Testing the Boundaries of Claim Mapping and Patent Enforcement in India
Introduction:This case concerns a patent infringement dispute involving a technological startup and a global electronics giant. Conqueror Innovations Pvt. Ltd., a recognized MSME and startup in India, filed a suit against Xiaomi Technology India Pvt. Ltd. for allegedly infringing Patent No. 244963 titled “A Communication Device Finder System.” The core of the dispute centered on Xiaomi’s pre-installed “Find Device” feature in its smartphones and whether it infringed the claimed patented invention. The case provides judicial clarity on standards of patent infringement, particularly concerning essential features, claim mapping, and working of patents in India.
Factual Background: The plaintiff No. 2, an Indian citizen and inventor, began developing the invention in 2004, addressing shortcomings in anti-theft technologies that failed once a thief removed the SIM or disabled the device. The patent application was filed on 17 October 2006 and granted on 28 December 2010 without opposition. The invention aimed to facilitate the tracking and recovery of lost or stolen mobile devices through embedded non-erasable security elements.
The suit patent, later assigned to plaintiff No. 1, a company recognized under the Indian startup and MSME frameworks, claims features including a flash memory capable of auto-reinstalling data, and a silent auto-answer mode. The plaintiffs claim that between 2015 and 2019, subscriptions to the patented system were sold both online and offline. In January 2023, the plaintiffs discovered that Xiaomi’s devices were using a “Find Device” feature that they believed infringed their patent.
Procedural Background: The plaintiffs filed the suit in May 2023 seeking permanent injunction, damages, and interim relief. Initial summons were issued on 29 May 2023. Mediation was attempted but failed. Subsequently, an application under Order XXXIX Rules 1 and 2 CPC was filed seeking interim injunction and directions for royalty deposit. Xiaomi filed its written statement and a counterclaim for revocation of the suit patent on 14 August 2023, asserting lack of novelty and inventive step.
Legal Issue:The primary legal issues were whether Xiaomi’s “Find Device” feature infringed the suit patent, whether all essential features of the independent claim were present in Xiaomi’s devices, and whether the plaintiffs were entitled to interim injunction despite alleged non-working of the patent and delay in approaching the court.
Discussion on Judgments: In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, the Supreme Court underscored that in patent infringement suits, the complete specification must be closely analyzed to construe the claims.
The plaintiffs cited Sotefin SA v. Indraprastha Cancer Society & Research Center, 2022 SCC OnLine Del 516, to argue for a holistic interpretation of claims based on the invention’s pith and marrow, not a literal claim-by-claim comparison. However, the court held this case distinguishable since essential features of the claim were absent in Xiaomi’s devices.
In Crystal Crop Protection Ltd. v. Safex Chemicals India Ltd., 2025 SCC OnLine Del 2981, the Delhi High Court reaffirmed that essential features of a patent are those that address problems identified in prior art. This principle was relied upon to assess whether Xiaomi’s devices had the essential features of the suit patent.
The court also referred to Guala Closures v. AGI Greenpac Ltd., 2024 SCC OnLine Del 3510, to identify that the portion of a claim introduced with “characterized in that” typically includes the novelty.
Regarding dependent claims, the court applied Teledyne McCormick Selph v. United States, MANU/USFD/0071/1977, which held that if independent claims are not infringed, dependent claims cannot be infringed either. This was reinforced by Wahpeton Canvas Co. v. Frontier, Inc., MANU/USFD/0128/1989, and other international judgments.
To assess the effect of non-working of patents on interim relief, the court relied on Franz Xaver Huemer v. New Yash Engineers, 1996 SCC OnLine Del 243, where a Division Bench held that patentees who have not worked their invention in India are not entitled to equitable interim relief.
Reasoning and Analysis of the Judge: The Court methodically analyzed the patent claims and Xiaomi’s “Find Device” feature. The Court began by reviewing the suit patent’s specification and identified that its essential features included a flash memory with data reinstallation, a ROM with non-erasable message center number, and a silent auto-answer mode triggered remotely.
Xiaomi’s “Find Device” could remotely lock, erase data, or play sound, but lacked the ability to silently auto-answer incoming calls or reinstall deleted data. It was also vulnerable to factory resets, whereas the patented invention specifically guarded against such resets through reinstallation from non-erasable memory.
The court found the plaintiffs’ claim mapping deficient as it failed to demonstrate that Xiaomi’s feature included these essential components. Since independent claim 1 was not infringed, dependent claims could not be relied upon either.
The judge also noted that Forms 27 filed by the plaintiffs with the Patent Office indicated minimal use of the patent in India, and only for a limited time in FY 2019–20. The court held that non-working of the patent and absence of evidence of substantial commercial exploitation weighed against the grant of an injunction.
Additionally, the court found the plaintiffs’ explanation of discovering the infringement in 2023 unconvincing, noting that Xiaomi had been selling its phones with the “Find Device” feature since 2014. This unexplained delay further weakened their claim for equitable relief.
Final Decision: The court held that the plaintiffs failed to establish a prima facie case of patent infringement. Since the essential features of the patent were not found in Xiaomi’s devices, interim injunction could not be granted. The balance of convenience and irreparable injury also favored the defendant. The court dismissed the applications for interim injunction but directed Xiaomi to maintain accounts of the impugned devices and file half-yearly statements. Observations made were expressly limited to the interim stage and not to prejudice final adjudication.
Law Settled in This Case: This case reinforces the principle that in patent infringement analysis, the essential features of the independent claim must be shown to be present in the impugned product. A patentee cannot succeed merely by showing partial overlap with dependent claims. Non-working of the patent in India and inordinate delay in asserting patent rights can justify denial of equitable interim relief. Claim mapping must be comprehensive and must demonstrate the presence of all inventive elements, especially those that overcome limitations in prior art. The court also reiterated that a “characterized in that” clause in a claim often defines the novelty and must be carefully considered.
Case Title: Conqueror Innovations Pvt. Ltd. Vs Xiaomi Technology India Pvt. Ltd.:Date of Order: 04 July 2025:Case Number: CS (COMM) 361/2023:Neutral Citation: 2025:DHC:5233:name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
