published in http://www.ipab.tn.nic.in/123-2013.htm
INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,
Teynampet, Chennai – 600 018
* * * * * *
(CIRCUIT BENCH AT DELHI)
ORA/08/2009/PT/CH
AND
Miscellaneous Petition Nos. 7/2010, 31/2010, 51/2011, 86/2012, 142/2012 & 143/2012 in ORA/08/2009/PT/CH
WEDNESDAY THIS THE 12TH DAY OF JUNE, 2013
Hon'ble Smt. Justice Prabha Sridevan …Chairman
Hon'ble Shri D.P.S. Parmar …Technical Member (Patents)
Enercon (India) Limited,
Plot No.33, Daman Patalia Road,
Bhimpore,
Daman – 396 210. … Applicant
(Represented by – Shri R. Parthasarathy)
Vs.
Aloys Wobben
Argestrasse 19
26607 Aurich
Germany …Respondent
(Represented by – Shri Praveen Anand)
ORDER (No. 123 of 2013)
Hon’ble Smt. Justice Prabha Sridevan, Chairman
The applicant seeks revocation of the Patent No: 203552 for an Invention titled” Method for monitoring a Sensor.”
The Priority date is 27-11-2001.
The Priority date is 27-11-2001.
2. The applicant sought revocation of the patent on several grounds.
Pending the ORA, Miscellaneous Petition No.86 of 2012 was filed for submitting a copy of the decision of the Opposition Board dated 24th February, 2010 in respect of corresponding EP Patent No. EP1454058.
In these proceedings the Respondent had amended the claims since the Opposition Board had found the original claims were not novel in view of a prior art which is “The Wind Turbine Components and Operation” Bonus Info Newsletter.
This prior art is cited before us too.
Miscellaneous Petition No. 142/2012 has been filed for amendment of the claims.
Miscellaneous Petition No. 142/2012 has been filed for amendment of the claims.
3. This matter was heard earlier by another Bench and orders were reserved. But orders were not pronounced because the then Technical Member retired. So we have heard the matter all over again.
The respondent had amended the claims before the EPO.
Therefore the Learned Counsel for the Applicant raised
a preliminary ground that having accepted the EP objections the patentee cannot be heard to say that the claims as granted will stand.
The Leaned Counsel for the respondent submitted that
they are defending only the claims as amended.
The amended claims were sent to the Controller, who has given his opinion that the amendment does not fall within S.59 of the Patents Act.
This opinion was also furnished to both the parties so that they could respond to it.
The respondent had amended the claims before the EPO.
Therefore the Learned Counsel for the Applicant raised
a preliminary ground that having accepted the EP objections the patentee cannot be heard to say that the claims as granted will stand.
The Leaned Counsel for the respondent submitted that
they are defending only the claims as amended.
The amended claims were sent to the Controller, who has given his opinion that the amendment does not fall within S.59 of the Patents Act.
This opinion was also furnished to both the parties so that they could respond to it.
4. Both the Counsel made their oral and written submissions.
As stated earlier the Respondent had given up the granted claims and is pressing only the proposed claims and even there only the proposed claims 1, 3 and 4.
As stated earlier the Respondent had given up the granted claims and is pressing only the proposed claims and even there only the proposed claims 1, 3 and 4.
The Granted claims and proposed claims are as follows:
Granted Claims:
1. A method of monitoring a sensor for detecting a flow speed of a medium, comprising the steps of detecting the flow speed of the medium by a sensor (16). Comparing the flow speed of the medium detected by the sensor (16). With at least one operating parameter of a wind power installation or a hydroelectric power generator (10, 12, 14) driven by the medium to determine whether the sensor (16) operates correctly.
2. A method as claimed in claim 1, comprising the step of providing a plurality of operating parameters simultaneously or successively for the comparison with the flow speed detected by the sensor 16).
3. Wind power installation, comprising:
a plurality of rotor blades driven by a medium
a sensor (16) for detecting the flow speed of the medium and
a comparison device for comparing the flow speed of the medium detected by the sensor (16) to at least one operating parameter of the wind power installation (10, 12, 14) to determine whether the sensor operates correctly.
4. Wind power installation as claimed in claim 3, wherein a sensor (16) is implemented as an anemometer.
5. Wind power installation as claimed in claim 4, wherein the comparison device is adapted to monitor the power produced by the wind power installation which is dependent on the wind speed such that a wind speed can be derived from the power. Installation, wherein the wind speed derived from the power produced by the wind power installation is compared to the wind speed as detected by the anemometer.
6. Wind power installation as claimed in claims 4 or 5, wherein the comparison device is adapted to monitor the pitch angle of the rotor blades which depends on the wind speed, wherein the wind speed is derived from the pitch angle of the rotor blade and is compared to the win d speed as detected by the anemometer.
7. Wind power installation as claimed in claim 6, wherein the comparison device is adapted to monitor the power produced by the wind power installation to derive the wind speed corresponding to such power produced by the wind power installation corresponds to the nominal power, wherein the comparison device is adapted to monitor the pitch angle of the rotor blades when the power produced by the wind power installation has reached the nominal power, such that the wind speed is derived from the pitch angle of the rotor blades.
Proposed Claims:
1. A method of monitoring a sensor for detecting a flow speed of a medium, comprising the steps of detecting the flow speed of the medium by a sensor (16).
Comparing the flow speed of the medium detected by the sensor (16), with at least one operating parameter of a wind power installation (10, 12, 14) driven by the medium to determine whether the sensor (16) operates correctly, wherein the flow speed is the wind speed and wherein the power produced by the wind power installation is used as the operational parameter when the wind speed is below the nominal wind speed and wherein a blade angle is used as the operational parameter if the wind speed is above the nominal wind speed.
2. Wind power installation, comprising:
a plurality of rotor blades driven by a medium,
a sensor (16) for detecting the flow speed of the medium and
a comparison device for comparing the flow speed of the medium detected by the sensor (16) to at least one operating parameter of the wind power installation (10, 12, 14) to determine whether the sensor operates correctly, wherein the flow speed is the wind speed and wherein the power produced by the wind power installation is used as the operational parameter when the wind speed is below the nominal wind speed and wherein a blade angle is used as the operational parameter if the wind speed is above the nominal wind speed.
3. Wind power installation as claimed in claim 2, wherein a sensor (16) is implemented as an anemometer.
5. The main ground of attack is that the invention is obvious in view of:-
a) Bonus-Info newsletter dated 1998
b) U.S. patent 5,289,041.
6. Mr. R. Parthasarathy, the learned Counsel for the applicant, submitted that
there is no inventive step and the patent must be revoked.
He explained that
every generator has a rated power and torque which means there is a maximum amount of power that the machine can sustain.
For a wind energy generator (WEG) too this applies but the difference is that the wind generator depends on wind which is not constant.
He submitted that
it is not possible to control or regulate the speed at which wind blows.
The object of the invention is to ensure that the wind anemometer is showing the correct wind speed.
there is no inventive step and the patent must be revoked.
He explained that
every generator has a rated power and torque which means there is a maximum amount of power that the machine can sustain.
For a wind energy generator (WEG) too this applies but the difference is that the wind generator depends on wind which is not constant.
He submitted that
it is not possible to control or regulate the speed at which wind blows.
The object of the invention is to ensure that the wind anemometer is showing the correct wind speed.
7. The learned counsel submitted that
it is a matter of common knowledge that the wind speed variation and the blade pitch control are related.
According to the learned Counsel for the Applicant,
the power generated is relevant until the nominal power is reached and after that the blade pitch angle is used to evaluate the accuracy of the sensor’s measurement.
He submitted that,
without prejudice to his contention that
the amendment must not be allowed both on the ground of delay and because it falls foul of S.59, even the claims proposed are not patentable since there is no inventive step.
The learned counsel submitted that
the granted claim 1 had 4 steps
it is a matter of common knowledge that the wind speed variation and the blade pitch control are related.
According to the learned Counsel for the Applicant,
the power generated is relevant until the nominal power is reached and after that the blade pitch angle is used to evaluate the accuracy of the sensor’s measurement.
He submitted that,
without prejudice to his contention that
the amendment must not be allowed both on the ground of delay and because it falls foul of S.59, even the claims proposed are not patentable since there is no inventive step.
The learned counsel submitted that
the granted claim 1 had 4 steps
a) Detect the wind speed by sensor,
b) Measure power generated
c) Derive wind speed from power so generated, and
d) Compare actual wind speed
8. Now that the granted claim1 has been given up and the expert was of the opinion that subject matter of claim 1 is not novel, then the aforesaid features must be accepted as part of the prior art. And for the person skilled in the art that would be the starting point. If so the Bonus prior art showed the relationship between wind speed and power long before the priority date. So it was known that wind measurement error can be avoided by a constant functional check of relationship between wind speed and power production.
9. He submitted that when it is known that the power generated will not be relevant after the rated power is reached, it is obvious that one has to use the blade pitch angle alone to evaluate the measurement error.
He submitted that the additional features as per the amendments claimed are:-
He submitted that the additional features as per the amendments claimed are:-
e) The medium is wind
f) Derive wind speed from the power produced till wind speed is below the nominal wind speed.
g) Above nominal wind speed, drive wind speed from the blade angle.
10. The learned counsel for the applicant submitted that on the ground of delay alone the amendment must be disallowed.
The respondent had enjoyed the benefit of a covetous patent for too long.
Even after the EP Opposition board proceedings the patentee had sustained the granted claims till January 2013.
The respondent had enjoyed the benefit of a covetous patent for too long.
Even after the EP Opposition board proceedings the patentee had sustained the granted claims till January 2013.
11. It was also submitted that even the proposed claim1 cannot be accepted since it falls outside the scope of the granted method. The amendment should fall within the four corners of S.59. The method claim and product claim, relate to different monopolies and the amended claim which is a product claim will not stand the test of s.59. Without prejudice to his S.59 objection he submitted that even the amended claims are not patentable.
12. According to the learned Counsel for the applicant,
the Bonus document was a prior art It was clear that it was published and republished on demand and the EPO had also considered it as a prior art. And it teaches each of the steps in the granted claim 1 which is now abandoned. With this knowledge the person skilled in the art, will obviously consider the rotor blade pitch angle as a parameter to correlate wind speed after nominal wind speed and rated power is reached. The relationship between the blade pitch angle and the wind speed is well known. ‘041 patent shows that this was known. Claim 3 is only an apparatus claim and hence suffers from the same defect as claim1. The claim 4 also lacks inventive step.
the Bonus document was a prior art It was clear that it was published and republished on demand and the EPO had also considered it as a prior art. And it teaches each of the steps in the granted claim 1 which is now abandoned. With this knowledge the person skilled in the art, will obviously consider the rotor blade pitch angle as a parameter to correlate wind speed after nominal wind speed and rated power is reached. The relationship between the blade pitch angle and the wind speed is well known. ‘041 patent shows that this was known. Claim 3 is only an apparatus claim and hence suffers from the same defect as claim1. The claim 4 also lacks inventive step.
13. According to Mr. Parthasarathy, the respondent’s expert has neither shown why the claims are patentable nor has he met the evidence of the applicant’s experts. The patent must be revoked.
14. Mr. Praveen Anand, the learned counsel for the respondent submitted that
we must remember that we are concerned with Wind Energy and the flow is uneven and sometimes slow unlike nuclear, thermal or hydro energy.
He submitted that
the amendments fall within the scope of the granted claims.
He submitted that t
he primary evidence of obviousness is an expert’s evidence.
The absence of such evidence and the fact that patent was granted in so many countries weakens the case for revocation.
He submitted that
the person skilled in the art must be proved to have read each and every prior art, the prior art should have travelled to widely circulated text books, and even if it was found in text books it does not mean it fell in the realm of common general knowledge.
The Bonus document was meant for private publication and has not been “proved’ in accordance with law.
In any event BONUS deals with stalling regulated wind turbines but the invention relates to pitch-regulated wind turbines.
we must remember that we are concerned with Wind Energy and the flow is uneven and sometimes slow unlike nuclear, thermal or hydro energy.
He submitted that
the amendments fall within the scope of the granted claims.
He submitted that t
he primary evidence of obviousness is an expert’s evidence.
The absence of such evidence and the fact that patent was granted in so many countries weakens the case for revocation.
He submitted that
the person skilled in the art must be proved to have read each and every prior art, the prior art should have travelled to widely circulated text books, and even if it was found in text books it does not mean it fell in the realm of common general knowledge.
The Bonus document was meant for private publication and has not been “proved’ in accordance with law.
In any event BONUS deals with stalling regulated wind turbines but the invention relates to pitch-regulated wind turbines.
15. The system was designed to maximize power intake subject to the rating limit. According to the learned counsel, the existing art worked under normal conditions but fell apart if the wind speed is low or if the system is shut down under extremely high-speed conditions. In the above two conditions the system requires a direct measurement of the wind speed.
The device known as anemometer provides this function. The correct operation of the anemometer is critical under these circumstances. Since the anemometer is exposed to environmental conditions, which may affect the working resulting in inaccurate readings, it is necessary that the anemometer is checked for accuracy periodically.
The device known as anemometer provides this function. The correct operation of the anemometer is critical under these circumstances. Since the anemometer is exposed to environmental conditions, which may affect the working resulting in inaccurate readings, it is necessary that the anemometer is checked for accuracy periodically.
16. The invention provides a solution to the monitoring and it functions in the following way.
A) As long as the generated power is below the Rated power, it uses the value of the power that gets generated to derive the available power and the corresponding wind speed.
B) After the generated power reaches the Rated power, the degree of throttling measured in terms of the pitch angle of the rotor blades provides the ability to derive the corresponding wind speed.
17. Then the derived speed in both cases is compared with the wind speed reported by the anemometer in order to perform the check.
18. He submitted that the greatest discretion should be shown in the matter of amendments and it should not be shut merely on the ground of delay and cited decisions to support him.
19. The applicant’s submission that limitations of an apparatus claim cannot be incorporated into a method claim is not correct. He relied on the decision on Baker Perkins. He further submitted that the EP Patent No: 1454058 had been granted after the opposition and that should weigh with us.
20. It is the patentee’s case that the anemometer plays an important role in a wind power installation but it may malfunction in bad weather and it can lead to a runaway situation of the wind-turbine. Even multiple anemometers may not work.
Error detection and monitoring of the anemometer is essential for ensuring that the wind turbines function properly.
Therefore the invention is directed towards providing a continuous mechanism to monitor the parameter through the invention which is a combination of the two steps i.e comparing wind speed derived from the generated by the wind turbine with the wind speed measured by the anemometer when the wind speed is below nominal wind speed and comparing wind speed derived from pitch angle with the wind speed measured by the anemometer when the wind speed is above the nominal wind speed.
Error detection and monitoring of the anemometer is essential for ensuring that the wind turbines function properly.
Therefore the invention is directed towards providing a continuous mechanism to monitor the parameter through the invention which is a combination of the two steps i.e comparing wind speed derived from the generated by the wind turbine with the wind speed measured by the anemometer when the wind speed is below nominal wind speed and comparing wind speed derived from pitch angle with the wind speed measured by the anemometer when the wind speed is above the nominal wind speed.
21. Mr. Praveen Anand made elaborate submissions
on the nature of the person skilled in the art;
that he would be conservative,
he would not do anything to enter sacrosanct areas,
he would only be in India.
He referred to the various subsections in S.25 which use the words “in India” And that all these qualities must be imputed to this POSITA.
He submitted that it is the applicant’s duty to adduce expert evidence with regard to the POSITA and whether the invention was obvious. In the absence of such evidence, the applicant’s challenge must fail.
on the nature of the person skilled in the art;
that he would be conservative,
he would not do anything to enter sacrosanct areas,
he would only be in India.
He referred to the various subsections in S.25 which use the words “in India” And that all these qualities must be imputed to this POSITA.
He submitted that it is the applicant’s duty to adduce expert evidence with regard to the POSITA and whether the invention was obvious. In the absence of such evidence, the applicant’s challenge must fail.
22. According to the respondent the test of obviousness is a subjective one and when the applicant has not let in any evidence, he cannot be said to have proved the case of obviousness. Though two experts had given evidence on the side of the applicant, the evidence was not relied on.
This patent has been granted in 65 countries, and therefore the revocation must be dismissed.
The learned counsel submitted that there should be,” a common sense approach to the practical question of what would in fact be known to an appropriately skilled addressee-the sort of man, good at his job, that could be found in real life.”(General Tire v. Firestone {1972} R.P.C. 457 at 482)
He submitted that a piece of particular knowledge does not become common general knowledge merely because it is widely read and accepted without question by the bulk of those who are engaged in the particular art (British Acoustic Films Ltd v. Nettlefold 53 R.P.C.221) According to the Respondent there was no motivation to combine. He cited several decisions as for instance, Eli Lilly v, Zenith (471 F.3d 1369) and Yamanouchi Pharmaceuticals v. Danbury Pharmacal to show that there must be two kinds of motivations one to select and one to modify. And in that case the Court asked whether the POSITA would have been motivated to combine pieces from one compound in one prior art with a piece in another compound through a series of manipulations. He also cited Otsuka Pharmaceutical v. Sandoz 678 F.3d 1280 where the court asked if anyone would have modified the lead compound to make the chained compound with a reasonable expectation of success. He submitted that Hindsight analysis is not permitted (Generica UK Ltd trading as Mylan vs Yeda [2012 EWHC 1848]). He cited passages from the above decision and submitted that the patent in the suit cannot be used as a guide through the maze of prior art references. He distinguished the prior art Bonus. He challenged the authenticity of Bonus as a published document. And even if it was it did not teach the pitch regulation.
This patent has been granted in 65 countries, and therefore the revocation must be dismissed.
The learned counsel submitted that there should be,” a common sense approach to the practical question of what would in fact be known to an appropriately skilled addressee-the sort of man, good at his job, that could be found in real life.”(General Tire v. Firestone {1972} R.P.C. 457 at 482)
He submitted that a piece of particular knowledge does not become common general knowledge merely because it is widely read and accepted without question by the bulk of those who are engaged in the particular art (British Acoustic Films Ltd v. Nettlefold 53 R.P.C.221) According to the Respondent there was no motivation to combine. He cited several decisions as for instance, Eli Lilly v, Zenith (471 F.3d 1369) and Yamanouchi Pharmaceuticals v. Danbury Pharmacal to show that there must be two kinds of motivations one to select and one to modify. And in that case the Court asked whether the POSITA would have been motivated to combine pieces from one compound in one prior art with a piece in another compound through a series of manipulations. He also cited Otsuka Pharmaceutical v. Sandoz 678 F.3d 1280 where the court asked if anyone would have modified the lead compound to make the chained compound with a reasonable expectation of success. He submitted that Hindsight analysis is not permitted (Generica UK Ltd trading as Mylan vs Yeda [2012 EWHC 1848]). He cited passages from the above decision and submitted that the patent in the suit cannot be used as a guide through the maze of prior art references. He distinguished the prior art Bonus. He challenged the authenticity of Bonus as a published document. And even if it was it did not teach the pitch regulation.
23. As regards US ‘041 he submitted that this prior art addressed a different problem which was tracking wind speeds. He referred to the respondent’s expert’s affidavit which clearly said that ‘041 did not teach the invention.
24. He submitted that the obviousness test must be a subjective one, and merely because the invention is simple would not detract from its novelty. He submitted that the amended claim 1 was not only restricted to the operational parameter but to a method of monitoring a sensor for detecting the wind speed. He submitted that the amendment cannot be disallowed merely because of the delay and that the Controller has not seen if the amendment was within the frame of S.59 but had instead examined the patentability.
25. A crucial issue to be decided is Who is the person Skilled in The Art. In fact, Mr. Praveen Anand repeatedly urged us that this issue must be decided. The guide to this is found in the judgment of the 2012 (52) PTC 1 (DEL) – F. Hoffmann-La Roche Ltd & Anr. vs Cipla Ltd. Mumbai Central, Mumbai – It reads, “Therefore the same cannot be read to mean that there has to exist other qualities in the said person like unimaginary nature of the person or any other kind of person having distinct qualities.” and “Was it for practical purposes obvious to a skilled worker in the field concerned , in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?”
26. According to the respondent, the applicant should prove that the person skilled in the art knew each and every prior art, read every text book, and the prior art must be widely read, and even if it is in a patent text book it does not mean that it is known, and also that this person skilled in the art is working in India. Roche v. Cipla, says one need not add further qualities and that one must “presuppose that the said person would have the knowledge and the skill in the said field of art and will not be unknown to a particular field of art and it is from that angle one has to see that if the said document which is prior patent if placed in the hands of the said person skilled in the art whether he will be able to work upon the same in the workshop and achieve the desired result leading to patent under challenge.” Roche v. Cipla asks us not to import any further doctrinal approach by modifying or qualifying the test laid down in Bishwanath Prasad Radhey Shyam vs. H.M. Industries -AIR 1989 SC 1444.
27. In view of this judgment, it is definitely not necessary or proper for us to dumb down the Person Skilled in the Art, nor make him so ignorant of anything that is happening elsewhere or presume he does not know even common text books unless proved otherwise. In fact this hypothetical person is presumed to know all the prior arts as on that date, even non-patent prior art in theory available to public. He has knowledge of the technical advancement as on that date, and the skill to perform experiments with the knowledge of state of the art. This is what Roche V.Cipla also says
28. There is nothing in the Act which limits the person skilled in the art and defines him as possessing certain qualities. In fact the Delhi High Court frowns upon such a construction. The obviousness test is with reference to a person skilled in the art. That is all and not one who is residing in the country performing experiments with local materials and in the laboratories specified. We may not do that in view of the Delhi High Court judgment, which says we cannot read into the definition words that are not there. An inventive step is what is “not obvious to a person skilled in the art.”(S.2(1)(ja)) Patents Act.) It does not say to an Indian skilled in the art working in an Indian Laboratory.
29. It is not as if the Act does not use a territorial limitation elsewhere. The words “in India” have been used in other contexts including enablement but not with reference to obviousness. S.25(1)(d) limits public knowledge and public use to such use and knowledge in India as a ground for opposition, as does S.25(2)(d). S.25(1)(b) refers to complete specification published in India, as does S.25(2)(b). The section concerned with revocation is also patterned like wise and we find in S.64(1)(e) relating to prior use and knowledge the word “India”, in S.64(1)(h) relating to enablement, the addressee of the complete specifications is a person in India, in S.64(1)(l) the secret use must take place in India, in S.64(1)(q) the words used are “India or elsewhere.” in S.64(2)(b) the knowledge and use in India is by importation. It is clear that the word India is used specifically if it is meant to be there. But the Act requires us to look at a person skilled in the art which means knowledge of the state of the art and the skill to build on the knowledge in order to decide if the invention is obvious. The Act does not say to a person in India who has ordinary skill in the art. Is this person timorous, conservative, ordinary and incapable of venturing into sacrosanct areas? This person is neither described as “ordinary” nor “average”.
30. In fact it is clear that in the context of enablement, the person to whom the complete specifications are addressed is a person “who has average skill and average knowledge.” Neither of these attributes has been assigned by the Act to the person to whom the invention should be non-obvious. We are not called upon in this case to decide the person who is enabled. We are only pointing out to the difference in the words used in the Act. We do not intend to visualise a person who has super skills, but we do not think we should make this person skilled in the art to be incapable of carrying out anything but basic instructions. The Act makes a distinction between the person skilled in the art (the obviousness person) and the person who has average skill (enablement man).
31. Let us see how the different jurisdictions construct this person.
European Patent Convention requires, an invention to have among other things, an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art.
In United Kingdom, Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, has laid down the requirements for inventive step:
- Identifying the inventive concept embodied in the patent;
- Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
"Non-obviousness" in the U.S. Law as codified in 35 U.S.C. §103, requires that the invention being patented is not obvious, with reference to a "person having ordinary skill in the art"
In Canada the subject-matter should not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to.etc.
32. In our Act also the obviousness test is with reference to “a person skilled in the art,” all the other adjectives need not be considered in view of Roche v.Cipla. The Act does not even mention ”ordinary”. S.2(1)(ja) does not say that the inventive step must be non-obvious to a person with ordinary skill in the art. In Roche v. Cipla, also the words used are “obvious to a skilled worker in the field concerned” So the word “ordinary” is not used to describe this person either in the Act or by the Superior Courts in India. We saw S.25 just now and it is seen that to meet the requirement of enablement, the complete specifications are addressed to a person with average skill and average knowledge. The Act does not say in S.2(1)(ja) that the inventive step should be non obvious to a person with average skill and average knowledge.
33. In the Novartis case, 2013 (54) PTC 1 (SC) - Novartis AG & Ors Vs. Union of India & Ors. the Hon’ble Supreme Court said, “However, before leaving Hogan and proceeding further, we would like to say that in this country the law of patent, after the introduction of product patent for all kinds of substances in the patent regime, is in its infancy. We certainly do not wish the law of patent in this country to develop on lines where there may be a vast gap between the coverage and the disclosure under the patent; where the scope of the patent is determined not on the intrinsic worth of the invention but by the artful drafting of its claims by skillful lawyers, and where patents are traded as a commodity not for production and marketing of the patented products but to search for someone who may be sued for infringement of the patent.”
34. In the Roche v. Cipla - the Hon’ble Delhi High Court has said,
“48. Such observations made in the foreign judgments are not the guiding factor in the true sense of term as to what qualifies that person skilled in art should possess. The reading of the said qualities would mean qualifying the said statement and the test laid down by the Supreme Court. The said observations relied upon by the parties are judicially created tests depending upon the nature of the case and the subjective satisfaction of the Judge in the given case. As there is no such requirement which exists at least in Indian Patent Act defining the further qualities of a person skilled in art, therefore, one has to leave the said point there and then which is that what is required to be seen is the obviousness from the standpoint of a person who is skilled in art.”
35. It is true that the Roche extract is specifically with regard to the Obviousness issue, but the Novartis extract is not. But it is clear from both the judgments that we should understand the concepts based on the sections as they are in our Act , and also contextualise it in our country. Roche v. Cipla also speaks of a person skilled in the art and not a person with ordinary skill in the art or average skill in the art. The respondent wants us to imagine a person of ordinary skill, conservative, unimaginative, will not go against established prejudice, and is in India. The law has not used the word “ordinary”. It had the laws of other jurisdictions before it and yet it eschewed the word “ordinary” . So it is very important for us while deciding obviousness not to conjure up a dullard or a moron. Why should we proceed as if “ordinariness” is inherent in this hypothetical person? If it makes the obviousness bar a bit higher, we must bear that in mind, for This Is Our Law.
36. We have already described this person in an earlier case Sankalp Rehabilitation Trust vs Hoffman –Roche (OA/8/2009/PT/CH) where this Board had also referred to KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 “...... he is no dullard. He has read the prior art and knows how to proceed in the normal course of research with what he knows of the state of the art. He does not need to be guided along step by step. He can work his way through. He reads the prior arts as a whole and allows himself to be taught by what is contained therein. He is neither picking out the” teaching towards passages” like the challenger, nor is he seeking out the “teaching away passages”, like the defender. In this case he is a person familiar with or engaged in PEG chemistry. He knew that it was a time of intense activity in this field of chemistry. The person defending the patent will undoubtedly inform the Court that there was nothing in the prior art to encourage the person skilled in the art to work toward the invention. KSR says “The question is not whether the combination was obvious to the patentee but whether the combination was obvious to the person skilled in the art. Under the correct analysis, any need or problem known in the field of endeavour at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” And one of the easy ways by which “a patent’s subject matter can be proved obvious is by noting that there was an obvious solution encompassed by the patent’s claims.” KSR also says that if pursuit of known options within the technical grasp of the person skilled art leads to the anticipated success ” it is likely the product not of innovation but of ordinary skill and common sense”. In the words found in Roche v. Cipla this person is a skilled worker in the field concerned , with the state of knowledge existing at the date of the patent to be found in the literature then available. There are no limitations or words in the Act to “reduce” this person’s skill or knowledge.
37. In this case the art is wind energy. Since this obviousness test is the most frequently debated issue in patent litigations. It may be better if in the future, the pleadings or evidence tells us who this person is. This person is skilled in the art. This person is presumed to know the state of that art at that time, and to have the knowledge that is publicly available. The Act is quite clear and free of ambiguity. This person is skilled in the art and has more than average knowledge of the state of the art and also has common sense. Indian law expects the non-obviousness to be tested against this person and not the person who is the touchstone in U.S. Law. She is Ms. P. Sita (Person Skilled In The Art) and not Mr. Phosita or Mr. Posita who are both ordinary by definition!
38. Two prior arts were relied on, one is known as the Bonus document. It is called The Wind Turbine Components and Operation. It is a special issue of a 1998 news letter. It says that on account of many requests the article was reprinted and published as a public issue. This article speaks of blade behaviour at different wind speeds. It says that it is essential that the blade angle is set at the correct value. It says that “as a control function of the anemometer the controller supervises wind speed in relation to power. The controller will stop the wind turbine and indicate a possible wind measurement error.....A constant functional check of the relationship between the wind speed and power production ensure that it is almost impossible for the wind turbine to continue operation with a wind measurement error and the possibility of a wind turbine being subject to stronger winds than its designed speed rating is therefore more or less eliminated.”
39. The Invention uses two operating parameters, when the wind speed is below the rated speed the power generated is the operating parameter and when it is above the rated speed, the power generated ceases to be the parameter and the angle of incidence of the rotor blades becomes the operating parameter. In EP 1454058 the Opposition Board had held against Vestas’ Opposition and accepted this to be novel. According to the Respondent in view of this document, the patent cannot be revoked. On the other hand Mr.Parthasarathy submitted that the Board in that matter had not considered if the invention was obvious to the person skilled in the art, nor had it considered the effect of US patent ‘041. The EP Board in this case had held that Bonus was a relevant prior art, but did not anticipate the claims as amended.
40. The other Prior Art is U.S. Patent ‘041. What does ‘041 say? This is a Speed Control System for a Variable Speed Wind Turbine. It is meant to track wind speed fluctuations. It has 3 sensors Rotor Speed Sensor, yaw angle sensor and blade pitch angle sensor. This is seen from Fig 2. It also speaks of a desired pitch angle. Figure 3 speaks of the inputs which are Load Torque, previously predicted wind speed, previously predicted rotor speed, measured rotor speed, measured blade pitch angle and measured yaw error angle. Fig 4 which is the parameter schedule also contains one parameter desired blade pitch angle vs. wind speed. Next Fig 5A and 5C are the desired rotor speed which is the power generated and the desired pitch angle. 5C shows that when the wind speed is low what is the blade pitch angle and how the pitch angle changes when the wind speed changes. According to the Applicant Fig 5A and 5C are nothing but Fig 2 of the invention. We see that when the power generated reaches a plateau the blade pitch angle changes. Therefore the applicant contends that this is known to anyone familiar with wind energy. However according to the Respondent ‘041 teaches away from using the power generated as an operating parameter. But ‘041 specifically says that in the preferred embodiment the power parameter is the wind speed. It says that “The known or estimated parameters used by the wind observer include load torque, current wind speed, current yaw error and current rotor speed. If the blade pitch angle is variable then that parameter is also used by the wind observer. In the detailed description of ‘041 it says that based on wind speed the parameter schedule 42 outputs values of a desired rotor speed, desired generator load torque and a desired blade pitch angle, a blade pitch angle signal is given. The pitch angle is given to the wind speed observer. This art provides for automatic decision based on average wind speed for start up and shut down, and the shut down may be by ”fully feathering the blades so that they provide no aerodynamic torque”. Feathering the blades means changing the blade pitch angle so that the blades are parallel to the airflow. This prior art explains fig. 5 A, B and C and what happens at regions 4 and 5 that is high wind speed. ‘The blade pitch angle is increased with increasing wind speed‘ and eventually the blades are pitched to full feather .The claims in ‘041 do not include the blade pitch angle, but it is found there in full measure and it indicates that this was known. When this knowledge is combined with the Bonus prior art , it will be obvious to a person skilled in the art i.e wind energy to arrive at the invention.
In Fig 2 ( Invention) above, the diagram on top shows where the wind speed moves towards the maximum, the diagram below shows that at this point the blade pitch angle becomes relevant.
In the figure shown in ‘041 which is reproduced below , Fig. 5A corresponds to diagram on top in Fig 2 (Invention) and Fig. 5C where the blade pitch angle parameter take over.
41. The Obviousness test is a test that is fraught with difficulties. While in anticipation one has only to see if each and every claim limitation is disclosed in a single reference, either expressly or inherently, the test of obviousness is more difficult because one has to see if it would be obvious to the particular imaginary/hypothetical person who is described in the Act.
42. Obviousness has been accepted to be a statement of policy. There is no definition of what is obvious and indeed there cannot be, since it depends on the time of the invention, the state of the art at the time of the invention, what was commonly known at that time and above all the invention itself. So the “jump test” cannot be the same for a chemical invention and the invention of a super door-knob. And while we may need an expert to say what would be obvious considering the state of the art in say genetic technology, we would not need an expert for less complicated ‘arts”. Expert opinions may not always be required , sometimes the technology is not of such a nature that it requires an expert’s testimony. Perfect Web Technologies v. Infousa Inc. 587 F.3 Ed 1324 was one such where the three steps to deliver a prescribed quantity of e-mail to targeted recipients were known. The fourth step was the invention, and it was held if the person skilled in the art applied commonsense “ to try, try again” then it would result in the final step., and that no expert opinion was required. So even the need for expert evidence, must be decided on a case to case basis.
43. The mere existence in the prior arts, of each of the elements in the invention, will not ipso facto mean obviousness. For after all most inventions are built with prior known puzzle-pieces. There must be a coherent thread leading from the prior arts to the invention, the tracing of the thread must be an act which follows obviously. We must apply this reasoning to test if indeed it is obvious, or if it seems to us to be obvious to the person skilled in the art because of what we know now. If it is the latter, it is hindsight deduction and is not acceptable, but if it is the former, then the patent must go.
44. We will examine if the person with skill and knowledge, as per our own law, would have arrived at the invention with the benefit of the prior arts. While we look at prior arts and the decisions on how prior arts must be applied, we must never lose sight of the invention in question. All the decisions on chemical compounds are not to be applied here. This is a simple invention. It is a method to monitor the anemometer, with two parameters in a unique and sequential way. One is the power parameter which is the wind speed, the other is the pitch angle of the blade. The first works until the rated power is reached, after that it is the other. This in essence is the invention. If it has an inventive step it deserves the patent, the simplicity is not an issue. But on that ground we need not look at chemical patent decisions which question whether Mr.Phosita would have chosen this particular compound and if it was taught by the prior art and so on.
45. In Wobben vs. Vestas [2007] EWHC 2636 (Pat) (14 November 2007) Lord Kitchins said while considering the relevant times and the skilled person who is an engineer, said,” The 1990s were undoubtedly years of considerable change. The rated capacity of wind turbines was increasing rapidly, as was the size of wind farms. The well known textbook Wind Power in Power Systems by Ackermann (2005) described wind energy as the fastest growing energy technology in the 1990s, in terms of percentage of yearly growth of installed capacity per energy source. Moreover, the market profile of the various different wind turbines was also changing. In 1997 sales of DFIGs accounted for only 3% of the world market, but in 1998 this figure had jumped to over 26%. In that same year DFIGs and full converter turbines together accounted for over 40% of the market. This is not a picture of wind turbine engineers being conservative or resisting change. To the contrary, they were clearly adapting to and engaging with changing circumstances and new technology.” In fact we learn that India has been one of the leaders in the world wind energy market. The person skilled in the art would not have been timorous in these boom times of wind energy. Incidentally Lord Kitchins refers to passages from Ackermann – a German scholar in this regard and applies it to the expert in the case before him. This too shows that the skilled person is not country specific.
46. Obviousness is an issue of law based on the facts. There cannot be an across- the-board check list. It has to be judicially determined in each case, keeping in mind the particular invention, the sweep and content of the prior arts, the state of the art and the knowledge at that time, and that time itself and of course whether the invention was non-obvious to Ms. P. Sita. KSR said a rigid rule that limits obviousness is not necessary. That appears obvious (how the word crops up like the head of Hydra!) since one has to examine the interplay of the prior arts with all the other facts like common sense and common knowledge. As for common knowledge and what was known in the state of the art i.e. the technology factor, the judicial authority must have some elbow room to arrive at its decision. Was this book available in that library is not the kind of question we are going to ask. Then we may search till the cows come home for an acceptable prior art. If it reasonably appears that this particular prior art was publicly available, then it is known and accessible to the person skilled in the art and would be accepted for the obviousness test. This would again depend upon the facts of the case.
47. In this case the art in question is wind energy. The person skilled in this art must at least be an engineer. The Bonus paper relates to Wind Energy and is shown to have been published as a special issue on public request. The Opposition Board in the European proceedings accepted it as a prior art. We will do so too. Ms. P. Sita would have read Bonus. We have already seen Lord Kitchins’ construct of the wind turbine engineer during these years.
48. The respondent’s Expert Professor Peter Dalhoff says of ‘041 that the object of the invention was to predict “the wind speed and the rotor speed at the next step based on the known or estimated parameters at the present time.” And “There is no mention of a wind measurement error which can be achieved by comparing the wind speed to the output power of the turbine…….(and) is completely silent with respect to the monitoring of the anemometer by comparing operating parameters with the measurement values of the anemometer.” The expert says that in ‘041 “the wind speed and the rotor speed are predicted on some parameters.”
49. Bonus speaks of “wind measurement error” and a constant check of “the relationship between wind speed and power production. “ This clearly refers to the two factors which the expert says that ‘041 does not have. US ‘041 refer to Blade pitch angle. This alteration of the blade pitch angle is not claimed by this prior art but it is clear from this document that if the blade pitch angle is variable then that is also used by the wind observer. It refers to these parameters namely load torque, wind speed, yaw error, rotor speed and blade pitch angles as known parameters for predicting wind speed. It is undeniable that ‘041 controls the wind turbine approximately following the varying wind speeds.(Col 5l, 40-45) When a wind speed increase is predicted , rotor speed is decreased, when a wind speed decrease is predicted , rotor speed is increased.” ‘041 provides an estimated wind speed schedule to a parameter schedule of “desired operating parameters” The Person skilled in the art who wants to monitor the sensor for sensing the flow speed of the medium (claim1), would learn from Bonus about the wind measurement error and how power production and wind speed are related. She learns from Bonus that after the wind speed reaches the rated power the signal from the anemometer (wind speed indicator) is used in taking the decision to stop the wind turbine. Now if instead of stopping the wind turbine what can she do? ‘041 tells us that when the speed increases the blades may be fully feathered so that the blades are parallel to the air flow. Fig 5c will follow Fig 5a or as we see in the invention Fig 2 will happen.
50. This is common sense. This is not hindsight analysis. It is clearly spelt out in the documents mentioned above and the expert virtually admits it. Once the wind speed is predicted, monitoring is just the next step. Prediction means measuring the wind speed in advance. Once that is measured if monitoring is necessary it will surely be done. And if there are known parameters for reckoning the wind speed they will “obviously” be used. Both the parameters are known parameters. Even in the sequence there is nothing non-obvious. Until the rated speed is reached it can only be the wind speed which is relevant, only thereafter can the other parameter be reckoned. This is neither a Eureka moment nor an aha moment. To the person who has been engaged in wind energy, this would not be non-obvious.
51. We have already seen that
from the 1990s in India and elsewhere in the world there has been a spurt in wind energy activity. The 1990s were undoubtedly years of considerable change. The rated capacity of wind turbines was increasing rapidly, as was the size of wind farms.
Wind speed cannot be controlled.
It increases or decreases at will.
That is why prediction of the wind speed and monitoring is required.
We have already seen that ‘041 tells us that the blade pitch angle was known to be one of the parameters.
If the pitch angle is not variable, then of course the anemometer can not use it to monitor the wind flow,
But if the pitch angle can be varied and the wind speed is very high ,
what will the person skilled in the art who has common sense do?
She will use the other known parameter that is the blade pitch angle and feather the blades. The answer it appears “is blowing’ in the wind”, it is obvious.
from the 1990s in India and elsewhere in the world there has been a spurt in wind energy activity. The 1990s were undoubtedly years of considerable change. The rated capacity of wind turbines was increasing rapidly, as was the size of wind farms.
Wind speed cannot be controlled.
It increases or decreases at will.
That is why prediction of the wind speed and monitoring is required.
We have already seen that ‘041 tells us that the blade pitch angle was known to be one of the parameters.
If the pitch angle is not variable, then of course the anemometer can not use it to monitor the wind flow,
But if the pitch angle can be varied and the wind speed is very high ,
what will the person skilled in the art who has common sense do?
She will use the other known parameter that is the blade pitch angle and feather the blades. The answer it appears “is blowing’ in the wind”, it is obvious.
52. The proposed claim also speaks of detecting the flow speed, comparing it with at least one operating parameter and of the sequence the parameters.
In view of the reasoning above, the amended claims cannot be granted both on merits and on account of delay.
In view of the reasoning above, the amended claims cannot be granted both on merits and on account of delay.
53. This case and several others form a batch of Revocation Petitions filed by the same applicant against the same respondent. In all the matters, the question
whether the applicant has locus standi and is a person aggrieved and whether as the respondents licensee would he not be estopped from the challenging the patent were raised.
In addition, in all the matters amendment were filed to the claims belated and this was challenged by the applicant. In ORA/6/2009 which was the first application of this batch in which orders were pronounced we have dealt in detail regarding this issues and the same would apply to this case also.
Therefore we hold for the reasons stated in ORA/6/2009 that the applicant has the locus standi to file the revocation application and the applicant cannot be estopped based on the Doctrine of a Licensee Estoppel from challenging the patent.
As regards amendment,
we had held that the principles on which the discretion for allowing amendments are ”full and fair disclosure of all relevant matters, compliance with the statute, public interest requirement of seeking amendment promptly and above all the conduct.” In ORA/6/2009, we found that the respondent failed on almost all counts.
whether the applicant has locus standi and is a person aggrieved and whether as the respondents licensee would he not be estopped from the challenging the patent were raised.
In addition, in all the matters amendment were filed to the claims belated and this was challenged by the applicant. In ORA/6/2009 which was the first application of this batch in which orders were pronounced we have dealt in detail regarding this issues and the same would apply to this case also.
Therefore we hold for the reasons stated in ORA/6/2009 that the applicant has the locus standi to file the revocation application and the applicant cannot be estopped based on the Doctrine of a Licensee Estoppel from challenging the patent.
As regards amendment,
we had held that the principles on which the discretion for allowing amendments are ”full and fair disclosure of all relevant matters, compliance with the statute, public interest requirement of seeking amendment promptly and above all the conduct.” In ORA/6/2009, we found that the respondent failed on almost all counts.
54. In ORA/6/2009 we dismissed the amendment application but since we were of the opinion that there was an inventive step we directed the respondent to file amendment claim conforming to our finding.
55. In Miscellaneous Petition No. 142/2012, the patentee sought amendment in Sept 2012 without prejudice to his right to sustain his granted claims, But they had already filed in the EP Opposition proceedings in Jan 2010 their auxiliary petition. Yet they kept their unamended claims until the hearing. We bear in mind this conduct also. Here, we find the invention is obvious. The amendment sought for cannot be granted for the same reasons as we held in ORA/6/2009.
Further all the features of the proposed claims are obvious as seen above.
Further all the features of the proposed claims are obvious as seen above.
56. In the result, the patent No.IN203552 is revoked.
Miscellaneous Petition No. 7/2010 for stay is dismissed. Miscellaneous Petition No. 31/2010 for urgent hearing and stay is dismissed.
Miscellaneous Petition No. 51/2010 for dismissal of the revocation application is dismissed.
Miscellaneous Petition No. 86/2012 for filing the decision of the Opposition Board dated 24/02/2010 is allowed.
Miscellaneous Petition No. 142/2012 for amendment of granted claims is dismissed. Miscellaneous Petition No. 143/2012 for reception of the evidence of expert affidavit is allowed.
The ORA/8/2009/PT/CH is allowed. No costs.
Miscellaneous Petition No. 7/2010 for stay is dismissed. Miscellaneous Petition No. 31/2010 for urgent hearing and stay is dismissed.
Miscellaneous Petition No. 51/2010 for dismissal of the revocation application is dismissed.
Miscellaneous Petition No. 86/2012 for filing the decision of the Opposition Board dated 24/02/2010 is allowed.
Miscellaneous Petition No. 142/2012 for amendment of granted claims is dismissed. Miscellaneous Petition No. 143/2012 for reception of the evidence of expert affidavit is allowed.
The ORA/8/2009/PT/CH is allowed. No costs.
(D.P.S. PARMAR) (JUSTICE PRABHA SRIDEVAN)
TECHNICAL MEMBER (Patents) CHAIRMAN
Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.
