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Pronounced on October 4, 2024
Overview:
The Hon’ble Madras High Court has delivered its ruling in the case of M/s.STEEL STRIPS WHEELS LIMITED ((T) OP(PT) No.60 of 2023 (ORA/2/2021/PT/CH)), wherein M/s.STEEL STRIPS WHEELS LIMITED (Petitioner) sought the revocation of a patent granted to WHEELS INDIA LIMITED for Vehicle Wheels Having Non-Constant Thickness Rims. The judgment, delivered by Justice SENTHILKUMAR RAMAMOORTHY, addresses key aspects of patent law, particularly issues surrounding the patentability criteria and the concept of a "person interested."
Petitioner’s Claims:
M/s. STEEL STRIPS WHEELS LIMITED filed the petition under Section 64 of the Patents Act, 1970, presenting these key arguments:
Lack of Novelty: Claimed that prior arts (D1–D3) already disclosed similar structures.
Obviousness: Argued that a person skilled in the art (PSITA) could arrive at the invention by following prior art logic.
Insufficient Disclosure: Alleged that the patent specification lacked clarity about key design features, especially the “cylindrical section.”
Not Fairly Based: Claimed the patent’s monopoly extended beyond what was actually disclosed.
Respondent's Defense:
WHEELS INDIA LIMITED (Respondent) defended the patent, claiming that the invention discloses the best method of performing or working the invention. The respondent also claimed that that the invention is novel since that cited prior arts do not teach a wheel comprising a rim of non-constant thickness and centre disc attached to the rim.
Furthermore, the respondent refuted the contention of lack of inventive step and mentioned that the problem addressed by the impugned invention is to resolve the issue of fatigue failure caused due to cyclical loads which cannot be overcome by the conventional technology.
Furthermore, the respondent argued that the petitioner had not adduced any evidence to substantiate its assertion that it is falls within the scope of the expression 'person interested'.
Court's Findings:
The Hon’ble Court first examined whether the petitioner qualifies as a "person interested" who is competent to challenge the patent granted to WHEELS INDIA LIMITED under Section 64 of the Patents Act, 1970.
Section 2(t) of the Act defines a “person interested” as someone who is engaged in or promoting research in the same field as the invention.
The court relied on the Hon’ble Supreme Court's ruling in the Aloys Wobben, which clarified that the term ‘person interested’ is not static and expression 'person interested' would embrace any person with reasonable and tangible interest in the matter. The Hon’ble Court found that the petitioner is an entity under the name and style of “Steel Strips Wheels Limited”, and this corporate name is, at a minimum, suggestive of the nature of business. The petitioner adduced evidence in form of granted and applied for patent basis upon which the Hon’ble Court concluded that the petitioner fulfils the requirements of a 'person interested'.
The Hon’ble Court further ascertained clarity in scope of claims. After rigorous analysis, the Court clearly explains that the core of the invention is about making a wheel rim with non-uniform thickness to address fatigue failure without adding too much weight. The Hon’ble Court stresses that the location of the cylindrical section (the thickest part) is essential to the invention because it defines how the stress and weight are distributed. Without clearly identifying where this cylindrical section is located, a skilled person could not properly work the invention or even determine the scope of the monopoly granted by the patent. Specifically, it notes that Claims 8 and 11 do not clearly define this location, making those claims defective. However, Claims 1 and 9 (and dependent claims) were clear because they properly located the cylindrical section and were supported by Figure 3 and Table 1 of the patent specification. Hence, on account of the lack of clarity on the location of an essential feature of the invention in claims 8 and 11, the Hon’ble Court stated that the grant in respect of these claims is liable to be revoked. Further, regarding claim 13, the Hon’ble Court exercised its discretion under Sections 58 and 59 of the Patents Act and directed that claim 13 be amended to align with the core invention disclosed in claims 1 and 9. Thus, claim 13 was preserved in an amended, narrower form.
Regarding sufficiency of disclosure, referring claims 1, 9, 13, and their dependent claims, along with the relevant drawings, the Hon’ble Court found the disclosures sufficient to enable a person skilled in the art to work the invention. However, in contrast, the disclosures regarding independent claims 8 and 11, and their dependent claims, were found insufficient. The Hon’ble Court thus upheld the sufficiency for claims 1, 9, and amended 13, but not for claims 8 and 11.
The Hon’ble Court addressed the allegation of lack of novelty in the impugned patent, particularly concerning claims 8 and 13. It held that prior art D1, cited against claim 8, merely aimed at optimizing weight and did not address fatigue failure, which was central to the patented invention. Likewise, although prior art D3 was cited against claims 13, the Hon’ble Court found that the mere difference in the sequence of operations (attachment of the disc) was critical and not disclosed by D3. Consequently, the Hon’ble Court concluded that the challenges of lack of novelty against claims 8 and 13 failed.
Further, with respect to challenges in inventive step, the Hon’ble Court holding that the claimed invention addressed a distinct problem—fatigue failure due to cyclical loads, which was not the focus of the cited prior arts. The Hon’ble Court emphasized that inventive step analysis must assess whether the prior art teaches or motivates a PSITA to arrive at the claimed invention with reasonable expectation of success. Since none of the prior art documents individually or in combination suggested the specific configuration where the cylindrical section of the rim is the thickest, the Hon’ble Court ruled that the invention involved a technical advance and was not obvious, thereby satisfying the requirement of inventive step.
Conclusion:
The Hon’ble Madras High Court, broadened the definition of "person interested" under Section 2(t) of the Patents Act, 1970, and emphasized that it is inclusive and does not require that the person challenging a patent must be involved in the exact same manufacturing field as the patented invention. The competitor in the same industry can qualify as a "person interested" if they have a direct, present, and tangible interest in the matter. Further, The Hon’ble Madras High Court, while upholding the validity of Patent No. 269220 held by Wheels India Ltd., partially revoked the patent by striking down certain claims for lack of fair basing and clarity. The Hon’ble Court found that these specific claims were too broad and not sufficiently supported by the specification. However, it ruled that the remaining claims were novel, involved an inventive step, and were clearly and sufficiently disclosed. As a result, the revocation petition by Steel Strips Wheels Ltd. was partially allowed.
Author : Nitin Patel
Designation: Patent Attorney
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