Avery Dennison Corporation Vs. Controller of Patents and Designs

• A significant time gap between prior art and the invention, coupled with a lack of intervening solutions, supports non-obviousness.

Introduction

In the realm of intellectual property law, the concept of an "inventive step" often serves as the crucible in which patent applications are tested. The case of Avery Dennison Corporation vs. Controller of Patents and Designs, decided on November 4, 2022, by the Delhi High Court, exemplifies this intricate legal scrutiny. At its core, this appeal challenged the refusal of a patent for a "Notched Fastener" on the grounds that it lacked an inventive step under the Indian Patents Act, 1970. The case delves into the nuances of patentability, the evaluation of prior art, and the judicial approaches to determining obviousness, offering a compelling narrative of technical innovation pitted against legal rigor. This detailed case study explores the factual and procedural backdrop, the legal issues, the arguments of the parties, the judicial reasoning, and the broader implications of the court's decision.

Detailed Factual Background

Avery Dennison Corporation, a global leader in branding and labeling solutions, has been a prominent name since its inception in 1935 as Kum Kleen Products, later merging with Dennison Manufacturing Company in 1990 to adopt its current identity. The corporation specializes in manufacturing labeling materials designed to enhance brand packaging and convey product information. The subject of this dispute was a patent application titled "Notched Fastener," bearing Application No. 5160/DELNP/2013, filed in India on June 10, 2013, as part of the national phase entry of a PCT application (PCT/US2011/062189) dated November 28, 2011. The invention aimed to improve fastener stock used in industries for attaching tags or labels, addressing issues of inconsistency in cutting and wastage in conventional systems.

The fastener stock in question was designed to ensure uniform dispensing and consistent cutting through specific features: the strategic positioning, shape, and orientation of notches. These notches, described as rectangular or square and aligned with desired cut locations, facilitated precise severance of fasteners from the stock, reducing variations caused by the elasticity of materials in traditional systems. The invention promised economic significance by simplifying manufacturing processes and enhancing the reliability of fastener application.

Detailed Procedural Background

The procedural journey of the patent application began with its filing in India, followed by a request for examination. On April 25, 2018, the Controller of Patents issued a First Examination Report (FER), raising objections primarily on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970. The FER cited three prior art documents:

• D1: GB2053296A (published February 4, 1981), related to fastener guns.
• D2: WO 94/10044A1 (published May 11, 1994), an earlier application by Avery Dennison concerning an apparatus for dispensing fasteners from ladder stock.
• D3: US4456123A (published June 26, 1984), another document on fastener mechanisms.

In response, Avery Dennison amended its claims and submitted arguments to counter the objections. However, the Controller remained unconvinced, leading to a hearing on March 1, 2021. The applicant filed written submissions on March 16, 2021, but the Controller, in an order dated August 12, 2021, refused the patent application under Section 15 of the Act, citing a lack of inventive step based primarily on prior art documents D2 and D3. Aggrieved by this decision, Avery Dennison appealed to the Delhi High Court under Section 117A(2) of the Patents Act, seeking to set aside the Controller’s order.

Issues Involved in the Case

The central issue in this case was whether the subject patent application for the "Notched Fastener" lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970, in light of the cited prior art, particularly D2. Subsumed within this issue were several critical questions:

• Did the specific features of the notch (its position, shape, and orientation) constitute a technical advancement over the prior art?
• Was the invention obvious to a person skilled in the art, given the disclosures in D2 and other prior art documents?
• Did the Controller adequately analyze the prior art and the subject invention to justify the refusal?
• Could the invention be dismissed as a mere workshop improvement or an attempt at evergreening an earlier patent?

These questions required the court to navigate the complex interplay of technical innovation, legal standards for patentability, and judicial precedents on obviousness.

Detailed Submission of Parties

The appellant argued vehemently that the subject patent embodied an inventive step. The key submissions were:

• The invention’s novelty lay in the notch’s creation, position, shape (rectangular or square), and orientation relative to cross-pieces, which collectively addressed the problem of inconsistent cutting due to the elasticity of fastener stock.
• The technical advancement was evident in achieving uniform dispensing and precise severance, reducing wastage and enhancing economic efficiency.
• Prior art document D2, while relevant, was distinguishable. D2 used triangular notches engaged by a pawl mechanism, which was less efficient and more complex to manufacture compared to the subject patent’s direct engagement with the feeding system.
• D3 was irrelevant as its notches were positioned for cutting rather than engaging the feeder mechanism, effectively teaching away from the subject invention.
• The appellant emphasized that the invention’s simplicity should not negate its patentability, and the economic significance of the notched fastener justified its protection.

In contrast Controller, defended the refusal, arguing:

• The notch’s features in the subject patent were obvious variations of D2, which already disclosed the use of notches for fastener stock movement. A change in shape or position was a mere workshop improvement, not an inventive step.
• The engagement mechanism (pawl vs. direct) was irrelevant to the inventive step analysis.
• As D2 was also filed by Avery Dennison, the subject patent appeared to be an attempt at evergreening an earlier invention.
• The appellant failed to provide substantial data to support claims of economic advantage.
• The Controller relied on judicial precedent, notably Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700, to argue that minor modifications do not warrant patent protection.

Detailed Discussion on Judgments Cited by Parties

The court’s analysis was enriched by a robust discussion of judicial precedents, which both parties and the court invoked to frame the inventive step inquiry. The key judgments cited, along with their context, are:

• Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC OnLine Del 1700: Cited by the Controller to argue that minor changes, such as the notch’s shape or position, constitute workshop improvements rather than inventive steps. The court in Bristol-Myers emphasized that structural similarities in prior art must provide motivation for the claimed invention, and mere modifications do not suffice for patentability.
• F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del): Referenced by the court to discuss the problem-solution approach to obviousness. This case modified the Windsurfing test by adding a step to assess whether differences between prior art and the invention involve ordinary application or multiple complex steps, emphasizing the need to avoid hindsight.
• Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59: A seminal UK case cited by the court, laying down a four-step test for obviousness: identifying the inventive concept, imputing common general knowledge to a skilled person, identifying differences between prior art and the invention, and determining if those differences were obvious. This test formed the foundation for the court’s analysis.
• Pozzoli Spa v. BDMO SA, [2006] EWHC 1398 (Ch): Cited to refine the Windsurfing test, emphasizing the identification of the person skilled in the art and the inventive concept. The court used this to structure its comparison of the subject patent with D2.
• Actavis Group PTC EHF v. ICOS Corporation, [2019] RPC 9: Referenced for its comprehensive list of considerations for assessing obviousness, including whether the invention was obvious to try, the routine nature of research, and the motive of the skilled person. The court found these factors relevant to evaluate the non-obviousness of the notched fastener.
• Human Genome Sciences v. Eli Lilly, [2012] RPC 6: Cited alongside Actavis to underscore the need for a nuanced approach to obviousness, tailored to the specific technology and prior art.
• Johns-Manville Corporation, [1967] R.P.C. 479: Mentioned to reinforce the importance of considering the skilled person’s knowledge at the priority date.
• KSR International v. Teleflex, 550 U.S. 398 (2007): A U.S. Supreme Court case cited to discuss the Teaching-Suggestion-Motivation (TSM) test, cautioning against its rigid application. The court used this to argue that obviousness should not be assessed narrowly.
• Vickers v. Siddell, (1890) 7 R.P.C. 292: Invoked to emphasize that simplicity does not negate inventiveness. The House of Lords’ observation that simple inventions can be groundbreaking was pivotal in countering the Controller’s dismissal of the notch’s modifications as superficial.
• Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd., (1929) 46 R.P.C. 23: Cited to reinforce that simplicity and bold conception can justify patentability, particularly when addressing long-standing problems.
• Brugger v. Medic-Aid Ltd., [1996] R.P.C. 635: Referenced via Terrell on Law of Patents to highlight the “long felt want” concept, suggesting that a significant time gap between prior art and the invention indicates non-obviousness if the improvement was not previously adopted despite a known need.
• Agriboard International LLC. v. Deputy Controller of Patents & Designs, [C.A.(COMM.IPD-PAT) 4/2022, dated March 31, 2022]: A recent Delhi High Court decision cited to stress that a rejection for lack of inventive step must include a detailed analysis of prior art, the subject invention, and the obviousness to a skilled person. This precedent guided the court’s critique of the Controller’s cursory analysis.
• 3M Innovative Properties Ltd. and Ors. vs. Venus Safety and Health Pvt. Ltd., FAO (OS) 292/2014 & CM No. 10651/2014: Referred to for its approach to comparing prior art with the claimed invention from the perspective of a skilled person, emphasizing technical advancement.

These precedents collectively shaped the court’s framework for evaluating the inventive step, balancing simplicity, time gaps, and technical advancement against the Controller’s objections.

Detailed Reasoning and Analysis of Judge

Court's judgment is a meticulous exposition of patent law principles, blending technical analysis with legal reasoning. The court began by outlining the various approaches to assessing inventive step, including the obvious-to-try, problem-solution, could-would, and TSM tests, as well as the Windsurfing and Pozzoli frameworks. It emphasized that no single test should be applied rigidly; instead, the court adopted a flexible approach tailored to the fastener technology and prior art.

The inventive concept of the subject patent was identified as residing in three features: the position of the notch (aligned with cut locations for consistent severance), the shape of the notch (rectangular or square for linear movement), and the direction of the notch relative to cross-pieces (enabling efficient feeding). The court compared these features with D2, the closest prior art, which used triangular notches engaged by a pawl mechanism. The court noted that D2’s mechanism was less precise, leading to irregular cutting due to elasticity, a problem explicitly addressed in the subject patent’s specification.

Applying the Windsurfing/Pozzoli test, as modified by F. Hoffmann-La Roche, the court found significant differences between D2 and the subject patent. The subject patent’s notches ensured uniform dispensing and precise cutting, overcoming the disadvantages of D2’s rotary feed system. The court rejected the Controller’s characterization of these differences as “superficial,” citing Vickers and Pope to argue that simplicity does not negate inventiveness. The 18-year gap between D2 (filed in 1993) and the subject patent (filed in 2011) was a critical factor. The court invoked Brugger’s “long felt want” principle, noting that no other prior art or third party had addressed D2’s shortcomings in this manner, suggesting the invention’s non-obviousness.

The court also addressed the Controller’s evergreening argument, finding it inapplicable since the subject patent offered a distinct technical advancement. The grants of corresponding patents in the USA, Japan, South Korea, and China further bolstered the appellant’s case. Critically, the court relied on Agriboard to fault the Controller for failing to provide a detailed analysis of how the subject invention was obvious, rendering the refusal order deficient.

Final Decision

The Delhi High Court allowed the appeal, setting aside the Controller’s order of August 12, 2021. The court directed that the patent proceed for grant, with the case listed before the Patent Office on November 14, 2022, for completion of formalities. No costs were awarded.

Law Settled in this Case

This case reinforces several key principles in Indian patent law:

• Simplicity in an invention does not preclude patentability if it addresses a technical problem with unpredictable advantages.
• A significant time gap between prior art and the invention, coupled with a lack of intervening solutions, supports non-obviousness.
• The Controller must provide a reasoned analysis of prior art, the subject invention, and obviousness to justify a refusal under Section 2(1)(ja).
• The Windsurfing/Pozzoli test, as modified by Indian precedents, is a robust framework for assessing inventive step, but courts may adopt a flexible approach combining multiple tests.
• Evergreening objections require evidence of mere extension rather than technical advancement.

Case Title: Avery Dennison Corporation Vs. Controller of Patents and Designs

Date of Order: November 4, 2022

Case No.: C.A. (COMM. IPD-PAT) 29/2021

Neutral Citation: 2022/DHC/004697

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Prathiba M. Singh

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi