more efficient and improved performance compared to the solutions already known in this frame, it is the main object of the present invention to provide a GSM cellular terminal, which is apt to allow a simultaneous use in transreceiving mode of at least two service types associated with respective SIM cards. In order to achieve such aims, it is the object of the present invention to provide a GSM cellular terminal incorporating the features of the annexed claims, which form an integral part of the description herein.”

58. Therefore the counsel for first applicant contented that WO 921 teaches the basic foundation of the alleged invention that is the provision for multiple SIM cards to independently communicate with different communication networks.The counsel for first applicant further submitted that the other features of the claimed mobile phone are directed at using the phone as a telephone exchange so that several people may simultaneously use the phone through the different SIM cards with the help of the headphone / earphone or Bluetooth device.

59. According to the learned counsel the US Patent No.5878351 published on 2nd March, 1999 teaches the use of headphone / earphone in a mobile phone. The invention in this prior art relate to “this invention relate generally to radiotelephones and, in particular, to radiotelephones or mobile stations capable of operation with a digital cellular network.” Further US351 teaches the use of earphone with cell phone and therefore even the use of the headphone / earphone by the patentee for each individual user is not a new feature. The relevant passage in 351 reads

“A user interface includes c conventional earphone or speaker 17, a conventional microphone 19, a display 20, and a user input device, typically a keypad 22, all of which are coupled to the controller 18. The keypad 22 includes the conventional numeric (0-9) and related keys (#, *) 22a, and other keys 22b used for opening and mobile station 10. These other keys 22b may include, by example, a SEND key, various menu scrolling and soft keys, and a PWR key. The mobile station 10 also includes a battery 26 for powering the various circuits that are required to operate the mobile station.”

60. According to the learned counsel the use of Bluetooth with mobile phone is known. US Patent No.6339706 dated 15th January, 2002 this patent is directed towards use of Bluetooth technology. It teaches Bluetooth technology was introduced to provide pervasive connectivity especially between portable devices like mobile phones, laptops, personal digital assistants (PDAs), and other nomadic devices up to a range of approximately 10-100 meters. This system applies frequency hopping to enable the construction of low-power; low cost radios with a small footprint. The system supports both data and voice. The latter is optimized by applying fast frequency hopping in combination with a robust voice coding. The fast frequency hopping has a nominal rate of 800 hops per second (hops/s) through the entire 2.4 GHz ISM band, which is 80 MHZ wide. The system also uses Forward Error Correction (FEC) to limit the impact of random noise on long distance links. Thus the last limb of the alleged invention being the use of a bluetooth device in mobile phones is also found in prior art. US706 further teaches the limitation of the device in terms of distance which is about 10 to 100 meters. In other words, the patentee claims an invention of a mobile device to be used by multiple users independently but such users cannot move away from the phone by a distance which is function according to its objectives all the plurality of people have to move in a group wherever they go and wherever they are so as to avail of the benefit of the phone. This is a ridiculous and a absurd condition and therefore, in the first place the invention claimed by the patentee is not a mobile phone at all.

Samsung Argument

61. In respect of inventive step the Counsel for the second petitioner relied on the mosaicing of some of the following documents:

-WO 99/41921

-JP 2001 238284

-WO 01/3413

-US 5987325

-DE 1991 9389

62. The Counsel for the second applicant submitted that the impugned patent lacks inventive step, which can be analyzed with the help of US 5987325 and WO 01/03413 as shown in the table below:

Impugned Patent IN 214388Prior Art documents WO 01/03413+ US 5987325COMMENTS
Filed: 4, March 2002Issued: 2, November 2008WO 01/03413Filing date: June 29, 2000

Publication date: January 11, 2001

US 5987325

Filing date: May 19, 1997

Publication date: November 16, 1999

WO 01/03413published before filing ofIN 214388US 5987325

published before filing ofIN 214388

Claim-1:A mobile phone is to be incorporated with a provision for a plurality of current simcards and/or modified simcards, a plurality of current simsockets and/or modified simsockets for accepting a plurality of current simcards and/or modified simcards.US 5987325 (Independent Claim 12)A telephone comprising:

means for accepting a first SIM card, said first SIM card containing a first universal identification number;

means for accepting a second SIM card, said second SIM card containing a second universal identification number.

SIM card reading circuitry for reading said first and second universal identification numbers from said first and second SIM card;

Circuitry for coupling said telephone to a telephone system; and

a controller,……….

Claim 1 of US 5987325having a plurality of simcards.
Claim-1 (contd.):A plurality of headphone/earphone jacks for accepting a plurality of headphone/earphone plugs and/or a plurality of Bluetooth devicesWO 01/03413 (Abstract)Telephone apparatus comprises two headphones (11) each associated with a microphone (12) and an electronic circuit (13) for sending on command the audio signal of each microphone to the headphone associated with the other microphone. The electronic circuit comprises a connector (20) for connection with a corresponding connector (21) of a cellular telephone (19) for exchanging on command with the latter the respective audio signals in such a manner as to send to the telephone the audio signal of at least one of said microphones for its transmission and to send to at least one of said two headphones the audio signal received by the telephone. The electronic circuit comprising in addition means (15,16,17,18) of sending to at least one of said headphones a call signal received from the telephone and commands (15,16,18) for sending to the telephone a signal for activation of the communication in response to a received call.WO 01/03413Teaches plurality of headphones
Claim-1 (contd.):In order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective simcards.US 5987325 (Column 4, Line 47-56)It may be that the phone could listen for rings on more than one network, limited to perhaps two at a time or only certain combinations. For example, a dual receiver phone may be able to listen to two separate systems at the same time. In another example, systems that are time division multiplexed, such as GSM, PCS, and TDMA, may have ring alerts arriving at different times such that a single receiver could time multiplex itself and possibly keep track of rings from several systems at the same time.WO 99/41921 clearly anticipates the impugned patent as regards simultaneous communication.
WO 01/3413

WO 01/3413 is directed to interphone apparatus that comprises two headphones/associated with a microphone –

“(57) Abstract: An interphone apparatus comprises two headphones (11) each associated with a microphone (12) and an electronic circuit (13) for sending on command the audio signal of each microphone to the headphone associated with the other microphone. The electronic circuit comprises a connector (20) for connection with a corresponding connector (21) of a cellular telephone (19) for exchanging on command with the latter the respective audio signals in such a manner as to send to the telephone the audio signal of at least one of said microphones for its transmission and to send to at least one of said two headphones the audio signal received by the telephone. The electronic circuit comprising in addition means (15,16,17,18) of sending to at least one of said headphones a call signal received from the telephone and commands (15,16,18) for sending to the telephone a signal for activation of the communication in response to a received call.”

63. The Counsel for the applicant argued that the concept of multiple SIM cards and simultaneous communications along with use of headphones and microphones is obvious in a single casing. The combined document teaches the state of art claimed by the respondent which relates to the dual SIM Cards and simultaneous communication using headphones.

JP 2001/238284

JP 2001/238284 discloses and provides an ear phone by which a plurality of talkers can simultaneously take part in a conversation with one mobile phone.

“Abstract of JP 2001238284 (A)

PROBLEM TO BE SOLVED: To provide an earphone microphone for mobile phone by which a plurality of talkers can simultaneously take part in a conversation with one mobile phone 10. SOLUTION: A receiver 26 and a microphone 28 are electrically connected via a cord 24 to an earphone microphone plug 22 that can freely be plugged in/out of an earphone microphone jack 12 the mobile phone 10, the microphone 28 is disposed so that it is placed at the mouth of a user when the receiver 26 is mounted on the ear and a sub earphone microphone jack 30 is provided to a cord 24. A sub receiver 38 and a sub microphone 40 are electrically connected via a sub cord to a sub earphone microphone plug 34, and the sub microphone 40 is disposed so that it is ced at the mouth when the sub receiver 38 is mounted on the ear, When the sub earphone microphone plug 34 is inserted to the sub earphone microphone jack 30, the receiver 26 and the sub receiver 38, and the microphone 28 and the sub microphone 40 are connected electrically respectively in parallel to the earphone microphone plug 22.”

WO 01/3413 and US 5987325:

US 5987325 is directed to a dual SIM card and simultaneous communication:

“A telephone, such as a radiotelephone, is provided having the capability to concurrently operate with two subscriber identification module (SIM) cards. The telephone advantageously permits a single phone to have two telephone numbers associated therewith.

“In accordance with the principles of invention a communications device 101 is provided with the capability to accept multiple SIM cards 105, each with their own user specific encryption algorithms, and therefore be able to provide service (in particular, to be able to accept incoming calls) for more than one user. As each different SIM card is inserted into the communications device 101 the device 101 can keep track of the encryption necessary for each user and, if necessary, register that person on the system currently providing service.”

64. The Counsel for the applicant relied on the following authorities In support of mosaicing of publications:

(i)Technograph Printed Circuits Ltd. v. Mills and Rockley (Electronics) Ltd. [1972] RPC 346

(ii)Glaverbel S.A. v. Dave Rose and ors. MIPR 2010 (2) 0046

(iii)Bilcare Limited v. Amartara Private Limited, MIPR 2007 (2) 42

Respondents reply

65. According to the counter statement of the respondent, it is stated that at the outset in a mobile phone only one socket with one SIM was in use. But any SIM is to be connected with a tower (service provider) and different companies are processing and operating such towers. The SIM Cards are supplied by the individual companies and they are operated only in their trade names, eg. Airtel, Vodofone etc., which cards recognize only the respective mobile service providers. The Applicant is taking advantage of the general nomenclature namely ‘plural SIM cards”, but the innovation of the respondent is entirely different. The contention of the applicant and references made by the applicant are not clearly earmarked and the applicant has produced only block diagrams, allegedly submitted in prior arts. As such the above claims of the respondent are innovations which have been conveniently omitted by the applicant and instead, the applicant has merely banked upon the nomenclature “dual SIM cards”.

66. According to the counter statement of the respondent the invention indeed satisfied the requirement of invention as well as the inventive step. The respondent specifically denies the averments that the invention under the subject patent is a workshop improvement. Therefore the grounds under Section 64 (1) (d), (f), (h) and (i) do not hold good.

67. We agree with the counsel for second applicant that JP 238284 when read with WO 99/14921 and WO 01/3413 when read with US 5987325 teaches the use of multiple SIM cards and the simultaneous communication along with use of head phones and microphones in a single casing and therefore render the IN214388 as granted obvious. This ground of revocation also succeeds on merits.

Other grounds:

(a) Insufficiency of description

Spice Mobile argument

68. The counsel for the first applicant submitted that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed. The mobile phone described in the patent and claimed as the alleged invention, its features as well as the method of use of the same has not been sufficiently and fairly described. There is no enabling disclosure in respect of the interfacing circuit. From the description of the interfacing circuit it is not clear that how multiple 81M cards are connected to the interfacing unit and how radio frequency signals are transmitted 'from the inter facing unit to the network service provider. Thus a manufacturer of cell phone will be unable to make the claimed cell phone. Claim 1 of the impugned patent has granted plurality of current SIM Cards or modified SIM Cards, Plurality of current SIM Sockets or modified SIM Sockets, using plurality of headphone/earphone jacks for Simultaneous operations in different communication networks, plurality of bluetooth devices. The original patent specification nowhere discloses the use of Plurality of SIM cards for accepting of plurality of SIM cards, or other devices in order to operate simultaneously said mobile phone, a different communication network. The patent specification filed with the original set of claims only refers to a mobile phone with a provision for multiple SIM cards. The Respondent No.1 has disclosed in the complete specification that a mobile phone having provision for incorporation of "A plurality of current simcards and/or modified simcards, a plurality of current simsockets and/or modified simsockets for accepting a plurality of current simcards and/or modified simcards wherein signals can be communicated among different mobile communication network simultaneously without any delay". However, how, signals communicate without any delay is not disclosed with any circuit diagram or flow diagram. The arrangement of conference call in the mobile phone is disclosed under the heading "The facility of conference is achieved by two ways in a mobile phone". However, the patent specification does not fully describe how the conference call is arranged between multiple users i.e. it is not clear whether all the users are able to participate to attend a single call or not. Nowhere in the specification discloses whether all the users can simultaneously handle a single call or not.

Samsung argument

69. The Counsel for the second applicant contended that the respondent has not disclosed the best method of working of the invention and the patent specification does not specifically and fairly describe the invention. According to the Counsel, respondent has failed to disclose as to how the circuitry of the mobile phone is modified so as to accommodate plurality of SIM cards (page 46). It is to be noted that simultaneous communication seems to be the crux of the invention and the patentee has not disclosed how the RF circuitry changes from one to another and how the transreceivers (RF) are designed for transreceiving the plurality of mobile service providers towers simultaneously. The Counsel further submitted that it is the unequivocal principle of law that onus of stating the specification clearly and distinctly, including the nature and limit of invention .is on the patentee. If the language used by the Patentee is vague and obscure, no patent shall be granted and it is immaterial whether the obscurity in the language is due to design or carelessness or want of skill. He relied on the following authorities:

“(i) Generics (UK) Limtied and others Vs. H Lundbeck A/S, [2009] UKHL 12

(ii) The Alleppy Company Ltd. Vs. The Controller of Patents, Veliyil Velayudhan Pavithran, Lakshmi Sadanam and the Travancore Mats and Mattings Co., M.P. No.9.2009 in TRA/7/2008/PT/CH.

(iii) Press metal corporation Limited Vs. Nausheer Sorabjee Pockkhannawallh – AIR 1983 Bom 144”

Respondents Reply

70. The respondent in the written statement submitted that it is crystal clear from the diagrams and work sheet that the workability is amply described and methods are sufficiently enumerated and viability of manufacturing is promptly highlighted. The applicant blows hot and cold in his application and interprets the provisions of law to suit its convenience by relying upon documents and circumstances which are not relevant to the facts of this case. In paragraph 40 it is stated that ‘as contained in the complete specifications are not by themselves sufficient to enable a person in India possessing average skill in and average knowledge of, art to which the invention relates, to work the invention or that it does not disclose the best method of performing it…”. In paragraph 40 [3] it has been stated that ‘for such reason, a manufacturer of a cell phone will not able to make the cell phone described. The applicant blows hot and cold, while at one place the applicant states that the subject patent cannot be manufactured by any company or marketed, whereas the applicant claims itself as interested person. It is the definite case of the applicant that it is dealing in mobile phones, but nowhere has it been stated that it is dealing in double SIM phones and there is only a general allegation that dual SIM phones are available in the market.

(b) Subject matter not maintainable under Section 3(f)

Spice Mobile argument

71. The counsel for first applicant argued that the subject of any claim of the complete specification is not an invention within the meaning of this Act. In the alleged invention each of the SIM cards is placed in independent SIM slot and each of the SIM cards communicates independently of the other SIM cards. The Respondent 1 has failed to highlight any technical benefit by the use of the plurality of SIM cards attached to plurality of processors and therefore it is merely a case of juxtaposition and thus not patentable. It is well settled law that combination of two old machines where the function of each of the individual components were known and in the combination of the said components also performed their own individual functions without depending on the other. Therefore, the components forming part of the alleged inventive step do not actually give any benefit in technical combination of the various components. In the case of Williams V. Nye reported in 7 RPC 62 it was held at the trial ”that the patent was a combination of old things in the simplest possible manner, that there was not sufficient invention and that the patent was invalid. Held affirming the judgment of the Court below, that there was not sufficient invention to constitute subject matter.”

Samsung argument

72. The Counsel for the applicant submitted that -

““3. What are not inventions – The following are not inventions within the meaning of this Act,”

(f)the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;”

The learned counsel contented that the use of plurality of SIM Cards and headphones/ microphones, Bluetooth devices in a single casing is nothing but a mere arrangement and re-arrangement of known integers functioning independently over one another. On this ground alone, the patent ought to be revoked.

Respondents reply

73. In the written submission respondent submitted that it is crystal clear from a reading of S. 2 [j] that invention means a "new product or a process involving an inventive step and capable of industrial application". Section 2 [ja] defines an inventive step as "feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the person skilled in the art." In this case, the patent granted as an invention squarely falls on the definition given above. Hence the contention of the applicant that it is only a re-arrangement of existing components or workshop improvement does not hold water.

(c) Amendment made by False representation and suggestion (Section 64(1)(j)) :

Spice Mobile argument

74. According to the learned counsel the alleged invention is wholly based on the alleged inventive step that multiple SIM cards are provided in one device which can communicate - independently under different networks without requiring independent handsets but only with the use of plurality of headphone/earphone plugs. Such a construction is absurd and such a device can not be made and used in respect of a mobile phone if there are multiple users using the same handset containing multiple sim cards. That clearly defeats the mobility of a mobile phone and does not fall within the known meaning of a mobile phone. The device sought to be claimed is a mini telephone exchange which again cannot function as a telephone exchange because more than one sim card cannot be used for 'the purpose of effective communication at the same point of time. While the patent examiner had required to produce proto type of the product, but there is nothing on record to show that such proto type was produced. Moreover in the proceedings between the petitioner and the respondent No.1 before the Customs Authority, New Delhi where infringement of the impugned patent was alleged, the order passed by the Customs Authority indicated factual findings in para.35 which reads "When asked from Mr. James g. Prakash, representative of the Patent holder during the course of personal hearing on 08.04.2009 to show that how the use of multiple headphones or multiple Bluetooth devices is possible for the purpose of simultaneous communication. Shri Prakash could not demonstrate but on the contrary said that by altering the construction of the models such simultaneous communication would be possible I find that above two models cannot be used for simultaneous communication with the use of multiple headphones of multiple Bluetooth device., If find that Shri Prakash could not produce prototype of the patented product.”

75. The learned counsel stated that the respondent No.1 also did not produce a prototype before this Hon'ble Board. It is clear beyond doubt that the alleged invention being a fiction incapable of being translated into a viable technology is apparent from the specification itself and the respondent authorities ought to have appreciated the same before granting the impugned patent. Thus the patent has been obtained by false suggestion and representation without the respondent authorities verifying the veracity of the claims made therein. The impugned patent is liable to be dismissed on this ground alone.

Samsung Argument

76. Counsel for second applicant submitted that the patent as granted on 4th March 2002 has total 20 claims. Claims 1 to 9 relate to provision of (i) plurality of current SIM Cards or modified SIM Cards, (ii) Plurality of current SIM Sockets or modified SIM Sockets, using plurality of headphone/earphone jacks for simultaneous operations in different communication networks. Claims 10 and 11 relate to the mobile phone where provision is made for plurality of earphone/headphone jacks. Thus according to one aspect one user of the SIM card uses one earphone/headphone to communicate on that SIM card and a second user of a second SIM card uses another earphone/headphone to communicate on the second SIM card. Thus two users are able to communicate independently on two different SIM cards. Likewise, the alleged invention contemplates plurality of such earphone/headphone corresponding to the total number of SIM cards. Claims 12 and 13 relate to the mobile phone where provision is made for plurality of Bluetooth devices instead of earphone/headphone. The mode of use of the Bluetooth device is same as the earphone/headphone but in the case of Bluetooth it is a wireless communication. Claims 14 to 16 relate to modified SIM cards and its application. Claims 17 to 19 relate to using single jack with external adaptor using (i) plurality of current SIM Cards or modified SIM Cards, (ii) Plurality of current SIM Sockets or modified SIM Sockets for simultaneous operations in different communication networks.

77. According to the counsel, the Respondent 1 is under a duty to disclose that he was adding new matter and non-disclosure of such amounts to fraud. The counsel for Petitioner relied on following materials to elaborate this position of law:

a) Manual of Patent Practice and Procedure, United Kingdom (at page 31, clause 18.63)

b) Code of practice for Patent Applicants and Agents, IPO United Kingdom (at Point 6, at page 11)

c) Guidelines for examination, European Patent Office (at Chapter II, clause 1)

d) Manual of Patent Examining Procedure, 1.125 (b) and 608.01(q) on substitute specification

e) Manual of Patent Office Practice, Canadian Patent Office (at 19.02.01)

78. The counsel submitted that the provisions of Section 64(1)(j) when read with 64(1)(o) clearly establishes that the act of the Respondent 1 of intentionally making false statements in the original patent specification and subsequently modifying the nature of the invention completely without a single explanation in the responses made to the examination reports amounts to false suggestion and representation. The counsel further argued that so much so the amendments (addition of new matter) made by the Respondent 1 are clearly made by fraud and deceit on the patent office by making the Patent Office into believing that the concept of simultaneous communication was disclosed in the patent specification and therefore the amendments were justified. He submitted that in this regard it is not out of place to mention that according to “Suppression Veri Suggestio Falsi” the suppression of the truth is the suggestion of falsehood. On these grounds alone, the patent ought to be revoked.

79. The counsel further asserted that the same objective and features have been repeated in Paras 2 and 3 on Page 2 of the specification. According to the counsel although Respondent 1 has retained the same Figure 1 in the amended specification as originally filed but the description in relation to Figure 1, as evident on Page 48, has been completely changed to simultaneous communication. According to the counsel in view of the above mentioned reasons, the Respondent 1 has not only falsely represented to the Patent Office that his invention is novel but has also by making such statements amended the specification drastically such that the invention as disclosed in the original application has been completely modified.

Respondents reply

80. In the reply statement the respondent 1 stated that the contention of the applicants that the Patent Specification as originally filed on 04.03.2002 was amended time to time up to grant is devoid of truth. The circumstances and the application form etc. will show that the Respondent who is not sponsored by any research institute and is a novice of Patent law, applied for the patent on 04.03.2002 but the Controller of Patent satisfied with his prima facie innovation, invoked S. 15 of the Act which empowers the Controller to "require the application, specification or the other documents as the case may be, to be amended to his satisfaction before he proceeds with the application...". Further, sub-section 6 of Section 57 of the Act reserves the right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions issued by the Controller before the grant of patent. Hence the Controller of Patents has asked for clarifications and amendments, which have been made by the Respondent as and when required, and in principle, there have been no additional claims as stated by the Applicant. The fact remains that the diagrams submitted by the Respondent along with the application was further clarified and for such clarification, amended diagrams and necessary explanations have been given by the Respondent in order to satisfy the Controller. The Controller, after application of mind and satisfaction about the documents furnished and explained by the Respondent, had granted the patent after due deliberations and demonstrations by the Respondent in person. Furthermore the communications between the Respondent and Controller of Patent will show there is no voluntary amendment to the original application dated 04.03.2002. There is nothing mala fide in the grant of patent.

81. We have already dealt with this issue of added matter in the para ante. However we are not convinced that patent was obtained by false suggestion or fraud. Hence this ground of the petitioners fails.

(d) Breach of Section 8

82. The counsel for the both of the applicants submitted that the respondent 2 had specifically required the Respondent 1 to furnish details of corresponding foreign applications. The respondent 1 did not comply with the requirement and also did not even file the statement and undertaking under Section 8.

Spice Mobile Argument

83. Counsel for the first applicant submitted that filing of statement on Form 3 is mandatory and obligatory under Section 8 read with Rule 12. The counsel for the applicant argued that the respondent 1 did not provide details of corresponding patent applications as required under Section 8 (1) undertaking on Form-3.The respondent 1 has suppressed the information relating to withdrawal of an application filed in Japan and also the information relating to the application made in Australia which did not mature in the patent. The counsel for the applicant further submitted that Respondent 1 was under an obligation under Section 8 (2) of the Indian Patent Act to submit the search and examination report issued on the corresponding foreign applications. The counsel further submitted that Rule 12 relating to implementation of provisions of section 8(2) have not been complied with by the respondent as the ISR and IPER information available with applicant were not submitted under section 8(2). The International search report which was published on 12th September, 2003 in respect of PCT/IN2003/000044 with search report dated 8.1.2005 and 5.11.2006 was not submitted to the respondent 2 during the examination. The patent is thus liable to be rejected on this ground alone.

84. Counsel for first applicant relied on Chemtura Corporation Vs. Union of India (UOI) and Ors., reported in MANU/DE/1880 where the Hon'ble Delhi High Court held

''as far as Section 8(1)(a) of the Act is concerned, there was a breach thereof committed by the plaintiff in not setting out the detailed particulars in the application and by suppressing the material facts. As regards the undertaking in terms of Section 8(1 ) (b) of the Act the Controller was required to be kept informed in writing from time to time of the development in the applications filed elsewhere. This was not done. Section of the Act was also not complied with since the plaintiff did not furnish to the Controller of Patents, when asked by him, the details relating to the developments in the application filed for grant of a patent elsewhere. The furnishing of the international search report at the time of filing the national phase application was not in compliance with the requirement of furnishing information on the search and examination reports as envisaged by Section of the Act."

“… While Section 8(1)(a) of the Act required the applicant to furnish a statement on the applications made in other countries, Section 8(1 )(b) required the applicant to give an undertaking that up to the date of grant of patent in India (or as earlier worded up to the date of the acceptance of his complete specification filed in India) the applicant would keep the Controller informed in writing from time to time of detailed particulars as required in Clause (a) in respect of every other application relating to the same or substantially the same invention if any filed in any country outside India subsequent to the filing of the application referred to in the above said clause within the prescribed time. Even under the Form 3 as was prevalent on the date of filing the application, an undertaking had to be given to the effect that up to date of acceptance of the complete specification filed in connection with our abovementioned application, we would keep the Controller informed in writing from time to time of the details regarding the applications for patent filed outside India from time to time for the same or substantially same invention within three months from the date of filing such application. Therefore this did not hinge on the Controller asking for particulars but the applicant keeping the Controller informed from time to time. The expression time to time meant a periodicity of furnishing information akin to updating the Controller on the current status of the applications filed in other countries. It is not, as suggested by the learned Senior counsel for the plaintiff, a mere furnishing of information whether the application is pending or dismissed.”

Samsung argument

85. The Counsel for the second applicant submitted that the respondent 1 has not complied with the mandatory requirements of Section 8 at the time of filing of the patent application and thereafter.

86. The Counsel for the second applicant submitted that the respondent 1 has filed a PCT application on 3rd March, 2003 and an international search was conducted by the Austrian Patent Office. This was not disclosed by the Respondent 1 to the Patent office. The said search report cited the following documents for the purpose of novelty and invention:

-DE 1991 9389 A1 (SIEMENS AG)

-WO 01/30097 A1 (SIEMENS AG)

-JP 2001 238284A (TK KIKAKU KK et al.)

-WO 01/30314 A2 (TELI T MOBILE TERMINALS SPA)

-WO00/73987 A (GEMPLUS)

87. The Respondent 1 miserably failed in complying with requirements of Section 8 and therefore the Patent ought to be revoked.

88. To support this argument counsel relied on 2009 (41) PTC 260 (DEL) - Chemtura Corporation Vs. Union of India – where it was held that

“36. Section 8 of the Act is titled Information and undertaking regarding foreign applications. Section 8(1)(a) requires an applicant for a patent to file along with his application a statement setting out the detailed particulars of the application filed by such applicant in any country outside India in respect of the same or substantially the same invention. Section 8(1) (b) requires such applicant to also furnish an undertaking that up to the date of the grant of patent in India he will keep the Controller of Patents informed in writing from time to time of detailed particulars as required under Clause (a) in respect of such application made in a country outside India. The corresponding rule is Rule 12(1) of the Rules which states that the statement and undertaking to be filed in terms of Section 8(1) of the Act will be in Form 3. Prior to the making of the present Rules in 2003, the earlier relevant Rule was Rule 13 which was to the same effect with slight changes in Form 3

37. xxxxxxx

38. xxxxxxx

39. The matter does not end there. Section 8(2) reads as under:

8. Information and undertaking regarding foreign applications. (1) (2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.”

Respondents reply

89. In the reply statement the respondent stated that -

“the contention of the Applicants that S. 8 [1] and 8 [2] of the Act is not complied with is not based on any relevant documents. .The Applicant has failed to prove its contention by suppressing the material facts. It is an admitted fact that the application for patent was made on 04.03.2002; it is the definite case of the Applicant also that on that date, no similar petition of the Respondent was pending prosecution in any other country. S. 8 [1] reads: "Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person, an application for patent in any country outside India, in respect of the same or substantially the same invention or where to knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application. As such there is nothing to be filed along with his application since the Respondent never filed any application in any country for patent of the same or similar invention. It is pertinent to note that an application was filed by the Respondent before PCT Cell at Chennai and that was forwarded by the same Patent Office to the WIPO for getting priority if necessary. Thus no application for patent was filed in any country and prosecuted at any point of time by the Respondent specifically. It is not correct to state that Japan gave a status as withdrawn on 21.06.2006 on the other hand it reported that "PCT international application, It was not subject to publication in Japan because your PCT international application has not entered into the national phase in Japan within the prescribed period, i.e. 30 months from the priority date". In Australia also it has been stated that the Respondent had not entered the national phase and hence the application has lapsed; thus it is crystal clear except for getting priority, PCT was approached and the Respondent never applied to any country for patent and hence there is no violation of provisions of Section 8 of the Act.”

90. In the present case since we are revoking the patent on the ground of anticipation and lack of inventive step, it is not necessary to deal with the other grounds such as insufficiency, mere combination and violation of Section 8.

91. In view of the analysis and finding as stated above the patent number 214388 is revoked and respondent 2 is directed to remove this patent from the register of patents. The ORA/17/2009/PT/CH and ORA/31/2009/PT/CH are allowed with costs of Rs.5,000/- each.


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