Many of the readers who own a Xiaomi device would be familiar with the company’s ‘Find Device’ feature that allows users to perform features on their phone remotely, including the ability to track, lock or even erase data from it. This functionality was at the centre of an important order recently where the Delhi HC refused to issue an interim injunction against Xiaomi from using its ‘Find Device’ feature on the allegations of patent infringement raised by the plaintiff, a startup named Conqueror Innovations (CI). The factors that informed the judicial verdict included: the inability of plaintiffs to establish the presence of essential elements of the suit patent in the defendant’s devices, the almost non-existent working of the plaintiffs’ patent in India, and the inordinate delay of nine years in filing the suit since the defendant has been selling the impugned devices in India. In this blogpost, my aim is to analyse the reasoning and conclusions reached by the Court on the first consideration and also simplify the elements. The most salient aspect of this order, as I argue, is its mapping of the essential features of the suit patent and then assessing whether they were present in the defendant’s technology or not. Now, let’s ‘find’ the essence of this order!
The Technologies in Question and Respective Parties’ Case:
As per the case set up by the plaintiffs CI, the invention in question is titled ‘A Communication Device Finder System’. It was intended as an improvement over the existing anti-theft functionalities. The objectives of the suit patent, plaintiff’s device finder system, were to provide non-erasable security features, security activation feature that would trigger an ‘auto-answer’ mode for calls, auto-reinstallation feature that could restore deleted data, etc. In para 21, the Court notes that elements 2 and 3 of the independent Claim 1 reveal its three novel features (i) a flash memory for auto-reinstallation of the data (including the message center number unique to your phone) or a non-erasable ROM that contains that data, that is crucial for the security activation element, therefore protecting that dataset against deletion attempts (ii) a trigger functionality that would activate the security element mentioned in (i); and (iii) the security element itself, the task of which is to be enable the ‘auto-answer’ mode on the device without any voice/visual cues. The system therefore protects the lost phone against attempts at deactivation of the security element.
As the Court explains in para 23, Xiaomi’s Find Device functionality provides three features to the user of the lost device: (i) sound mode where the device owner can play sound on the device at max volume in a remote fashion, and without any control from the unauthorized user (ii) lost mode that ends up locking the phone; the device still receives calls but there is no auto-answering, and (iii) erase mode that enables the owner to clean the device of all personal data. Interestingly, Xiaomi’s technology is also quite similar to Apple’s ‘Find Devices’, which seems to have these three modes as well.
The plaintiffs argued that the Claim 1’s elements 2 and 3 were accessible through the defendant’s website. Moreover, they alleged that the defendant misconstrued the element 3(‘the auto-answer mode’) as a snooping functionality by using terms such as silent mode, conversations, etc. that were not used in Claim 1. The defendant’s feature was also pre-installed in their devices’ ROM, thereby equating it to plaintiffs’ element 2. Additionally, there were arguments made on infringement of suit patent’s dependent claims. The defendant in turn disagreed with the plaintiffs’ construction of the suit patent’s elements and impugned the attempted mapping. The defendant further distinguished their technology by claiming that it gets disabled on a factory reset, which is not the case with suit patent.
Error 404! Similarities Not Found:
The Court proceeded with a scrutiny of the plaintiff’s claim mapping. In criticising the plaintiff’s case, the Court noted the absence of essential elements of the suit patent’s independent claim 1, in the defendant’s devices. Xiaomi’s Find device feature did not have any auto-answer mode like the suit patent. Moreover, there was no mention of any such flash memory technology for reinstallation of data or a ROM with non-erasable message center number. The Court interpreted the auto-answer mode of the suit patent through a reference to its complete specification that actually used the term ‘silent mode’. Also, the mere fact of Xiaomi’s feature being stored in the device’s ROM does not make it the equivalent of suit patent claim’s element 2, that was a flash memory with auto reinstallation ability and the ROM with ‘non-erasable message center number’. In its claim mapping, the plaintiffs had failed to prove the presence of these features in the defendant’s ‘Find Device’ system. In the absence of an infringement of the independent claim 1, the arguments pertaining to the dependent claims also failed.
Pith and Marrow, and the Interesting Reference to Sotefin:
Owing to its being an interim application decision, there is an absence of any detailed exposition on the law on patent infringement analysis in the order, which does exist in a confused state of existence. (Interested readers can refer to some of these posts here and here for an initial dive into the different doctrines). Nevertheless, I could see the pith and marrow doctrine raised by the plaintiffs. The pith and marrow test, assesses the question of infringement from the point of view of the invention’s core substance, i.e., the essential components of it being present in the infringing product.
One can surmise that the approach followed in the present case is the original pith and marrow doctrine, as Adarsh Ramanujan terms it in his commentary. The original variant, as evident, rests on the essential/non-essential distinction of elements. However, the UK jurisprudence (from where this doctrine arose) moved to an evolved version where all features of the claim are presumed ‘essential’ to the invention. Ramanujan notes that Indian courts, still continue to apply the original iteration of the pith and marrow doctrine.
There is another infringement doctrine, the doctrine of equivalents, that is often used in cases and bears a degree of resonance with pith and marrow. Doctrine of equivalents allows for a positive finding of infringement in situations where components of the patent claims are replaced by the infringer with ‘equivalent’ elements; this would mean that the infringing product/process performs the same functions in the same way to lead to same result (this is the triple identity test which is one of the bedrock iterations of the equivalents doctrine). However, both are different doctrines: the former is a product of UK law and the latter came from the US jurisprudence (the distinction was discussed by Prof Basheer in this blog). Moreover, the equivalents doctrine (and its triple identity test) is broader due to its focus on the replacement of elements with equivalents for both essential and non-essential (thereby adhering to the all-elements rule), whereas the original pith and marrow needs the essential elements to be present in the infringing product/process. Indian Courts often failed to highlight the distinctiveness of these doctrines and cited them concurrently, which is evident from examples such as FMC Natco case and SNPC machines (discussed in blogs here and here).
In the present scenario the plaintiffs tried to counter the defendant’s submissions as being predicated on a literal, element-by-element claim analysis and presented the pith and marrow doctrine as the preferred alternative. However, a reading of the Court’s analysis reveals that the approach taken by the Court in fact aligns with the original pith and marrow test: in their claim mapping, the plaintiffs had failed to satisfy the requisites of the doctrine since Xiaomi’s impugned feature nowhere contained the core substance of plaintiff’s suit patent, which were the three functionalities discussed previously. If one were to apply doctrine of equivalents and the triple identity test as well, Xiaomi would still be saved. The Court notes that Xiaomi’s feature is focused particularly on the safety of the data through the erasure function and the remote locking. The Court’s analysis evinces a clear difference in the way (i) both technologies work, (ii) the functions they serve, and (iii) the result that they seek to achieve.
In advancing their submissions, both sides relied on the case of Sotefin SA v Indraprastha Cancer Society to substantiate their case. In Sotefin SA, the Court held that the two absent features of the plaintiff’s patent did not have any material enhancing effect on the suit patent’s functionality; the defendant’s Smart Dollies thus performed substantially the same result in the same way. Consequently, the factual matrix of Sotefin SA stands in direct contrast to the present scenario. The features of plaintiffs’ suit patent that Xiaomi’s technology did not have were the former’s essential elements, as opposed to the two non-essential components in Sotefin.
Thus readers, for now, it looks like you can comfortably continue to use the ‘Find Use Feature’ on your device!
Until next time!
Thanks to Swaraj and Praharsh for their patience and perseverance in giving comments!