While refusing interim injunction against Xiaomi in anti-theft patent suit, the Delhi High Court has upheld the Single Judge’s finding that Conqueror Innovations failed to establish prima facie case of infringement of Patent No. 244963, with less than two months remaining before patent expiry. The Court, therefore, precluded the appellants from advancing a fresh construction of Element E2 in appeal by contending that mere presence of Security Activation Element (SAE) data in Read-Only Memory (ROM) satisfied the claim, when their plaint and claim chart had originally relied upon installation of third-party anti-theft applications to render the relevant data non-erasable in flash memory.
The High Court held that the essential feature of Element E2 is the non-erasable storage of relevant data, including the message centre number, in flash memory with auto-reinstall feature and/or in ROM. Since the message centre number is SIM-dependent and cannot be permanently stored in ROM, the appellants’ ROM-only interpretation was held to be inconsistent with the working of the claimed invention.
The Court also construed ‘auto-answer mode’ in light of the patentee’s own description in the complete specification, holding that it means silent automatic answering of incoming calls without visual or voice cues, enabling the owner to listen to surroundings of the stolen device. The appellants’ attempt to equate it with mere remote activation was rejected as contrary to their own pleadings and as lacking novelty over prior art.
The unexplained nine-year delay in filing the suit, despite the appellants’ awareness of competing technologies as reflected in Form-27 for 2015, combined with less than two months remaining before patent expiry, justified denial of interim relief on the principle that no purpose would be served by injuncting the respondent for a negligible residual patent term.
The Division Bench comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora observed that the appellants were attempting to set up a new case in appeal regarding the construction of Elements E2 and E3 of Independent Claim 1, which was inconsistent with their own pleadings, evidence and claim charts before the Single Judge. The Court noted that the appellants’ original plaint and claim chart relied upon installation of third-party anti-theft applications to render the relevant data non-erasable and enable automatic restoration upon deletion, which contradicted their new ROM-only interpretation in appeal.
The court observed that the message centre number is network/SIM-dependent information which varies between operators and changes when a different SIM is inserted, and therefore cannot permanently be stored in ROM. The court further observed that the appellants’ own claim chart before the Single Judge described the ‘auto-answer mode’ functionality as enabling the authorized user to silently listen to the surroundings of the device, consistent with the definition in the detailed description of the suit patent.
The court noted that the appellants’ new construction of Element E3 as merely remote activation would render the claim vulnerable on novelty grounds, since remote activation of a lost/stolen mobile device was already disclosed in prior art references expressly acknowledged in the suit patent itself.
The court observed that Xiaomi’s ‘Find Device’ feature provides three principal options: Sound Mode, Lost Mode, and Erase Data, none of which automatically reinstalls deleted data or silently answers incoming calls. The court also noted that the appellants’ Form-27 for April 2015 demonstrated that the patentee was aware of mobile manufacturers employing allegedly infringing technologies much earlier, yet the suit was filed only in 2023 after a delay of approximately nine years.
Briefly, the appellants, Conqueror Innovations Private Limited had challenged the judgment of the Single Judge, which dismissed their applications for interim injunction against Xiaomi Technology India Private Limited. The underlying suit was filed seeking a permanent injunction restraining Xiaomi from infringing the appellants’ registered Patent No. 244963 titled ‘A Communication Device Finder System’. The suit patent was applied for on Oct 17, 2006, granted on Dec 28, 2010, and was set to expire on Oct 17, 2026, leaving less than two months of patent life at the time of the appeal. Appellant No. 2 was the inventor and first owner of the suit patent, who assigned it to Appellant No. 1 vide Deed of Assignment.
The invention was conceived after a burglary at Appellant No. 2’s premises in August 2004, during which he lost 152 mobile phones, prompting him to develop technology to recover lost or stolen devices without the assistance of enforcement agencies. The appellants claimed that Xiaomi’s smartphones, tablets, Mi Pads, laptops and notebooks incorporate an ‘anti-theft kill switch tool’ feature that implements the technology of the suit patent, and that these devices also comply with ITU standards T-REC-X.1127-(09/2017) and T-REC-Q.5051-(03/2020). The appellants sent a legal notice offering a FRAND licence, but received no response from Xiaomi, which has been selling its devices in India since 2014, which was not disputed by the appellants.
