Ericsson vs intex an overview of software patenting

1. CHENNAI
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ERICSSON VS INTEX-AN
OVERVIEW OF SOFTWARE
PATENTING
P.ILANANGAI
IP CONSULTANT
PATENT DEPARTMENT

2. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The term “software patent” does not really have a universally accepted meaning.
• Broadest definition: A software patent is any patent that covers a computer
implemented process.
• The Indian IT industry has witnessed tremendous growth in the past decade,
resulting in large IT companies.
• In the initial phases, the IT industry was largely focused on offering services.
However, eventually, several companies started creating software products.
• Companies that create software products strive on innovation to create unique
products to counter competition, hence, the desire to protect such innovation
through patents and sustain competitive advantage.
• contd…
INTRODUCTION

3. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• Exs:
• Software may be incorporated in a computer or an apparatus,
such as a household appliance or a car.
• Software may provide technical functions, such as controlling a
machine or regulating the room temperature.
• Do we really need a patent for software-related invention?
• WHY PROTECT SOFTWARE THROUGH PATENTS?
• An owner of a patent may prevent all others from making,
using, selling, or importing the patented invention.
• One thing that is clear is that software can still be patented. But
not all software can be patented.
• contd…..

4. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• If software merely implements an abstract idea, then a claim to
that software will likely be rejected by the courts and the patent
office as being directed to an unpatentable abstract idea.
• In contrast, if the software is designed to improve the
functioning of a computer or some other type of technology,
then that software should be considered patent eligible.
• It is to be noted that…..
• Over the years the patent office categorized patents into various
classes and sub-classes. Currently the US Patent office
classifies patents using the Cooperative Patent Classification
(CPC) which was jointly developed by the European Patent
Office and the USPTO. Software has never been classified in
the 474 classes of patents and over 160,000 sub-classes.

5. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
THE INDIAN PATENTS ACT, 1970
• The Indian Patent Act offers patent protection to product or process (if
they satisfy various requirements of patentability) as long as they do not
fall under non-patentable subject matter.
• Section 3(k) of the Indian Patent Act excludes 'a mathematical or
business method or a computer program per se or algorithms' from
patentability.
• contd…..

6. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
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WEBSITE
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GRANTED-SOFTWARE PATENTS-INDIA
Company Patent No. Title
Google 252220
Generating user information
for use in targeted
advertising
Google 252156
Method and system for text
segmentation
Google 246911
A method for automatically
targeting web-based
advertisements
Oracle 245515
Tracking space usage in a
database
Oracle 252448
In-place evolution of xml
schemas in databases
Ebay 242805
Facilitating micropayments
between a plurality of
parties
Ebay 239304
Method and system for
scheduling transaction
listings at a network-based
transaction facility

7. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
GUIDELINES TO COMPUTER RELATED INVENTIONS
• Recently the Indian Patent Office has issued guidelines to Computer
Related Inventions.
• For being considered patentable, the subject matter should involve either
-a novel hardware, or
-a novel hardware with a novel computer programme, or
-a novel computer programme with a known hardware which goes beyond
the normal interaction with such hardware and affects a change in the
functionality and/or performance of the existing hardware.
• contd…..

8. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• Example-Granted claims by Indian Patent Office:
• A method of controlling an electronic device (1) comprising a touch
sensitive display (11) the method comprising:
• displaying a plurality of graphical items (43) on the touch sensitive
display (11) where each graphical item (43) has an identity (44);
• detecting a coupling, formed by a user, of at least two graphical items
(43), the coupling comprising, a trace on the touch sensitive display
(11) between the at least two graphical items (43); and,
• performing an action dependent upon the identity (44) of the coupled
graphical items (43),
• characterized in that when the user begins to make the trace, an
indication is displayed to indicate the item (43) on which the trace
began.
contd…

9. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• Example-Claims refused by the Indian Patent Office:
• A method of scoring compatibility between members of a social
network, said method comprising the steps of:
• preparing interest compatibility scores based on expressed Interests of
the members of the social network; and
• computing a compatibility score between a first member of the social
network and a second member of the social network based on expressed
interests of the first member, expressed interests of the second member,
and the interest compatibility scores between the expressed interests of
the first member and the expressed interests of the second member.
• The Controller held “the said method for scoring compatibility
between the social network users is nothing but a business method
which shall be used commercially. Thus the subject matter of the
instant invention cannot be allowed u/s 3(k) of The Patents Act,
1970.

10. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ERICSSON VS INTEX
• Swedish telecom giant Ericsson has
one of the industry's strongest
intellectual property portfolios,
which includes more than 37, 000
granted patents, and equally as
many pending application,
worldwide. To date, Ericsson has
signed more than 100 patent-
licensing agreements with most
major players in the industry.
• Intex Technologies incepted in the
year 1996 is an Indian smartphones,
consumer durables and IT
Accessories manufacturer.
•

11. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• It all started back in 2008, when Ericsson approached Intex with the claim
that the devices it was importing into and selling in India infringed the
patents it held.
• Ericsson claimed that its patents were Standard-essential Patents (SEPs) that
are necessary for any devices that claim to be compliant with multiple
standards, including 2G/EDGE, 3G and Adaptive Multi-Rate [AMR].
• It offered to license its patents to Intex on FRAND licensing terms, and the
parties entered negotiations, despite clear reluctance on the part of Intex.
• Ericsson instituted similar negotiations with Gionee and Micromax around
the same time.
• While Intex was negotiating with Ericsson, and making its reluctance clear,
it also instituted proceedings against the company in the Competition
Commission of India [CCI] for abuse of dominance and filed petitions for
revocation of patents in the IPAB.
• contd….

12. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The plaintiffs arguments:
• The plaintiffs, Ericsson, argued that it owned multiple SEPs which are
necessary for any device to comply with the 2G, 3G standards, and that
Intex was selling products that claimed to be so compliant, but had not
licensed the patents from it.
• It thus claimed that the Intex devices were infringing on its patents.
• The defendants arguments:
• The defendants argued that the essentiality of the patents in question
had not been established in the first place, and that there were multiple
‘serious challenges’ pending against the same for violations of Section 8
and Section 64 of the Indian Patents Act.
• Intex here was relying on the argument that the validity of the patents
must be established first, before any action can be taken for
infringement, and that cannot be done at the interim stage.
• contd…..

13. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The defendants also had an issue with the fact that the plaintiff wanted
the royalties to be made on the basis of the selling price of each device,
and argued that it should only have to pay on the basis of the profit
margin on the sale price of the chipset in which the technology is used.
• The Court dismissed the arguments of the defendant with regards to
Sections 8 and 64, finding that none of the actions of the defendant,
including its lack of provision of all the details of the proceedings
against its patents in the various foreign offices, seriously damaged the
validity of the suit patents in question.
• The Court also dismissed the defendant’s arguments regarding the fact
that the plaintiff had yet to establish the essentiality of its patents.
• The Court also noted that the actions of Intex throughout the process,
starting from 2008 itself, show that it was acting in bad faith, and was
trying to avoid paying royalties to Ericsson.
•
contd……

14. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The defendant’s argument regarding charging royalties as per chipset rather
than selling price of devices was also rejected by the Courts, as per the
balance of convenience.
• The Court also dismissed the arguments of the defendants on the count of
the non-patentability of computer programmes under Sections 3(k) and 3(m)
of the Act.
• The Court conducted a detailed analysis of the position of the law in the
European Union, the United Kingdom and the United States, analysing the
‘technical features/character’ and ‘significantly more’ tests used in these
countries.
• These tests are used here to allow the patenting of computer programmes
despite the specific exclusion under the respective laws.
• These tests essentially require that as long as the invention itself is
patentable, the mere factum of its implementation by ‘modern technical
means in the form of a computer program’ should not be a bar to the
granting of the patent. contd……

15. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The patent that is granted here is not on the idea of invention, but the
technical process by which the invention carries it out.
• The Court stated the following: “thus, it […] appears to me prima facie
that any invention which has a technical contribution or has a technical
effect and is not merely a computer program per se […] and […] is
patentable”.
• Thus, all the arguments made by Intex were dismissed by the Court, and
arguably rightly so. The contrasting positions taken by Intex in front of
the CCI and the Delhi High Court, and its clear reluctance in the
negotiations with Ericsson are clear indicators of bad faith.
contd……

16. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The Delhi high court directed Delhi-based consumer electronics
vendor Intex Technologies (India) Ltd to pay royalties to
Ericsson for alleged infringement of eight patents relating to 2G,
3G and Edge technologies used in mobile phones and tablets.
• After fixing the royalty rates, the court has asked Intex to pay
50% of the amount of royalty (from the date of filing the suit till
1 March) directly to Ericsson and secure the remaining 50%
with a bank guarantee within a period of four weeks.

17. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CONCLUSION
• Thus, it appears that the Intex judgement may have
opened the doors to a new era of software patenting
in India, if not by setting down new law then by
codifying and implementing a different and
contested interpretation of the existing law.

18. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com