Gujarat High Court
Galatea Ltd vs Diyora And Bhanderi Corporation on 5 April, 2024
Author: Bhargav D. Karia
Bench: Bhargav D. Karia
NEUTRAL CITATION
C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/CIVIL SUITS NO. 2 of 2017
With
CIVIL APPLICATION (OJ) (FOR DIRECTION) NO. 1 of 2018
In R/CIVIL SUITS NO. 2 of 2017
With
CIVIL APPLICATION (FOR DIRECTION) NO. 1 of 2019
In R/CIVIL SUITS NO. 2 of 2017
With
CIVIL APPLICATION (FOR DIRECTION) NO. 2 of 2019
In R/CIVIL SUITS NO. 2 of 2017
CIVIL APPLICATION (COUNTER CLAIM) NO .1 OF 2022
In R/CIVIL SUITS NO. 2 of 2017
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR. JUSTICE BHARGAV D. KARIA
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1 Whether Reporters of Local Papers may be allowed
to see the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy
of the judgment ?
4 Whether this case involves a substantial question
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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GALATEA LTD & ANR.
Versus
DIYORA AND BHANDERI CORPORATION & ORS.
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Appearance:
Mr. Yatin Oza Senior Advocate, Mr. Neeraj
Malhotra Senior Advocate, learned advocates
Mr. Dilip Rana, Mr. Sandeep Grover, Mr. Ishwer
Upneja, Ms. Vara Gaur, Mr. Abhishek Arora and
Ms. Nirali Oza for the plaintiffs.
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NEUTRAL CITATION
C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024
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Mr. Saurabh N. Soparkar Senior Advocate with
learned advocates Mr. Tarun Khurana with Mr.
Manan Shah for the defendants.
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CORAM:HONOURABLE MR. JUSTICE BHARGAV D. KARIA
Date : 05/04/2024
CAV JUDGMENT
Sr. Particulars Paragraph nos.
No.
I Introduction 1.1 to 1.10
II Plaint 2.1 to 2.37
III Written Statement 3.1 to 3.8
IV Oral and Documentary 4.1 to 4.6
Evidence led by the
plaintiffs and the
defendants
V Applications filed by the 5.1 to 5.17
plaintiffs and the
defendants
VI Issues 6.1 to 6.21
VII Submissions of plaintiffs
A)On preliminary 7.1 to 7.25
objections
B) On merits 7.26 to 7.57
VIII Submissions of defendants
A)On preliminary 8.1 to 8.24
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objections
B) On merits 8.25 to 8.145
IX Counter claim filed by 9.1 to 9.76
defendant nos. 4 and 5 for
revocation of the suit
patent
X Reply/submission of the 10.1 to 10.45
plaintiffs for counter
claim - revocation of the
suit patent
XI Analysis
A) Preliminary
objections
i) for applying section 58 11.1 to 11.9 of the Evidence Act
ii) for not complying with 11.10 to 11.14 section 65B of the Evidence Act,1872
iii) to apply Order XI as 11.15 to 11.19 per Commercial Courts Act, 2015 B) on merits 11.20 to 11.137 C) counter claim 11.138 to 11.151 XII Conclusions A) Issue No.1 12.1 to 12.45 B) Issue Nos.2 and 3 12.46 to 12.98 (counter claim) XIII Order 1 to 3 Page 3 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined I - Introduction 1.1 Heard learned Senior Advocate Mr. Yatin Oza, learned Senior Advocate Mr. Neeraj Malhotra and learned advocates Mr. Sandeep Grover, for the plaintiffs and learned Senior Advocate Mr. Saurabh N. Soparkar with learned advocate Mr. Tarun Khurana for the defendants. 1.2 The plaintiffs have filed this suit under the provisions of the Patent Act, 1970 for infringement of Patent No.271425 (here in after referred to as "the suit patent") by the defendants and the defendants have filed the counter claim for revocation of Suit Patent. 1.3 The suit was originally filed before the District Court, Surat which was registered as Trade Mark Suit No.3/2017 Page 4 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which was transferred to the Commercial Court at Vadodara.
1.4 After the suit was transferred to Commercial Court, Vadodara, notices were issued to the defendants through their respective advocates and were served upon the defendants. Learned advocates for the parties thereafter filed witness lists vide Exhs.71 and 72. Learned advocate for the defendants filed additional witness lists vide Exhs.73 and 75.
1.5 Thereafter affidavits in lieu of examination in chief of the witnesses were filed on behalf of the plaintiffs at Exhs.76 to 84 and defendants filed affidavits in lieu of examination in chief of the witnesses vide Exhs.85 to 97. The District Court sent the affidavits received from both sides to the Page 5 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Commissioner for recording the deposition of the witnesses who filed the affidavits and rest of the witnesses though named for whom no affidavits were submitted, were brought as agreed by both the sides for recording their evidence. The Court Commissioner submitted his report vide Exhs. 102 to 109.
1.6 It appears that in view of the notification dated 08.05.2019, the Court Commissioner at Vadodara was disbanded by the High Court and original record and proceedings of the suit were sent back for further necessary action at the District Court, Vadodara.
1.7 Thereafter pursuant to the counter claim filed by the defendants for revocation of the suit patent, as per the provision of section 104 of the Patent Page 6 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Act, 1970 (For short "the Patent Act") suit was transferred to this Court and was renumbered as Civil Suit No.2 of 2017. Thereafter this Court passed the orders for recording evidence by the Court Commissioner. The Court Commissioner submitted his reports regarding recording evidence from Exhs.110 to 115. 1.8 This Court (Coram : Hon'ble Mr. Justice R.M. Chhaya, As His Lordship was then) by order dated 26.03.2018 decided the Exh.5 application for temporary injunction filed by the plaintiffs by directing the defendants to maintain separate account for sale of any machine manufactured and/or sold by any of the defendants till the final disposal of the suit and the defendants were further restrained from using any device for bubble removal in their machines till Page 7 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined final disposal of the suit. It was further observed that in view of the conclusion arrived at, the other contentions as regard the Court Commissioner's report, the report kept in a sealed cover was not dealt with at that stage so as to consider the same at the stage of full-fledged trial.
1.9 The plaintiffs challenged the order passed below Exh.5 by preferring Appeal From Order No. 109/2018 before the Division Bench, wherein Division Bench vide order dated 2.11.2018 dismissed the said Appeal From Order. The defendants also preferred Cross Objection No. 108/2018 which was also dismissed. 1.10 The suit was thereafter proceeded from time to time. Both the sides preferred various applications for Page 8 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined recording of evidence of witnesses by the Court Commissioner through District Court, Vadodara as well as the applications raising objections during the course of recording of evidence which were decided by this court from time to time. After submission of the oral and documentary evidence, learned advocates for both sides made their submissions.
II-Plaint 2.1 As per the averments made in the plaint, Plaintiff no.1 is a wholly owned subsidiary of plaintiff no.2 company having its registered office at Dalton Industrial Park, Dalton, Israel. Plaintiff no.2 company was incorporated in Israel in 1988. Plaintiff No. 1 was established in the year 2004 which was purchased by plaintiff no.2 in the year 2008. Plaintiff no.1 was established in the year 2004 Page 9 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which was purchased by the plaintiff no.2 in the year 2008.
2.2 It is the claim of the plaintiffs that an invention was made about the determination of the location of inclusions in gemstones and the machine was designed for which Patent No.271425 is granted by the Controller General of Patent, Design and Trademarks, Government of India on 22.02.2016 for an invention entitled "Method for the Evolution of a Gemstone" as per the application made by the plaintiffs on 22.02.2008 for 20 years in accordance with the provisions of the Patent Act, 1970. It is claimed by the plaintiffs that it is an invention pertaining to the determination of the location of inclusions in gemstones which are ornamental objects rather than put to an industrial use and are valued by their Page 10 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined higher appearance.
2.3 It is averred by the plaintiffs that in gemology, the quality of a gem such as a diamond, is typically determined by the 4 C's (i) Clarity (internal perfection of the stone, which is crucial because the market value of a polished diamond increases if there are less inclusions in the polished stone); (ii) Colour (Colourless being the more expensive); (iii) Cut (consistency of shape, proportions, symmetry and polish); and (iv) Carat (Weight).
2.4 It is the further contended that almost all rough stones contain various types of imperfections known as "inclusions" or "flaws" in the form of dark spots, streaks and other blemishes. The rough stones are mined from the earth Page 11 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (or sometimes created synthetically) from which polished diamonds are manufactured firstly, by identification of the inclusions in such rough diamonds and it is the goal of every diamond jewellery manufacturer to obtain the maximum value from each rough stone by cutting and polishing each stone so that it contains the optimum mix of attributes that is desirable in the market.
2.5 As per the plaintiffs in order to obtain optimum clarity in a polished diamond, it is necessary to identify location, shape and size of flaws or inclusions inside a rough stone so as to reduce their influence on the final value of the polished stones. The entire exercise is done by cutting the stone adjacent and polishing out the most value reducing flaws to prevent them from being Page 12 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined included in the final polished product and in carrying out such process, the problem which arises is that the light is refracted when it passes through a diamond and the images of their internal features are distorted, thereby causing it to be quite difficult to know exactly where such inclusions are located on a three- dimensional level.
2.6 The plaintiffs further say that the extent to which diamonds distort images, depends on the difference between their refractive index, which is very high and that of its exterior, for example, surrounding air which is normally much lower, due to which internal reflections and deflections take place at the border between the external surface of the stone and the surrounding air, leading to erroneous determination of the location of Page 13 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the flaws. In order to overcome and eradicate the manual inconsistencies and labour involved in trying to successfully see, identify and locate inclusions in rough diamonds, plaintiff no.1 invented the automated technology by creating an apparatus and methodology for the same, contained in the Suit Patent and in the resulting machines that counteract the effects of such refraction so as to gives an accurate three-dimensional picture of the external and internal features of the rough stone.
2.7 According to the plaintiffs, plaintiff no.1 has invented Galaxy family of machines including the Suit Patent which automatically determines the exact locations as to where to cut the rough stone by the diamond planner so as to optimise the mix of attributes that are Page 14 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined desirable in the finished stones resulting into maximum yield with the greatest value which can be obtained from any given rough stone. Similarly, to identify the flaws in a polished stone in order to grade its clarity and consequently, to determine its value is also important.
2.8 It was contended by the plaintiffs that prior to invention of plaintiff no.1, rough stone was visually examined by the experts who relied on experience, skill and industry practices in order to provide a best estimate of what the inclusions were and where they were located. However, such process often wasted precious materials and reduced the weight and potential value of the stones because such identification required opening "windows" by polishing the external surface of the rough stones at a number of locations in Page 15 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined order to be able to view flaws or inclusions therein. It was also contended that in addition, human subjective judgment upon which such determinations were made, varied between different individuals and circumstances and it also took a long time to assess each stone, which ultimately resulted into less value of such stone.
2.9 According to the plaintiffs, when a package of gemstones is to be evaluated, it would take a long time to assess each stone and so the package value is often deduced through the examination of representative stones only instead of assessing each stone resulting into less value of the package.
2.10 It is the claim of the plaintiffs that prior to technology invented by Page 16 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiff no.1, no automated commercial solutions were suggested for any specific mechanism for the detection of inclusions nor there was a manner in which the detection could be practically and commercially performed with high accuracy.
2.11 Therefore, according to the plaintiffs, in order to resolve such problem of inclusions in rough stone, plaintiff no.1 set out to solve such problem, by among other things, utilizing an immersion medium having the same or extremely close refractive index as a diamond, and invented and developed the technology and the machines for which plaintiff no.1 was granted and is the registered owner of the Patent bearing No.IN271425 in India.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 2.12 It is the case of the plaintiffs that such invention literally changed the entire diamond industry by enabling the diamond manufacturers to know exactly where inclusions are located in a rough diamond by automatic identification of their locations. Therefore, according to the plaintiffs Suit Patent is a highly valuable asset.
2.13 It is the case of the plaintiffs that sophisticated software called "Advisor" used in conjunction with the data output of Galaxy family of machines of plaintiff no.1 provides the manufacturer exactly where to cut and how to polish the stone so as to achieve increased yields from every rough stone. 2.14 It is further contended that said software integrates internal inclusion, Page 18 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined scanning information and geometrical 3D analyses produced by the Galaxy machines of the plaintiff no.1 and the same provides multiple planning solutions for determining the optimal cutting plan for obtaining the optimum market value from each stone. It is the case of the plaintiffs that inclusion-identification technology of plaintiff no.1 has been protected by grant of patents in various other countries such as USA, Australia, Canada and South Africa. It is claimed by the plaintiffs that the plaintiffs are worldwide leaders in the development and manufacturing of advanced evaluation, planning, cutting, shaping, polishing and grading systems for diamonds and other gemstones.
2.15 It is claimed by the plaintiffs that the products of the plaintiffs have Page 19 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined revolutionized the way the rough diamonds are cut so as to optimize the efficiency and profit margins at all stages of the trade so as to provide better effectiveness of value of the polished stones to the cost of cutting and polishing the rough stones by determining the difference or the value per cost ratio. It is also claimed by the plaintiffs that once a rough diamond is mapped and planned as per the technology of the plaintiffs, it becomes easier for diamond cutters to cut the rough diamond with more precision in a way that would minimize the margin of error and the consequent wastage.
2.16 In view of the claims made by the plaintiffs with regard to the technology and the apparatus invented by it, it is claimed that plaintiff no.1 has exclusive Page 20 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined right to prevent third parties who/which do not have its consent, from using, offering for sale, selling and/or importing for use or sale, product(s) manufactured using, or product(s) and/or process(es) which incorporate the technology and apparatus covered under the Suit Patent in India as well as other foreign jurisdictions where patents of plaintiff no.1 have been registered and recognized.
2.17 The plaintiffs have also discussed and have given analysis for "Method for the Evaluation of a Gemstone" as per the Suit Patent as under :
"Method for the evaluation of a gemstone This Suit Patent relates to an apparatus and a method for determining substantially reliable findings of the positions of inclusions within the structure of Page 21 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a gemstone which can be a rough (uncut), irregular or semi-cut or partially polished stone, or can be a finished stone.
Inclusions refer to 'flaws' or 'defects' within a gemstone, which affect the clarity (internal perfection) of the gemstone. As gemstones are identified more as ornamental objects, rather than objects for industrial use, they are valued by their appearance. Consequently, it is desirable to identify the location and size of flaws inside a rough stone in order to determine the preferred dividing planes that would yield the greatest value from a given stone. Likewise, it is also desirable to identify flaws in a polished stone in order to determine its value.
A stone, in general practice, is thus, visually examined by experts who try to assess the location and size of the flaws using their experience and skill. Moreover, this entire process takes a long time and can often be inconsistent given that skill and experience may vary between different individuals and circumstances. Several optical methods and devices have previously been proposed for the detection of flaws in stones. However, the refractive index of gems, especially diamonds, causes large refractions of incoming and Page 22 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined outgoing light as well as several internal reflections, thereby resulting in multiple deflected images of the 'inclusions' or 'flaws' within.
Several inventions were then devised to identify the presence of inclusions in transparent and partly polished stones and localize such inclusions through their imaging within the stone, but not with certainty, as the difference between the refractive index of the stone and the air would then cause refractions at the interface between the surface of the stone and the surrounding air, resulting in the generation of multiple images produced by a single inclusion. Subsequently, inventions directed to reduce the refractions by submerging the stone within an immersion medium having a refractive index higher than that of the air, came about. However, these inventions failed to suggest measures which allowed the obtaining of high accuracy of the determination of location of inclusions within an immersion medium and also failed to suggest an immersion medium which would have a refractive index equal or at least very close to the refractive index of the diamond. Plaintiff No. 1 has thus invented an apparatus and a method claimed Page 23 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and described in the Suit Patent, directed to solved the above problems, and thus make the inclusions-identification process more efficient and reliable, thus allowing to avoid wastage of gemstones and also to yield the highest value to cost ratio when planning how the gemstones are to be cut. A summary of features of these apparatus and method in the Suit Patent has been provided below.
The apparatus comprises:
(i) a container adapted for containing a material, in which a gemstone is to be disposed, the material constituting an immersion material;
(ii) an illuminator, positioned and adapted to illuminate the said gemstone when disposed within the said material in the said container from different orientations;
(iii) a detector which would detect the illumination from the illuminated gemstone and material and would produce signals responsive thereto;
(iv) a controller directed to receive the signals, which can then be used to determine the location of an inclusion based on the signals;Page 24 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and
(v) a system directed to reduce within the said material the presence of foreign substances including a device for withdrawal of gas bubbles from the said material.
The feature (v) above, i.e. the system configured to reduce the presence of foreign substances within the immersion material, including the device for withdrawing air bubbles from the immersion material, allows to essentially increase the accuracy of the determination of location of inclusions in the gemstone.
The Suit Patent provides
suggestions of the immersion
material having such refractive index that the difference between its refractive index and the refractive index of the gemstone being evaluated is in the range between 0 and 0.1 at a corresponding light wavelength of the illumination and a pre- determined temperature. To achieve the desired pre-determined temperature of the immersion material, the system can be configured for heating it within the container.
The container can be configured for being sealed and one example of the device for withdrawing air bubbles from the immersion Page 25 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined material would be a device adapted for applying vacuum to the interior of such sealed container before and/or during the heating of the material. In addition, the system can comprise a source of inert gas (such as helium) and can be configured for introducing the inert gas into the container before the material is heated while keeping the container sealed.
The method broadly involves:
(i) providing an immersion material, as described above, which for example can comprise any one or more of a chalcogenide element in group 16, selenium, elemental selenium, thallium iodide, thallium bromide, in which case the said material is required to be used with all applicable safety measures and safety norms as prescribed under any law or regulation for the time being in force,
(ii) taking measures for reducing the presence within the said material of any foreign substance including withdrawing air bubbles from the said material using the said device (referred to above);
(iii) illuminating the gemstone by the said illuminator (referred to above) and detecting the illumination of the gemstone within the said material by the Page 26 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined said detector (referred to above);
and
(iv) determining, by the said controller (referred to above), the positions of inclusions based on the said detection.
The immersion material in step (i) above can be produced from solid pellets, in which case the method can further comprise heating the solid pellets to become the immersion material in a liquid form, before disposing the gemstone in the said material. The measures of step (ii) above can comprise applying a vacuum and introducing an inert gas (such as helium) to a container in which the said material is provided, as already mentioned in connection with the inventive apparatus, simultaneously with heating the solid pellets. In addition, the measures can comprise cleaning the gemstone's external surface by a cleaning liquid, prior to disposing the gemstone in the said material, in order to remove from the gemstone's surface the foreign substance referred to in step (ii) above.
In addition, disposing the gemstone within the said material can be performed at a speed, which is slow enough to prevent the entrance of gas bubbles into the said material, Page 27 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Thus, the apparatus comprising of the components and the method comprising the steps listed hereinabove both can have a number of additional optional features as described and claimed in the Suit Patent, and they constitute the technology which is protected by the suit patent. Thus, any apparatus comprising of the same or substantially similar components and any method comprising the same or similar steps as those described and claimed in the Suit Patent, would fall within the ambit of this Patent.
The Suit Patent, therefore, aids in effectively making reliable findings in relation to the locations of inclusions within the structure of a gemstone and determining the exact positions thereof with respect to the outside surface of the gemstone, which can subsequently be used in at least one of the following:
evaluating a gemstone with respect to its potential for producing finished gems, evaluating a rough stone in terms of costs and value of potential outcome of its processing, evaluating a finished stone in terms of costs and value thereof and determining possible sawing planes and/or an optimal set of sawing planes in a rough gemstone along which the rough gemstone is to be cut during the Page 28 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined process of producing a finished stone therefrom.
The Suit Patent comprises in total 39 claims, of which Claims 1 to 17 relate to an apparatus for the determination of the positions of inclusions within a gemstone and Claims 18 to 39 relate to a method for evaluation of a gemstone in order to determine the positions of inclusions therein."
2.18 It is the case of the plaintiffs that the plaintiffs learnt from the reliable sources that the defendants herein unlawfully and in utter disregard and violation of provisions of the Patent Act, 1970 (here-in-after referred to as "the Patent Act") started manufacturing, selling and using certain machines which directly infringe the Suit Patent and therefore, the Suit is filed along with application for temporary injunction.
2.19 The plaintiffs have averred about the defendants and their infringing Page 29 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined activities from paragraph no.25 onwards in the plaint wherein it is alleged that all the defendants are jointly engaged in the business of providing services for inclusion scanning of gemstones to third parties by using the Suit Patent even though they are fully aware that the Suit Patent is held by plaintiff no.1 in respect of its invention pertaining to the determination of inclusions in a gemstone.
2.20 It is further contended that despite having full knowledge of the Suit Patent of the plaintiffs, the defendants, in collusion and connivance with each another have manufactured or otherwise procured one or more duplicate version(s) of Galaxy machines or otherwise provide services, which utilize identical or similar technology in infringement of the Suit Patent. The plaintiffs therefore, Page 30 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined contended that they verily believe that the defendants are manufacturing or having manufactured such duplicate and infringing machines, or providing services in relation thereto, using the Suit Patent for commercial purpose. It is further say of the plaintiffs that the defendants have sold number of machines and devices and continued to sell such duplicate machines and are thus unjustly enriching itself at the cost of the plaintiffs.
2.21 It is also contended by the plaintiffs that the plaintiffs have come to know from the reliable sources that not only the defendants are manufacturing or otherwise procuring, importing and selling duplicated/infringing machines to third parties, but they are also storing such duplicated/infringing machines at the premises located at Surat as per the Page 31 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined address given in the plaint. The plaintiffs have thereafter, gathered evidence for such allegations made in the plaint during the pendency of this Suit by producing the same through their witnesses who have been cross examined extensively by the defendants and heavily relied upon the same so as to prove the infringement of the suit patent by the defendants.
2.22 It is further averred in the plaint that in order to verify the said facts, plaintiff no.2 through its Indian subsidiary purchased ten rough diamond stones on May 05,2017 from the company situated at Surat and such ten rough diamonds were submitted to defendant no.1 by a private investigator engaged by the plaintiffs so as to scan such diamonds and evaluate in order to identify and locate Page 32 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the inclusions contained therein. Prior to giving such ten rough diamonds to defendant no.1, plaintiffs through the private investigator tested such ten diamonds in batches for the presence of 'Selenium' by an independent laboratory in New Delhi and the results indicated that there was no presence of 'Selenium' before such diamonds were given to defendant no.1 for scanning.
2.23 According to the plaintiffs, 'Selenium' is an immersion material and active component used in the process of detecting inclusions in rough stones and is also an integral part of the Suit Patent.
2.24 It is the case of the plaintiffs that ten diamonds which were given for testing to defendant no.1 were returned Page 33 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with a report in a flash drive as well as on the website of defendant no.1 and upon receiving the said ten rough diamonds from defendant no.1, the private investigator at the behest of the plaintiffs again got tested such diamonds for 'Selenium' residue at the same laboratory in New Delhi and report indicated that there was presence of 'Selenium' residue in each of the ten rough stones and therefore, it was contended by the plaintiffs that the laboratory report received after subsequent testing done by the defendant no.1, proves beyond any doubt that defendant no.1 used the machine for scanning and mapping the rough diamonds by employing the Suit Patent.
2.25 It was further contended by the plaintiffs that the reports given by the laboratory in New Delhi clearly indicate Page 34 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined presence of 'Selenium' residue on the stones which are also produced on record of the suit in a sealed cover which clearly discerns that the defendants either directly or indirectly are infringing the Suit Patent and therefore, the defendants are liable to be restrained from continuing with such unlawful activities.
2.26 It is the case of the plaintiffs that presence of 'Selenium' was tested because prior to execution of the Commission at the premises of defendant no.1, the plaintiffs were not aware as to what all similarities were there in the machines of the defendants and the galaxy machine of the plaintiffs. Therefore, the fact that the defendants were using 'Selenium' as an immersion material in their own apparatus coupled with the fact Page 35 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the apparatus used by defendant no.1 in the machines found at its premises are identical to that used by plaintiff no.1 in its own machine would prove that the defendants are infringing the Suit Patent.
2.27 It is also the case of the plaintiffs that data output generated by defendant no.1 looked deceptively similar to that of the report generated by galaxy machines of the plaintiffs which were provided in exact formatted software of plaintiff no.2. Reliance is placed by witness no.1 of the plaintiffs on the screenshot of the web pages with details of ten rough diamonds scanned by defendant no.1.
2.28 It is therefore, contended by the plaintiffs that the infringing machines sold and offered for sale and/or used by Page 36 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the defendants as well as the services provided by them are a direct infringement of monopoly right over the Suit Patent of plaintiff no.1. It is the claim of the plaintiffs that the Suit Patent is unique and therefore, the defendants cannot provide the services which are provided to the third parties and/or achieve the same end result without using the Suit Patent.
It is further contended by the plaintiffs that even if defendants assume that the defendants could have made some attempts to modify the design or process to scan the rough gemstone, the same would still infringe the Suit Patent as the essential features of the Suit Patent would have to be used to produce the end result i.e. determination of position of inclusions in a rough gemstone required for planning a polished stone to be made from rough gemstone so as to achieve maximum profit Page 37 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined from each stone. The plaintiffs have also alleged that the defendants have used the essence of the Suit Patent as defined in the claims and described in the specification of Suit Patent of Plaintiff no.1 into duplicate and manufacture or otherwise procure machines which purportedly perform the same functions as the galaxy machines of the plaintiffs. 2.29 It was also contended by the plaintiffs that the defendants with mala fide intention to usurp the business of the plaintiffs, have sought to ride on the years of research and development devoted by plaintiff no.1 in investigating, developing, manufacturing and constantly upgrading its Suit Patent and are unjustly enriching themselves at the cost and expenses of the plaintiffs and such infringing enterprise of the defendants Page 38 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined being run covertly and surreptitiously shows the mala fide intention of the defendants.
2.30 It is the alleged by the plaintiffs that the defendants without taking any permission or license from plaintiff no.1 have made or otherwise procured substantial and material reproduction of galaxy machines of the plaintiffs and thereby achieved illegal profit by such unlawful activity. The plaintiffs also claim that huge amount of capital have been invested in India which has helped to develop India into a global player in the diamond industry. It is the case of the plaintiffs that subsidiary of plaintiff no.2 in India employs hundreds of Indians which has immensely contributed to increase the quality of service which the Indian diamond industry provides to Page 39 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined its customers and hence, the infringement of the rights of Suit Patent would adversely affect the Indian diamond industry itself.
2.31 This Court by order dated 14.06.2017 in Special Civil Application No. 11240/2017 appointed the Court Commissioner and report of Court Commissioner dated 28.06.2017 is produced by witness of plaintiffs at Exh. PW-1/28 as annexure to the affidavit at Exh.76 . 2.32 During the pendency of the suit proceedings, the plaintiffs have made attempts to gather evidence to prove infringement of the Suit Patent with the help of a private investigator by hiring ex-employees of defendant no.1 for taking evidence in the form of video by using spectacles having camera and shirt having Page 40 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined button camera and have produced such evidence on record through the plaintiff witnesses nos. 2,3 and 4 so as to prove that the defendants are using the Vacuum Pump for removing gas bubble from immersion material used in their machines for scanning the rough diamonds during the month of September 2018 as the defendants in their written statement alleged that except the use of Vacuum Pump by the plaintiffs, Suit Patent is identical to prior art available in the field of scanning of rough diamonds. 2.33 In view of above facts, it is claimed by the plaintiffs that the plaintiffs have acquired common law rights as well as statutory rights by virtue of registration of its Suit Patent and therefore, any imitation of the products and method claimed therein by any other Page 41 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined person would be deliberate, intentional, willful, malafide and with prior knowledge and as such, the same would be actionable per se under the provisions of the Patent Act and that too, without any consent of the plaintiffs.
2.34 The plaintiffs have therefore, claimed for damages to the tune of Rs. 50 Crores in the suit and also contended that the defendants are liable to render the accounts of gross sales of all the infringing products which they have sold as well as the figures of the gross revenue generated from providing services as detailed above in relation to the infringing products to third parties, since the date of publication of the Suit Patent as provided under section 11A of the Patent Act.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 2.35 The plaintiffs have also contended that as provided under section 48 of the Patent Act, till the term of validity of the Suit Patent, the plaintiffs are entitled to prevent any third party which does not have their permission form the act of making, using, offering for sale, or selling the infringing product/ machine/device in India. The plaintiffs have also contended that huge amount of effort, time, energy and intellect in developing and inventing the Suit Patent has been expended and the defendants cannot by any stretch of imagination be allowed to capitalise upon the same to the prejudice of the plaintiffs and thus, it is contended that the acts of the defendants wherein Suit Patent is used are liable to be restrained by an order of permanent injunction of this Court. Page 43 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 2.36 The plaintiffs have also examined their expert witnesses being plaintiffs' witness nos.9 at Exh.77.
2.37 The plaintiffs have also filed affidavits at Exh.214 to 229 in compliance with the provisions of section 65B of the Evidence Act, 1872 which were objected by the defendants by filing reply. III - Written Statement 3.1 The defendant nos. 1,2,3,6 to 11 filed their written statement at Exh.51 contending inter-alia that the defendants are primarily engaged in selling of inclusion scanning machines and rendering inclusion scanning services to its customers by making huge investments for purchasing machines and equipment so as to render its goods and Page 44 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined services to its customers. Certified copies of invoices for purchasing assembly parts by defendant no.3 and copies of few invoices raised for rendering its services to customers are annexed at Annexures-D and E respectively with the written statement.
3.2 The preliminary objections were raised against the maintainability of the suit on the ground that the same is filed on falsehood and misrepresentation to harass the defendants commercially in order to eliminate the competition and create monopolistic scenario with malafide and oblique motives to defame and cause considerable damage to the reputation and business of the defendants Page 45 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined resulting into abuse of process of law. 3.3 It was contended that the plaintiffs have concealed the vital facts and has approached the Court with unclean hands. It was contended that the plaintiffs have willfully concealed that the essence of their patent lies in "a device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium" and in the absence of which no claim of infringement can lie against any party. It was contended that technology or system of the defendants does not comprise of any device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium and hence the suit would not fall within the scope of the Page 46 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined suit patent in order to constitute infringement of the suit patent. 3.4 Reliance was placed on the Court Commissioner's report wherein it is stated that on inspection, the experts did not find any vacuum pump in the machine, though there was an outlet valve which provided a possibility of the same being installed and all other components of the protected apparatus were found in the machines of the defendant No.1. It was therefore, contended that the plaintiffs cannot claim beyond the scope of the suit patent.
3.5 It was also contended that reliance placed on the report of the Page 47 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Private investigator wherein some selenium residue was found on the diamonds allegedly scanned by the defendants, is of no relevance as selenium is not fundamental of the suit patent and plaintiff no. 1 has filed a separate application for claiming use of the selenium as novelty which is also opposed by the defendant no. 3. It was therefore, averred in the written statement that the suit filed by the plaintiffs is liable to be dismissed. It was also pointed out that defendant no.3 has filed a revocation petition before the Intellectual Property Appellate Board (IPAB) prior to filing of the present suit which is pending. 3.6 Reliance was placed on the Page 48 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined observations of the Court Commissioner appointed by this Court during the course of inspection carried out to submit that no infringement has taken place of the Suit Patent No.271425 by the defendants.
3.7 The contentions of the plaintiffs were denied by explaining the technology as developed by the defendant no.3 with following features:
"Qualitative and quantitative inspection of inclusions in gemstone with high accuracy.
• The apparatus includes a cuvette that contains selenium which is melted and kept at an atmospheric pressure to immerse gemstone therein.
• A light source is placed to illuminate the gemstone immersed in molten selenium Page 49 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined • A light sensor is positioned to receive the light transmitted from the gemstone • The sensor measures the intensity of the transmitted light and transmits this data to the computer.
Based on the signal data from sensor, computer determines the inclusion in the gemstone and provides detail of size and exact location of the inclusion in the scanned gemstone."
3.8 Referring to the above features, it was contended that there is no infringement of the suit patent. The defendants thereafter submitted an analysis of the suit patent to demonstrate that the product of the defendant does not fall within the scope of the suit patent as no device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium is used by the Page 50 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants which is an essential element of the suit patent without which infringement of the suit patent cannot be claimed.
IV- Oral and Documentary Evidence led by the plaintiffs and defendants:
Sr. Plaintiffs' Name of the Documents produced No. witness plaintiffs by the plaintiffs 1 PW-1 Roni Ben-Airy i)(Exh.76) Evidence by way of affidavit
ii)Exh.PW-1/1 to PW-
1/11 - copies of invoices
iii) Exh. PW-1/12 -
copy of image of
rough diamond
scanned using galaxy
system.
iv) Exh.PW-1/13 and
PW-1/14 - copy of
image of 3D model of
diamond and finished
diamond
v) Exh. PW1/15 -
copy of suit patent
vi) Exh. PW1/16 -
copy of certificate
of registration of
the suit patent
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vi) Exh. PW-1/17 to
PW-1/25- copies of
report, screen
shots, data output
of the stone scanned
by defendant no.1
machines
vii) Exh. PW-1/26 -
copy of original
data output of
defendant no.1 as
reflected in
plaintiff no.2's
software.
viii) Exh. PW-1/27-
copy of analysis
report pertaining to
10 diamonds scanned
by defendant no.1
ix) Exh. PW-1/28-
copy of court
commissioner report
dated 3.7.2017
x) Exh. PW-1/29, PW-
1/30 - copy of CD
containing video
recording and
photographs taken
during the
commission work
xi) Exh.PW-1/31 -
copy of CD
containing video of
defendant no.1
xii) Exh. PW-1/32
copy of screenshot
of website of
defendant taken by
Court commissioner
xiii) Exh. PW-1/33
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to PW-1/35 - copies
of screenshots of
data output of one
of the scanned
stones taken by the
Court Commissioner.
xiv) Exh. PW-1/36 -
copy of data output
reports generate for
six diamonds.
xv) Exh. PW-1/37-
copy of trade
reports available on
the website of Hong
Kong based supplier.
xvi) Exh. PW-1/38
copy of image of
vacuum pump used in
the plaintiff galaxy
machine
2 PW-2 Neelesh Dangal i) (Exh. 80)-
Singh Evidence by way of
affidavit with cross
examination
ii) Exh. PW-2/1 DVD
containing the video
3 PW-3 Desraj Ram i) (Exh.81)-Evidence
Narayan by way of affidavit
with cross
examination.
4 PW-4 Dinesh Shukla i) (Exh.82) Evidence
by way of affidavit
with cross
examination
ii) Exh.PW-4/1 DVD
containing video.
5 PW-5 Prof. Oded i) (Exh.78) Evidence
Navon by way of affidavit
with Cross
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examination.
6 PW-6 Shashank Bhatia i)(Exh.79) Evidence
by way of affidavit
with cross
examination.
ii) PW-6/1 True copy
of the priority
document issued
under the Patent
Cooperation Treaty
by the Israel office
of the International
Bureau of World
Intellectual
Property
Organization.
7 PW-7 Bhushan Dani i) (Exh.83) Evidence
by way of affidavit
with cross
examination.
ii) PW-7/1 True copy
of report dated
17.05.2017 obtained
from the Jawahar Lal
Nehru University
showing no presence
of selenium on each
rough diamond.
iii) PW-7/2 True
copy of the report
dated 27.05.2017
obtained from
Jawaharlal Nehru
University showing
the presence of
selenium residue on
each diamond.
8 PW-8 Beenita Modi i) (Exh.84)Evidence
by way of affidavit
with cross
examination.
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ii) PW-8/1 True copy
of the affidavit on
behalf of M/s. N.M.
Diam LLP dated
16.07.2018.
9 PW-9 Ran Ziskind i) (Exh.77)Evidence
by way of affidavit
with cross
examination.
4.1 The defendants have produced
documents containing partnership
agreement, Certificate of
Incorporation, copies of invoices for
purchasing of inclusion scanning
machines, invoices of the services
rendered by defendant no.3 to its
customers, copy of acknowledgment of
revocation filed by defendant no.3,
copy of prior arts cited in the
revocation of the suit patent, copy of revocation petition filed by defendant no.3, copy of infringement opinion by the expert, copy of First Examination Page 55 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Report issued on 16.04.2014, copy of response to First Examination Report, hearing notice by controller, decision of Controller and prior Patent Application with Application No.876.CHENP/2008 filed by the defendants in India on 21.02.2008 pending before the India Patent Office. 4.2 Defendant nos.4 and 5 have filed separate written statement and counter claim which is ordered to be separated as stated here in above along with the documents containing Certificates of Incorporation of defendant nos.4 and 5 and documents which are produced by defendant no.3 along with written statement. Page 56 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Sr. Defendants' Name of the Documents produced by No. witness defendants the defendants 1 DW-1 Dhaval i) (Exh.85)Evidence by Dayabhai way of Affidavit with Diyora cross examination.
ii) Copy of US Patent 4,152,069.
iii) Copy of US Patent 4,049,350.
iv) User Guide and
Declarations submitted
by Sarine Technologies
Ltd. To European
Patent Office on
06.06.2007 while
opposing an EP patent
No.EP1211503.
v) Report on prior art
search.
vi) Order dated
2.11.2018 passed in
Appeal from Order
No.109/2018.
vii) Police reports as
obtained under the RTI
Act, 2005.
2 DW-2 Ashishbhai i) (Exh.86) Evidence
Dahyabhai by way of affidavit
Diyora with cross
examination.
ii) Photograph
captured at Changchun
New Industries
Optoelectronics Tech
Co., Ltd. (CNI)
Changchun, China in
2006.
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iii) Photograph of a
diamond imaging
machine.
iv) Images captured
from video of GL-5001
machine available on
YouTube.
v) Copy of 2D CT
image, 3D image, Quad
view and caliper at
determination surface
of inclusion applied
at xz slice received
from General Electric
(GE) (Nanotom R),
Germany.
vi) Copy of images of
the diamond received
from Photonic Science
and Engineering
Limited, USA.
vii) Copy of snippet
from product
offering/broucher
illustrating details
of the Series-GH
product received from
Cargille Laboratories
Inc. USA.
viii) Copy of images
of the rough diamond
captured using the
immersion medium
supplied by the
Chinese company.
ix) Copy of the
research article
authored by Saker et
al purchased in 2010.
x) Copy of image
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showing order page
with details on
pricing of Selenium
captured on 4.05.2010.
xi) Images of the
general set-up used
for testing properties
of various immersion
medium.
xii)photograph of
general set-up used
for diamond scanning
xiii) Photograph of a
prototype of diamond
scanning machine
developed in 2011.
xiv) Copy of
mechanical drawings of
cuvette supplied to
Chinese manufacturers.
xv) Images of the
rough diamond captured
from the video using
the prototype of
diamond scanning
machine developed in
2011.
xvi) Photographs of
diamond scanning
machine - Prototype I
developed in late
2011.
xvii) Image of diamond
scanning machine
Prototype II developed
in late 2011.
xviii) Image of
diamond scanning
machine-Prototype II.
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xix) Copy of images of
the rough diamond
captured using the
diamond scanning
machine- Prototype
III.
xx) images of diamond
scanning - Prototype
IV developed sometime
in 2013.
3 DW-3 Ghanshyambha i) (Exh.87) Evidence
i Maganbhai by way of affidavit Bhanderi with cross examination.
ii) Copy of
Certificate of
Incorporation for
defendant no.4.
iii) Copy of
Certificate of
Incorporation for
defendant no.5.
iv) Copy of
acknowledgment of
Revocation as filed by
defendant no.3.
v) Copy of prior arts
cited in the
revocation of suit
patent.
vi) Copy of
infringement opinion
by the expert.
vii) Copy of First
Examination Report
issued on 16.04.2014
rejecting all claims
of patent application
1606/MUMNP/2009.
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viii) Copy of response
to First Examination
Report dated
23.09.2014 on patent
application
no.1606/MUMNP/2009.
ix) Hearing notice by
Controller.
x) Controller's
decision Order.
xi) prior patent
application with Appl
No.876/CHENP/2008
filed by the defendant
in India on 21.02.2008
pending before the
Indian Patent Office.
xii) coy of complete
specification of
IN271425 patent.
4 DW-4 Pravinbhai i) (Exh.88) Evidence
Dharamshibha by way of affidavit
i Lakhani with cross
examination.
5 DW-5 Nilesh i) (Exh.89) Evidence
Parshottambh by way of affidavit
ai Kothiya with cross
examination.
6 DW-6 Shambhubhai i) (Exh.90) Evidence
Parshottambh by way of affidavit
ai Moradhiya with cross
examination.
7 DW-7 Tapan i) (Exh.91) Evidence
Mahendrakuma by way of affidavit
r Shah with cross
examination.
ii) Suit patent
IN271425.
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iii)Specification of
1606/MUMNP/2009.
iv) Prosecution
history of
1606/MUMNP/2009.
v) US granted patent
US4049350.
vi) PCT Application
published as
WO2005116617.
vii) Journal article
Some new immersion
melts of high
refraction, Am.
Mineralogist
Vol.14/10, pp 358-361,
1929, authored by
Barth Tom.
viii) Journal article
Growth of Large Single
Crystals of Hexagonal
Selenium from the Melt
at High Pressures,
journal of Applied
Physics, Volume 36,
Number 5, pp 1680-1683
authored by Harrison
et al.
ix) Journal article
Temperature dependence
under pressure of the
kinetics of
crystallization of
bulk amorphous
selenium philosophical
magazine Part B, 67:5,
705-720, 1993 authored
by Mohan et al.
x) US Patent
Application
US20050052642.
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xi) US Granted Patent
US7014966.
xii) US Patent
Application
US20060174655.
xiii) Specification of
pending patent
application
876/CHENP/2008.
xiv) US granted patent
US4152069.
xv) Journal article
The Optical Properties
of Liquid Selenium,
Proc. Phys. Soc.1952,
pp.785-787 authored by
E.W. Saker.
xvi)Copy of User Guide
and Declarations
submitted by Sarine
Technologies Ltd. To
European Patent Office
on 6.6.2007 while
opposing an EP Patent
no.EP1211503.
xvii) YouTube video
illustrating removal
of gas bubbles by
employing an
ultrasonic
transmitter.
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8 DW-8 Shashi i) (Exh.92) Evidence
Bhushan by way of affidavit.
Mehta
ii) Suit patent
IN271425.
iii)specification of
1606/MUMNP/2009.
iv) prosecution
history of
1606/MUMNP/2009.
v) US granted patent
US4049350.
vi) PCT Application
published as
WO2005116617.
vii) Journal article
Some new immersion
melts of high
refraction, Am.
Mineralogist
Vol.14/10, pp 358-361,
1929, authored by
Barth Tom.
viii) Journal article
Growth of Large Single
Crystals of Hexagonal
Selenium from the Melt
at High Pressures,
journal of Applied
Physics, Volume 36,
Number 5, pp 1680-1683
authored by Harrison
et al.
ix) Journal article
Temperature dependence
under pressure of the
kinetics of
crystallization of
bulk amorphous
selenium philosophical
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magazine Part B, 67:5,
705-720, 1993 authored
by Mohan et al.
x) Specification of
pending patent
application
876/CHENP/2008.
xi) US granted Patent
US 4152069.
xii) journal article
The Optical Properties
of Liquid Selenium,
Proc. Phys. Soc.1952,
pp.785-787 authored by
E.W. Saker.
xiii)copy of User
Guide and Declarations
submitted by Sarine
Technologies Ltd. To
European Patent Office
on 6.6.2007 while
opposing an EP Patent
no.EP1211503.
9 DW-9 Dharmeshbhai i) (Exh.93) Evidence
Dhanjibhai by way of affidavit
Vaghasiya with cross
examination.
ii) Copy of statement
given to police.
10 DW-10 Jayraj i) (Exh.94) Evidence
Jodhani by way of affidavit
with cross
examination.
11 DW-11 Alpeshbhai i) (Exh.95) Evidence
Rameshbhai by way of affidavit.
Donga
12 DW-14 Rakeshbhai i) (Exh.96) Evidence
Shantilal by way of affidavit.
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Pansuriya
13 DW-15 Padmavati M i) (Exh.97) Evidence
by way of affidavit.
ii) Techno-Legal
Opinion on Patent
Validity and
Infringement.
iii) Updated Resume.
4.3 By order dated 12.07.2022 this
Court ordered that all the documents
produced by the plaintiffs and
defendants are exhibited and contents
thereof to be considered at the time of final hearing.
4.4 Pursuant to separate order dated 14.06.2017 passed by this Court and order dated 21.06.2017 passed by the Additional District Judge, Surat, the Court Commissioner Mr. Agam J. Doshi visited the office of the defendants situated at A 302, Diamond Page 66 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined World, Mini Bazar, Varracha Road, Surat on Wednesday 28.06.2017. He submitted his final report on 30.06.2017 along with handwritten inspection report/on site report dated 28.06.2017 signed by him and two other spot witnesses and photographs taken by him outside the closed doors of A-302 of the premises with following observations:
"1) There is contradiction in the statement of Liftman Kantibhai and Mr. Sandip Patel (Partner of M/s Diyora & Bhandari Corporation) with respect to date of shifting of office operations from A -
302 to Hirabag, Surat,
(ii) Refusal of Mr. Sandip Patel (Partner of M/s Diyora & Bhandari Corporation) to open the lock of A-302; and
(iii) It is strange that there is lock on grill but no lock on the main wooden door of A-302.
(iv) I trust that this will Page 67 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined suffice."
4.5 The Court Commissioner Vijayshankar Lakehra has submitted report dated 3.07.2017 pursuant to the order and direction issued in Special Civil Application No.11242 of 2017 along with English translation and photographs. All these reports were submitted in a sealed cover which were opened during the course of hearing. 4.6 Another report of the commission executed at Diyora & Bhanderi Corporation at Surat on 28.06.2017 is also placed on record. Said report is dated 3.07.2017. The said Commission took place pursuant to order dated 4.06.2017 passed in Special Civil Application No.11240 of 2017 Page 68 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined passed by this Court along with inventory of machines which comprises of diamond scanning machine, cleaning machine etc. and DVD containing all photographs and videos taken during execution of the commission. Similar report is drawn by Court Commissioner Mr. Pranav Jain.
V- Applications filed by the plaintiffs and defendants :
i)Civil Application No.1/2018,
ii)Civil Application No.1/2019 and
iii) Civil Application No.2/2019 :
5.1 These three applications are filed to conduct an enquiry under the provisions of section 340 of the Code of Criminal Procedure, 1973 (For short "the Code, 1973") for determining the Page 69 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined falsity of the statements made on oath by the respective parties. Accordingly, the same were ordered to be heard by this Court vide order dated 16.11.2021 with the suit.
5.2 Civil Application no.1/2018 is filed by the plaintiffs to conduct an enquiry under the provisions of section 340 of the Code, 1973 for determining into the falsity of the statements made on oath by the defendants knowing them to be false, in this proceeding with further prayer to take action under section 193 of the Indian Penal Code, 1860 for committing offence and to strike off the written statements, counter claim, etc. filed by the defendants in the suit for making false Page 70 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined statements on oath.
5.3 It was contended on behalf of the plaintiffs that defendants have knowingly and intentionally made certain statements in the pleadings contending that the defendants do not use any apparatus/vacuum pump or mechanism for prevention of bubbles in their machines which according to the plaintiffs are false and fabricated in view of trade reports as available on the website of www.52wmb.com which clearly shows that defendant no.5 which is a sister concern of defendant no.1, purchased 200 vacuum pumps having same make and model as those used in the plaintiffs' Galaxy machines.
5.4 The defendants have filed reply Page 71 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavit denying these facts and contended that the machine vacuum pumps were purchased by defendant no.5 to be used by the defendants. It was submitted that the defendants cannot be said to have committed any perjury by stating on oath that they are not infringing the patent of the plaintiffs and that no vacuum pump is present on their machine because mere procurement of a vacuum pump is one thing which can be for number of reasons in compliance with its scope of work as defined in its memorandum and using it on a particular machine in a way which infringes a patent is another. The defendants relied upon the Memorandum of Association of defendant no.5 company which has been engaged in Page 72 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined trading inter-alia of machines and tools related to diamond industry along with providing maintenance and repair services for diamond scanning machines at large including without limitation Galaxy machines of the plaintiffs to the third party who own such machines.
5.5 It was also contended that vacuum pump is a generic device which has a generic demand in the market vis-
a-vis use of vacuum pump by the plaintiffs in its machine is one exemplary application and defendant no.5 procured such vacuum pumps for repair and maintenance along with other spare parts for trading.
5.6 It was therefore, submitted Page 73 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that merely because defendant no.5 procured such vacuum pumps, it cannot be made basis for any inquiry. 5.7 The plaintiffs again by further affidavit denied the averments made by the defendants which were also again denied by the defendants by filing further affidavits.
5.8 Civil Application No.1 of 2019 is filed by the defendants for initiating inquiry under section 340 of the Code, 1973 against the plaintiffs for determining into falsity of the statements made on oath by the plaintiffs and PW-7 knowing them to be false and for determining the falsity of the fabricated reports filed by PW-7 Page 74 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined along with the affidavit of evidence. It was contended that PW-7 fabricated various evidences produced along with his affidavit as Exhibit PW-7/1 and Exhibit PW-7/2 wherein false statements were made in paragraph no. 3, 4 and 5 as stated in the application as under:
"a. PW-7 stated in Para 3 of his affidavit that "I had got the said rough diamonds tested by the Laboratory at Jawaharlal Nehru University, New Delhi. A true copy of the report dated 17.05.2017 obtained from Jawaharlal Nehru University is tendered as evidence and marked as Exhibit PW-7/1."
b. PW-7 further states in Para 4 of his Affidavit that " on 18.05.2017, 1 had submitted the said rough diamonds with the Defendant No.1 for inclusion scanning-I shared the said Data Output report with Indus Law". c. PW-7 further states in Para 5 of his affidavit that " ...I had once again got the diamonds tested from Jawaharlal Nehru University, New Delhi. A true Page 75 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined copy of the report dated 27.05.2017 obtained from Jawaharlal Nehru University,- is tendered in evidence and marked as Exhibit PW-7/2." 5.9 It was therefore, submitted that in the affidavit dated 26.3.2019 as well as during recording of evidence of PW-7, it was falsely stated that PW- 7 is employed as investigator with a private independent investigation firm known as Scrseen facts Services Pvt. Ltd.(SFS) whereas PW-7 in his cross examination in reference to question nos.1 to 8 has accepted that he is not engaged on permanent basis and gets paid on work basis and he does not work exclusively for the said firm and also works for other companies. 5.10 It was further contended in Page 76 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the application that PW-7 has not produced or substantiated in any manner with regard to the procurement of diamonds that were allegedly scanned by defendant no.1 were the same diamonds which were given by law firm Indus Law and the diamonds that were allegedly scanned by defendant no.1 were the same diamonds that were allegedly tested for presence of selenium at Jawaharlal Nehru University, New Delhi. It was therefore, submitted that investigating report filed by PW-7 as relied in the plaint based on which infringement has been claimed are required to be discarded.
5.11 The defendants have also filed Civil Application No. 2 of 2019 with a prayer to conduct an inquiry Page 77 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined under section 340 of the Code, 1973 for determining into the falsity of the statements made on oath by the plaintiffs and Mr. Aarnav Sharma, particularly his attempt to bribe the defendants/competitors, employees for illegal action and into false charge made by Mr. Aarnav Sharma after a period of four months as alleged by falsely stating that he has signed the blank papers under duress at the police station and that his statement has been recorded without his knowledge which amounts to offense under section 211 of the Indian Penal Code, 1860. It was further prayed for determining into the falsity of the statements made on oath by the Plaintiffs' witness Mr. Dinesh Shukla (PW-4) knowing them to be false Page 78 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and for determining into the fabricated evidence in form of videos and screenshots filed by PW-2 and PW-4 along with their affidavit of evidence. It was further contended that PW-2 and PW-4 have made false allegations in their deposition of allegation of bribery against the employees and similar complaint is filed by the defendants sometime around May 2019 with Kapodara police station, Surat by one of the defendants, however, FIR was not registered. Reliance was placed on the application filed with Kapodara police station by the defendants. 5.12 The plaintiffs filed replies to applications filed by the defendants contending inter-alia that Page 79 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined during the commission work executed by the Court Commissioner Mr. Pranav Jain who was appointed as per the order passed by this Court, it was noticed that duplicate internal scanning machines manufactured and used by the defendants employed the apparatus and method protected under the suit patent and defendant no.10 admitted that internal scanning machines contained all the components as per the plaintiffs' galaxy machines which are patented. Therefore, the allegations made by the defendants that they do not use a device to reduce the presence of foreign substances in immersion medium including the non use of vacuum pump to remove such foreign substances is not tenable. It was submitted that on Page 80 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 26.3.2018 the plaintiffs came across customs report showing import of 200 vacuum pumps by defendant no.5 and in September 2018, Israeli consultant provided proof to the plaintiff which was obtained by the private investigator consisting of videos obtained through an employee of the defendants who has recorded the vacuum pumps being used in the machines at premises of the defendants. It was therefore, submitted that the investigation firm which was engaged by the Israeli consultant was Riverstone Secure Services LLP whose main working partner is Mr. Aarnav Sharma and entire exercise of procuring evidence was done by him and his team. Therefore, the contents of the application and reply Page 81 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to the extent they deal with modus operandi adopted by Mr. Sharma or any of his team members for procuring evidence do not relate to the plaintiffs. It was therefore, submitted that the allegations made by the defendants are without any basis as the defendants have failed to establish or corroborate either by way of documents or material or during the cross examination of the plaintiffs witness that the plaintiffs installed vacuum pumps on machines at the premises of the defendants.
5.13 It was further submitted that this Court has rejected the application Exh.166 filed by the defendants seeking direction for summoning the police officer Mr. B.M. Page 82 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Karamta, Police Inspector, Kapodara police station, Surat and therefore, no further inquiry is required to be made under section 340 of the Code 1973 and it is further denied that none of the witnesses i.e. PW-2, PW-3 or PW-4 have placed on record any forged, fabricated or tampered video as alleged by the defendants.
5.14 Considering the above submissions made by the plaintiffs and the defendants making allegations on each other for initiating inquiry under section 340 of the Code 1973 it would be germane to refer to the provisions of section 340 as well as section 195(1)(b) of the Code,1973 which reads as under:
Page 83 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "340. Procedure in cases mentioned in section 195.
(1) When, upon an application made to it in this behalf or otherwise, any Court is of opinion that it is expedient in the interests of justice that an inquiry should be made into any offence referred to in clause (b) of sub- section (1) of section 195, which appears to have been committed in or in relation to a proceeding in that Court or, as the case may be, in respect of a document produced or given in evidence in a proceeding in that Court, such Court may, after such preliminary inquiry, if any, as it thinks necessary,-
(a) record a finding to that effect;
(b) make a complaint thereof in writing;
(c) send it to a Magistrate of the first class having jurisdiction;
(d) take sufficient security for the appearance of the accused before such Magistrate, or if the alleged offence is non- bailable and the Court thinks it necessary so to do, Page 84 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined send the accused in custody to such Magistrate; and
(e) bind over any person to appear and give evidence before such Magistrate..."
"Section 195(1)(b) of The Code Of Criminal Procedure, 1973
(b) (i) of any offence punishable under any of the following sections of the Indian Penal Code (45 of 1860 ), namely, sections 193 to 196 (both inclusive), 199, 200, 205 to 211 (both inclusive) and 228, when such offence is alleged to have been committed in, or in relation to, any proceeding in any Court, or
(ii) of any offence described in section 463, or punishable under section 471, section 475 or section 476, of the said Code, when such offence is alleged to have been committed in respect of a document produced or given in evidence in a proceeding in any Court, or
(iii) of any criminal conspiracy to commit, or attempt to commit, or the abetment of, any offence specified in sub- clause (i) or sub- clause (ii), except on the Page 85 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined complaint in writing of that Court, or of some other Court to which that Court is subordinate."
5.15 On bare perusal of the above provisions, it appears that merely by making allegations, the above provisions cannot be pressed into service. Evidence produced or the averments made in affidavits by the plaintiffs or the defendants cannot be said to be false or fabricated evidence in the civil proceedings as in absence of any evidence led by either side in support of such allegations,it is not possible to conclude as to either the plaintiffs or the defendants have given allegedly false or fabricated evidence which requires to be punished. Therefore, ingredients of section 340 Page 86 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the Code of Criminal Procedure are not attracted on plain reading of the applications filed by both sides. 5.16 On bare perusal of the applications filed by both the plaintiffs and the defendants to initiate inquiry under section 340 of the Code,1973, it appears that it is nothing but an attempt to hamper the recording of evidence and only to waste the time of the Court resulting into delayed justice. No ingredient of perjury is present in the allegations made by both sides which would affect the administration of justice. 5.17 By merely making allegations by each side, prima facie, it cannot be said that false or Page 87 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined fabricated documents are produced or any public order is harmed or the proceedings have been hampered by producing false evidence. Therefore, no inquiry is required to be made as none of the elements of perjury are present as it cannot be concluded that false statement is made by any person on oath as both the sides have cross examined the witnesses and whether such evidence produced on record by the witnesses is proved or not is a matter of appreciation by the Court. On perusal of the averments made in the application filed by the plaintiffs as well as the defendants, it cannot be said that a false statement was made and the person who has made such false statement believed the same that it is Page 88 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a false statement and not the truth with an intention for making a false statement. The averments made in the affidavits filed by the respective witnesses and the averments made in the replies filed by the parties are matter of proof and therefore, all the three applications are not entertained and are summarily rejected.
VI- ISSUES 6.1 By order dated 19.02.2019 passed below Exh.152, the following issues are framed:
"(1) Whether the plaintiff proves that the defendants are infringing the suit patent, as alleged in the plaint?
(2) Whether the suit patent is liable to be revoked on any of the grounds stated in the counterclaim filed by the defendant Nos.4 and 5?Page 89 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (3) Whether the defendants prove that they have got prior arts which will impinge upon the validity of the suit patent?"
6.2 The plaintiffs filed an application dated 29.11.2021 under Order XIV Rule 5 of the Code, 1908 for framing additional issues on the ground that the issues framed vide order dated 19.02.2019 are not commensurating with the reliefs sought for by the plaintiffs. The plaintiffs have prayed that the following additional issues may also be framed:
"If the answer to issue no.1 is in the affirmative:
a. Whether the Plaintiffs are entitled to decree of permanent injunction against the Defendants as prayed for in the plaint?
b. Whether the Plaintiffs are entitled to a decree of Page 90 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined mandatory injunction against the Defendants as prayed for in the plaint?
c. Whether the Plaintiffs are entitled to an order of rendition of accounts from the Defendants as prayed for in thew plaint?
d. Whether the Plaintiffs are entitled to damages? If so, what amount?
e. Whether the Plaintiffs are entitled for cost of the plaint?
f. Relief"
6.3 The above additional issues sought to be framed by the plaintiffs is objected by the learned advocates for the defendants contending that this Court has framed the issues on the basis of prayers made by the plaintiffs in the plaint vide order dated 19.02.2019 and thereafter, the plaintiffs never sought any Page 91 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined modification in the issues and during the course of hearing, the application is filed to frame the additional issues which should not be permitted as the plaintiffs sought alteration in the issues after the pleadings are over and oral and documentary evidence are already submitted by both the sides. It was therefore, submitted that at such a belated stage, the Court should not frame the additional issues by invoking Sub-rule(5) of Order XIV of the Code,1908.
6.4 Issue no.1 framed vide order dated 19.2.2019 covers the entire controversy of infringement of the suit patent as alleged by the plaintiffs against the defendants, therefore, Page 92 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined additional issues sought to be framed are consequent to the decision to be arrived at qua issue no.1. Therefore, instead of framing such issues, it is observed that additional issues sought to be framed would be covered by issue no.1 and final order shall be passed taking into consideration such consequential issues sought to be framed while arriving at conclusion for issue no.1. This application dated 29.11.2021 is accordingly disposed of. 6.5 The plaintiffs have filed an application Exh.161 to place on record the documents and materials which were produced by and or confronted to the witnesses while recording the testimony of plaintiffs witness no.5 Prof. Oded Navon in view of suggestion made by the Page 93 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court Commissioner Shri S.I. Nagamiya at the relevant time and materials confronted to defendants' witnesses during the cross examination as well as materials comprising of camera-enabled spectacle and camera-enabled shirt produced by the plaintiffs' witness no.4.
6.6 The defendants have also filed application Exh.162 for placing on record the documents with which the plaintiffs' witnesses were confronted as well as the documents produced by the defendants' witnesses during the recording of evidence.
6.7 By order dated 22.07.2019, this Court permitted both the envelopes containing camera-enabled spectacles Page 94 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and camera-enabled shirt to be taken on record and to be kept in sealed condition with the Court Master. It was further directed that the same will be opened at the stage of verification of documents and necessary order in respect of admissibility etc. to be passed at that stage.
6.8 The defendants also filed an application Exh.180 with a prayer to file the proprietary and confidential image processing software of the defendants along with a hasp key in a sealed envelope with other consequential prayers. By order dated 10.06.2022 the applications Exhs. 161 and 162 were decided by allowing both the applications by permitting both the sides to place on record the documents Page 95 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and materials referred to in the applications to be proved in accordance with law.
6.9 With regard to application Exh.180, the defendants were permitted to file proprietary and confidential image processing software of the defendants along with a hasp key in sealed envelopes as the same was covered by prayer no.1 of the application Exh. 162.
6.10 With regard to other prayers, same were kept pending to be considered after production of software in DW-1/X7 and DW-1/X8 by the defendants on record along with the purshis and Exh.180 was kept pending for further order so far as other Page 96 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prayers were concerned. During the course of hearing, no purshis was filed on behalf of the defendants and therefore, the prayers of Exh.180 are not required to be decided. Accordingly application Exh.180 is disposed of. 6.11 Thereafter applications filed by both the sides to get the copies of documents produced on record was also allowed and both the sides were permitted to take the copies of the documents/materials placed on record along with application Exh.161 and Exh.162.
6.12 The defendants filed two applications Exh.166 for summoning witness Mr. B.M. Karamta, Police Sub- Inspector, Kapodra police station, Page 97 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Surat City and Exh.170 for summoning official from Bharti Airtel Limited which were rejected by this Court vide order dated 4.10.2021. Such orders are accepted by the defendants. 6.13 The defendants also filed an application Exh.176 to summon witness Dr. Ruchita Pal, Senior Technical Assistant, Advance Instrument Research Facility (For short "AIRF"), Jawaharlal Nehru University ['JNU'], Delhi. Such application was decided vide order dated 4.10.2021 after consensus arrived at between the parties and Court Commissioner was appointed by District Court, Vadodara for recording the evidence of witness Dr. Ruchita Pal. After recording the evidence, same is placed on record. Page 98 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 6.14 Thereafter the learned advocates for the plaintiffs completed their submissions. After completion of the submissions, the objections were raised by the learned advocate for the defendants with regard to admissibility of electronic evidence produced on record on behalf of the plaintiffs. 6.15 While deciding applications Exhs.167 and 169 filed by the defendants it was requested to decide the objections raised by both the sides during cross examination and also to decide on admissibility of all the documents on record and grant fresh opportunity to prove the document by calling upon the witnesses, vide order dated 21.11.2019 while disposing both Page 99 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the applications it was observed that the validity and admissibility of the documents and materials shall be examined at the time of final hearing. 6.16 The defendants thereafter filed an application with objections to exhibit the documents which are placed on record by the plaintiffs. This Court after hearing both the sides vide order dated 22.07.2022 ordered to exhibit all the documents produced by the plaintiffs and defendants with a further order that the admissibility of the contents thereof shall be considered at the time of final hearing. Accordingly, all the documents are given exhibit numbers subject to proving the contents thereof. Page 100 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 6.17 The defendants thereafter preferred application under section 151 of the Code,1908 on 28.07.2022 seeking clarification and/or recall of the order dated 22.07.2022. By order dated 29.07.2022, it was ordered that said application shall be decided along with the final order.
6.18 The defendants raised serious objections with regard to electronic evidence produced on record by the plaintiffs for alleged non compliance of section 65B of the Evidence Act, 1872 (For short "the Evidence Act").
6.19 In view of the objections raised by the defendants, the Page 101 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs filed affidavits of the respective witnesses as required under section 65B of the Evidence Act. The defendants filed their reply raising the objections to such affidavits. The issue of admissibility of evidence produced by both the sides including the objections raised by the defendants with regard to the Certificates required as per section 65B of the Evidence Act is considered after recording the submissions by both the sides in respect of each of the documents placed on record either along with the affidavit of the respective witnesses or during the course of cross examination while evaluating the evidence to arrive at a conclusion with regard to issues framed.
Page 102 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 6.20 The defendants have also filed application Exh.225 for discarding the documents filed by the plaintiffs after the institution of suit. The defendants have also filed application Exh.226 under section 340 of the Code, 1973 against the plaintiffs and plaintiffs' witness no.8 Ms. Beenita Modi to conduct inquiry for determining into the falsity of the statements made on oath by the plaintiffs as well as the said witness knowing them to be false in evidence by way of affidavit as narrated in the said application.
6.21 The plaintiffs have filed reply to both the applications at Exh.227 and 228. These applications are not tenable on the same reasons as Page 103 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined earlier applications filed by both the sides for inquiry under section 340 of the Code of Criminal Procedure, are not entertained. Therefore, the same reasons are not reiterated for not entertaining this application also and accordingly the application stands disposed of.
VII -Submissions of Plaintiffs on preliminary objections and on merits VII-A Submissions on preliminary objections 7.1 Learned Senior Advocate Mr. Oza submitted that term 'Electronic record' is not defined under the Indian Evidence Act, 1872 (The Evidence Act') but is defined under section 2(t) of the Information Technology Act, 2000 Page 104 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ( For short "The IT Act"). Section 2(t) of the IT Act reads as under:
"electronic record" means data, record or data generated, image or sound stored, received or sent in an electronic form or micro film or computer generated micro fiche;"
7.2 It was submitted that Sub- section (1) of Section 65B of the Evidence Act defines what all would constitute 'electronic record. It provides that 'electronic record shall include:
i. record produced by a computer which is printed on a paper, or ii. record produced by a computer which is stored, recorded or copied in optical or magnetic media.Page 105 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 7.3 It was submitted that under sub-section (1) of Section 65B, both forms i.e. (i) and (ii) above, have been defined as "computer output".
7.4 It was submitted that the aforementioned 'electronic record' defined as "computer output" shall be deemed to be a document under Section 3 of the Evidence Act, by virtue of sub-
section (1) of Section 65B of the Evidence Act.
7.5 It was submitted that the only requirement is that the conditions mentioned in Section 65B are satisfied in relation to "the information and computer in question".
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 7.6 It was further submitted that Section 65B(2) refers to the conditions that must be satisfied in respect of a computer output [i.e. electronic records as defined under sub-section (1)] 7.7 Learned Senior Advocate Mr. Oza thereafter placed reliance on the decision of Hon'ble Supreme Court in case of Arjun Panditrao Khotkar v. Kailash Kushanrao Gorantyal & Ors. reported in (2020) 7 SCC 1 , more particularly para no.22 which reads as under:
"22. Section 65B(2) then refers to the conditions that must be satisfied in respect of a computer output, and states that the test for being included in conditions 658(2(a)) to CS(2(d)) is that Page 107 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the computer be regularly used to stare or process information for purposes of activities regularly carried on in the period in question. The conditions mentioned in Sub- sections 2(a) to 2(d) must be satisfied cumulatively."
7.8 It was submitted that he word "derived" used in Sub-section (2) of Section 65B of the Evidence Act finds its meaning and exposition in the Explanation to Section 65B of the Evidence Act. The said expression for the purpose of Section 658 would mean, derived as a result of calculation, operation or any other process. The word "derive", therefore, has been given a specific and affirmative meaning for Section 65B.
7.9 It was further submitted that Sub-section (3) to Section 65B of the Page 108 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Evidence Act elucidates and explains sub- section (2) and provides that the output produced could be of data stored or information processed by combination of computers operating simultaneously during that period or different computers in succession over the period in question or even multiple computers operating in succession over the period.
7.10 It was further submitted that Sub-section (3) acknowledges and accepts that the computer, ie, device from which "computer output is obtained, may be one in the combination of computers used or even one operating in succession. The provision recognises that information or data is easily and frequently for convenience, business or Page 109 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined technical reasons transferred, copied, recorded or stored in different machines/equipment simultaneously or in succession.
7.11 It was submitted that back up or archives are maintained to store specific and important information. In such cases, all computers used for the purpose during the period in question from the beginning till the period where the output is obtained, are treated and regarded as the single computer for the purpose of the Section.
7.12 Relying upon the decision in case of Hon'ble Supreme Court in case of Arjun Panditrao (supra), it was submitted that Under Sub-section (4), a Page 110 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 'certificate' is to be produced:
i. that identifies the electronic record containing the statement, and ii. describes the manner in which it is produced, or iii. gives particulars of the device involved in the production of the electronic record to show that the electronic record was produced by a computer, by a. either a person occupying a responsible official position in relation to the operation of the relevant device; or b. a person who is in the management of "relevant activities" - whichever is appropriate.
7.13 It was submitted that what Page 111 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is also of importance is that it shall be sufficient for such matter to be stated to the best of the knowledge and belief of the person stating it.
7.14 It was further submitted that Sub-section (5) of Section 65B of the Evidence Act is relevant for interpreting sub-sections (1), (2) and (3). Sub-clause (a) to sub-section (5) recognises that data or information can be created and then transferred, copied and stored to the computer from which output is obtained by different modes and ways:
i. Transfer of information or data in form of files after they are first created are frequent and a common occurrence.Page 112 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ii. Sub-clause (c) to sub-section (5) is clarificatory in nature and states that 'computer output' can be produced directly as it can happen when data or information stored in the computer is printed as a result of pre- existing commands. It can happen also when a command to take print out or to copy, store or record is given with human intervention. The 'computer output' may be a result of appropriate equipment (like a printer) attached to the computer.
7.15 It was submitted that in cases where "the computer", as defined, happens to be a part of a "computer system" or "computer network" (as defined in the IT Act) and it becomes Page 113 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined impossible to physically bring such network or system to the Court, then the only means of proving information contained in such electronic record can be in accordance with Section 65B(1), together with the requisite certificate under Section 65B(4).
7.16 It was submitted that it is by now well settled that the person who gives this certificate under Section 65B (4) can be anyone out of several persons who occupy a 'responsible official position' in relation to the operation of the relevant device, as also the person who may otherwise be in the 'management of relevant activities' spoken of in sub-section (4) of Section 65B.Page 114 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 7.17 Additionally, it was submitted that considering that such certificate may also be given long after the electronic record has actually been produced by the computer, Section 65B(4) makes it clear that it is sufficient that such person gives the requisite certificate to the "best of his knowledge and belief". 7.18 It was submitted that Delhi High Court in case of ICICI Bank Ltd. V. Surabhi Gupta reported in 2018 SCC Online Del 6949, has held in context of Section 65B, that the certificate under Section 65B of the Evidence Act has now become a usual practice in almost all of the suits, in as much as, in every such suit, parties are bound to place reliance on Page 115 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined electronic evidence. The mere fact that the print out is being filed as secondary evidence along with the necessary certificate does not make it any less valid. Certificates under Section 65B have simply become standard formats. Cross examination on these certificates is limited to model of computer, printer, questions as to who take print outs etc. The Delhi High Court has held that the courts should take a pragmatic attitude in these cases and electronic documents ought to be allowed to be read in evidence. 7.19 It was submitted that the certificates filed on behalf of the Plaintiffs, i.e. a certificate of the counsel for the Plaintiffs and the other of PW-1, meet the requirements of Page 116 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Section 65B certificate as set out in the judgment of Arjun Panditrao (supra) which states the test for being included in conditions 65B(2(a)) to 65(2(d)) is that the computer be regularly used to store or process information for purposes of activities regularly carried on in the period in question.
7.20 It was further submitted that PW-1's certificate at paragraphs 2-10 read with paragraph 11 clearly set out that the computer used for processing the 'electronic record'/ 'computer output' was generated from the computer regularly used by him while discharging his duties in the plaintiff company; which implies the computer used in the ordinary course of Page 117 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined business. The said paragraphs also specify that the said computer was used by him during the period over which those electronic records were stored or processed.
7.21 It was submitted that the said paragraphs of the certificate also specify that the said computer was operating properly and the contents of the electronic record have not been altered or tampered with in any manner whatsoever except to the extent that certain portions of PW-1/1 to PW-1/11 were redacted to maintain confidentiality.
7.22 Learned Senior Advocate Mr. Oza thereafter demonstrated fulfillment of conditions under Section 65B(2) in Page 118 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the certificate filed vide purshis dated 14.12.2021 in a tabular form as under :
Relevant provisions Relevant excerpts from of Section 65- B(2) the, certificate of PW-
of the Indian 1 Evidence Act, 1872 65B. Admissibility of 11. a. "all the electronic records.- aforesaid documents..... have been extracted from the
(2) The conditions laptop bearing Serial referred to in sub- No. 428742U of Lenovo section (1) in X220 model, which was respect of a computer provided to me by the output shall be the Plaintiff No. 2 Company following, namely:- for use and which was used by me regularly and lawfully from 2012
(a) the computer to 2020, to discharge output containing the various functions."
information was produced by the
computer during the 11. c. "That the said period over which the laptop and mobile phone computer was used were regularly used by regularly to store or me and I have lawful process information control over the same."
for the purposes of any activities 2. "Scanned copies of regularly carried on the invoices as are over that period by available in the the person having archives of the lawful control over Plaintiffs records, the use of the which have been Page 119 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined computer; extracted by me in my laptop, and that the said archive files are
(b) during the said updated regularly by period, information the Plaintiffs in the of the kind contained normal course of in the electronic business." record or of the kind from which the 11. d. "That the laptop information so and mobile phone as contained is derived used by me had been was regularly fed operating properly and into the computer in the electronic records the ordinary course and their accuracy and of the said contents have not been activities; altered or tampered with in any manner
(c) throughout the whatsoever." material part of the said period, the 12. "I further state computer was that at all times my operating properly laptop and mobile phone or, if not, then in were operating properly respect of any period and there is no in which it was not distortion in the operating properly or accuracy of the was out of operation contents of the during that part of electronic records." the period, was not such as to affect the 11 e. "That the electronic record or information contained the accuracy of its in the computer outputs contents; and is an exact replica, and therefore,
(d) the information reproduces the contained in the information contained electronic record on the Electronic reproduces or is Records therein."
Page 120 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined derived from such
information fed into 12. "Accordingly, I am the computer in the making this present ordinary course of certificate that the the said activities. electronic records placed on record before this Hon'ble Court are reproduction of the electronic records."
7.23 It was submitted that for the purposes of the print outs and optical media of the electronic record filed on behalf of the plaintiffs before this Court, a certificate of the counsel for the Plaintiffs who had printed and/or uploaded the electronic record in the optical media, as applicable has been filed in accordance with provisions of Section 65B of the Evidence Act.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 7.24 To point out pre-requisites of section 65B of the Indian Evidence Act, 1872, reliance was placed on the following decisions:
i) In case of Arjun Panditrao Khotkar v. Kailash Kushanrao Gorantyal and others reported in AIR 2020 SC 4908, wherein Hon'ble Apex Court held as under:
"57. Subject to the caveat laid down in paragraphs 50 and 54 above, the law laid down by these two High Courts has our concurrence. So long as the hearing in a trial is not yet over, the requisite certificate can be directed to be produced by the learned Judge at any stage, so that information contained in electronic record form can then be admitted, and relied upon in evidence.
58. It may also be seen that the person who gives this certificate can be anyone out Page 122 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of several persons who occupy a 'responsible official position' in relation to the operation of the relevant device, as also the person who may otherwise be in the 'management of relevant activities' spoken of in Sub- section (4) of Section 65B.
Considering that such certificate may also be given long after the electronic record has actually been produced by the computer, Section 65B(4) makes it clear that it is sufficient that such person gives the requisite certificate to the "best of his knowledge and belief"
(Obviously, the word"and" between knowledge and belief in Section 65B(4) must be read as "or", as a person cannot testify to the best of his knowledge and belief at the same time).
59. We may reiterate, therefore, that the certificate required Under Section 65B(4) is a condition precedent to the admissibility of evidence by way of electronic record, as correctly held in Anvar P.V. (supra), and incorrectly "clarified" in Shafhi Mohammed (supra). Oral evidence in the place of such certificate cannot possibly suffice as Page 123 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Section 65B(4) is a mandatory requirement of the law. Indeed, the hallowed principle in Taylor v. Taylor (1876) 1 Ch.D. 426, which has been followed in a number of the judgments of this Court, can also be applied. Section 65B(4) of the Evidence Act clearly states that secondary evidence is admissible only if lead in the manner stated and not otherwise. To hold otherwise would render Section 65B(4) otiose.
xxx
72. The reference is thus answered by stating that:
(a) Anvar P.V. (supra), as clarified by us hereinabove, is the law declared by this Court on Section 65B of the Evidence Act. The judgment in Tomaso Bruno (supra), being per incuriam, does not lay down the law correctly. Also, the judgment in SLP (Crl.) No. 9431 of 2011 reported as Shafhi Mohammad (supra) and the judgment dated 03.04.2018 reported as MANU/SC/0331/2018 :
(2018) 5 SCC 311, do not lay down the law correctly and are therefore overruled.
(b) The clarification referred Page 124 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to above is that the required certificate Under Section 65B(4) is unnecessary if the original document itself is produced. This can be done by the owner of a laptop computer, computer tablet or even a mobile phone, by stepping into the witness box and proving that the concerned device, on which the original information is first stored, is owned and/or operated by him. In cases where the "computer"
happens to be a part of a "computer system" or "computer network" and it becomes impossible to physically bring such system or network to the Court, then the only means of providing information contained in such electronic record can be in accordance with Section 65(1), together with the requisite certificate Under Section 65(4). The last sentence in Anvar P.V. (supra) which reads as " ...if an electronic record as such is used as primary evidence Under Section 62 of the Evidence Act..." is thus clarified; it is to be read without the words "Under Section 62 of the Evidence Act,..." With this clarification, the law stated in paragraph 24 of Anvar P.V. (supra) does not need to be Page 125 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined revisited.
(c) The general directions issued in paragraph 62 (supra) shall hereafter be followed by courts that deal with electronic evidence, to ensure their preservation, and production of certificate at the appropriate stage. These directions shall apply in all proceedings, till Rules and directions Under Section 67C of the Information Technology Act and data retention conditions are formulated for compliance by telecom and internet service providers.
(d) Appropriate Rules and directions should be framed in exercise of the Information Technology Act, by exercising powers such as in Section 67C, and also framing suitable Rules for the retention of data involved in trial of offences, their segregation, Rules of chain of custody, stamping and record maintenance, for the entire duration of trials and appeals, and also in regard to preservation of the meta data to avoid corruption. Likewise, appropriate Rules for preservation, retrieval and production of electronic Page 126 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record, should be framed as indicated earlier, after considering the report of the Committee constituted by the Chief Justice's Conference in April, 2016."
ii) In case of Anvar P.V. v. P.K. Basheer reported in AIR 2015 SC 180, wherein Hon'ble Apex Court held as under:
"11. Section 65B reads as follows:
65B. Admissibility of
electronic records:
(1) Notwithstanding anything
contained in this Act, any information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer (hereinafter referred to as the computer output) shall be deemed to be also a document, if the conditions mentioned in this section are satisfied in relation to the information and computer in question and shall be Page 127 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined admissible in any proceedings, without further proof or production of the original, as evidence of any contents of the original or of any fact stated therein of which direct evidence would be admissible.
(2) The conditions referred to in sub-section (1) in respect of computer output shall be the following, namely:
(a) the computer output containing the information was produced by the computer during the period over which the computer was used regularly to store or process information for the purposes of any activities regularly carried on over that period by the person having lawful control over the use of the computer;
(b) during the said period, information of the kind contained in the electronic record or of the kind from which the information so contained is derived was regularly fed into the computer in the ordinary course of the said activities;
(c) throughout the material part of the said period, the computer was operating properly or, if not, then in respect of Page 128 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined any period in which it was not operating properly or was out of operation during that part of the period, was not such as to affect the electronic record or the accuracy of its contents; and
(d) the information contained in the electronic record reproduces or is derived from such information fed into the computer in the ordinary course of the said activities.
(3) Where over any period, the function of storing or processing information for the purposes of any activities regularly carried on over that period as mentioned in Clause
(a) of Sub-section (2) was regularly performed by computers, whether -
(a) by a combination of computers operating over that period; or
(b) by different computers operating in succession over that period; or
(c) by different combinations of computers operating in succession over that period; or
(d) in any other manner involving the successive operation over that period, in Page 129 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined whatever order, of one or more computers and one or more combinations of computers, all the computers used for that purpose during that period shall be treated for the purposes of this section as constituting a single computer;and references in this section to a computer shall be construed accordingly.
(4) In any proceedings where it is desired to give a statement in evidence by virtue of this section, a certificate doing any of the following things, that is to say, -
(a) identifying the electronic record containing the statement and describing the manner in which it was produced;
(b) giving such particulars of any device involved in the production of that electronic record as may be appropriate for the purpose of showing that the electronic record was produced by a computer;
(c) dealing with any of the matters to which the conditions mentioned in Sub-section (2) relate, and purporting to be signed by a person occupying a responsible official position in relation to the operation of Page 130 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the relevant device or the management of the relevant activities (whichever is appropriate) shall be evidence of any matter stated in the certificate; and for the purposes of this Sub-section it shall be sufficient for a matter to be stated to the best of the knowledge and belief of the person stating it.
(5) For the purposes of this section, -
(a) information shall be taken to be supplied to a computer if it is supplied thereto in any appropriate form and whether it is so supplied directly or (with or without human intervention) by means of any appropriate equipment;
(b) whether in the course of activities carried on by any official, information is supplied with a view to its being stored or processed for the purposes of those activities by a computer operated otherwise than in the course of those activities, that information, if duly supplied to that computer, shall be taken to be supplied to it in the course of those activities;Page 131 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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(c) a computer output shall be taken to have been produced by a computer whether it was produced by it directly or (with or without human intervention) by means of any appropriate equipment.
Explanation: For the purposes of this section any reference to information being derived from other information shall be a reference to its being derived therefrom by calculation, comparison or any other process.
These are the provisions under the Evidence Act relevant to the issue under discussion.
13. Any documentary evidence by way of an electronic record under the Evidence Act, in view of Sections 59 and 65A, can be proved only in accordance with the procedure prescribed Under Section 65B. Section 65B deals with the admissibility of the electronic record. The purpose of these provisions is to sanctify secondary evidence in electronic form, generated by a computer.
It may be noted that the
Section starts with a non
obstante clause. Thus,
notwithstanding anything
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undefined
contained in the Evidence Act, any information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer shall be deemed to be a document only if the conditions mentioned Under Sub-
section (2) are satisfied,
without further proof or
production of the original. The very admissibility of such a document, i.e., electronic record Which is called as computer output, depends on the satisfaction of the four conditions Under Section 65B(2). Following are the specified conditions Under Section 65B(2) of the Evidence Act:
(i) The electronic record containing the information should have been produced by the computer during the period over which the same was regularly used to store or process information for the purpose of any activity regularly carried on over that period by the person having lawful control over the use of that computer;
(ii) The information of the kind contained in electronic record or of the kind from Page 133 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which the information is derived was regularly fed into the computer in the ordinary course of the said activity;
(iii) During the material part of the said period, the computer was operating properly and that even if it was not operating properly for some time, the break or breaks had not affected either the record or the accuracy of its contents; and
(iv) The information contained in the record should be a reproduction or derivation from the information fed into the computer in the ordinary course of the said activity.
14. Under Section 65B(4) of the Evidence Act, if it is desired to give a statement in any proceedings pertaining to an electronic record, it is permissible provided the following conditions are satisfied:
(a) There must be a certificate which identifies the electronic record containing the statement;
(b) The certificate must describe the manner in which the electronic record was Page 134 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined produced;
(c) The certificate must furnish the particulars of the device involved in the production of that record;
(d) The certificate must deal with the applicable conditions mentioned Under Section 65B(2) of the Evidence Act; and
(e) The certificate must be signed by a person occupying a responsible official position in relation to the operation of the relevant device."
iii) In case of Sanjib Sarkar v.
Rajasree Roy reported in MANU/WB/ 0764/2021,wherein Division Bench of Calcutta High Court held as under:
"13. Having carefully considered the rival submissions as well as the materials on record, this court is required to first notice the arguments of the appellant/ the husband that certification in terms of Section 65(B)(4) was absolutely necessary qua the electronic evidence tendered by the respondent/the wife. While Page 135 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined noticing such issue this Court finds that the law laid down in MANU/SC/0521/2020:2020 7 SCC 1 creates a difference between the manner of tendering primary evidence as distinguished from secondary evidence in electronic form. It has been, inter alia, held by the Hon'ble Apex Court that the requisite certificate in Section 65B(4) is not necessary for the original documents as produced which can be done by the owner of the laptop, computer, computer tablet or even a mobile phone, by stepping into the witness box and proving that the device concerned on which the original information is stored and/or is operated by such owner who is tendering the evidence.
14. The above situation of tendering evidence from a primary source is distinguished from a situation where the computer and/or source of such information happens to be part of a computer or computer network. Since it is impossible to physically bring such network or system to the Court during trial, the only method of proving such information contained in the electronic record can be by way of Page 136 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined certification provided under Section 65B(4) of the Evidence Act, 1872 (as amended).
15. To the best of the mind of this Court, it is not denied by the appellant/the husband that the electronic evidence relied upon on behalf of the respondent/the wife before the Learned Trial Court was sourced from the original electronic device owned by the respondent/the wife. It is the respondent/the wife who has stepped into the witness box in support of her primary contention relating to the fraud practised on her. It is an admitted position that the electronic record relied upon by her was sourced from her Facebook account."
7.25 In support of his submission with regard to admissibility of electronic records as per section 65B of the Indian Evidence Act, 1872, reliance was placed on the following decisions:
i) In case of ICICI Bank Limited v. Kamini Page 137 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Sharma and others in RFA 297 of 2015 decided on 31.01.2018, wherein Delhi High Court held as under :
"14. Section 34 of the Evidence Act clearly provides that the books of accounts maintained in electronic form are relevant. Under Section 62 of the Evidence Act, original documents constitute primary evidence. In the context of electronic evidence, printouts of electronic documents are considered as secondary. However, judicial notice needs to be taken of the fact that most accounts today are not maintained in paper form, but electronic form. The primary evidence could be the server on which the statement of accounts is stored. These servers may store the statement of accounts of multiple clients in the hard drive. It would be an impossibility to require the Plaintiff bank to produce the hard drive of the server in every suit for recovery filed by it. Under such circumstances, the Plaintiff bank has no option but to produce the secondary evidence i.e., a printout of statement Page 138 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of accounts, duly certified by a responsible official of the bank along with a certificate under Section 65B of the Evidence Act. Needless to add, the certificate under Section 65B of the Evidence Act has now become a usual practice in almost all of the suits, inasmuch as, in every such suit, parties are bound to place reliance on electronic documents. The mere fact, that the printout is being filed as secondary evidence along with the necessary certificate, does not make it any less valid. The said accounts statement would be rebuttable if any discrepancy is found or pointed out. But in the absence of the same, there is no reason as to why the statement of accounts filed by the Plaintiff bank should be disbelieved. The Supreme Court in Anvar P.V. v.
P.K. Basheer MANU/SC/0834/2014 : AIR 2015 SC 180 (hereinafter, 'Anvar v. Basheer'), while addressing the issue of admissibility of electronic evidence and Section 65B of the Evidence Act held as under:
"13. Any documentary evidence by way of an electronic record under the Evidence Act, in view of Page 139 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Sections 59 and 65A, can be proved only in accordance with the procedure prescribed under Section 65B. Section 65B deals with the admissibility of the electronic record. The purpose of these provisions is to sanctify secondary evidence in electronic form, generated by a computer. It may be noted that the Section starts with a non obstante clause.
Thus, notwithstanding anything contained in the Evidence Act, any information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer shall be deemed to be a document only if the conditions mentioned Under Sub-section (2) are satisfied, without further proof or production of the original. The very admissibility of such a document, i.e., electronic record which is called as computer output, depends on the satisfaction of the four conditions Under Section 65B(2). Following are the specified Page 140 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined conditions Under Section 65(2) of the Evidence Act:
(i) The electronic record containing the information should have been produced by the computer during the period over which the same was regularly used to store or process information for the purpose of any activity regularly carried on over that period by the person having lawful control over the use of that computer;
(ii) The information of the kind contained in electronic record or of the kind from which the information is derived was regularly fed into the computer in the ordinary course of the said activity;
(iii) During the material part of the said period, the computer was operating properly and that even if it was not operating properly for some time, the break or breaks had not affected either the record or the accuracy of its contents; and
(iv) The information contained in the record Page 141 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined should be a reproduction or derivation from the information fed into the computer in the ordinary course of the said activity."
xxx
15. It is further clarified that the person need only to state in the certificate that the same is to the best of his knowledge and belief. Most importantly, such a certificate must accompany the electronic record like computer printout, Compact Disc(CD), Video Compact Disc(VCD) pen drive etc. pertaining to which a statement is sought to be given in evidence when the same is produced in evidence. All these safeguards are taken to ensure the source and authenticity which are the two hallmarks pertaining to electronic record sought to be used as evidence.
Electronic records being
more susceptible to
tampering, alteration,
transposition, excision
etc. without such
safeguards, the whole trial based on proof of electronic records can lead to travesty of justice.
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16. Only if the electronic record is duly produced in terms of Section 65B of the Evidence Act, the question would arise as to the genuineness thereof and in that situation, resort can be made to Section 45A -
opinion of examiner of electronic evidence."
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16. There is however some serious re-thinking required on the manner in which electronic documents are to be proved. In each case where electronic documents are involved, it would be impractical to expect the parties to produce the primary evidence which would be the medium on which the document is stored, considering that electronic documents could be stored on hard drives, hard disks, CPUs, micro- processors, cameras, telephones, etc. Certificates under Section 65B accompanying the printouts have simply become standard formats. Cross examination on these certificates can involve debates on model of computer, printer, questions as to who took printouts etc. Courts, therefore, need to take a Page 143 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pragmatic attitude in these cases. Unless there is a serious challenge to the electronic documents i.e., tampering, forgery, hacking, misuse of an email address, change in contents etc., usually printouts of electronic documents ought to be allowed to be read in evidence. The complex procedure laid down for proving of electronic documents can prove to be extremely cumbersome and can have enormous impact especially in commercial transactions, as it has had in the present case."
ii) In case of Kundan Singh v. The State (Judgment dated 24th November, 2015 in CRL.A 711/2014) wherein Delhi High Court held as under:
"32. Section 65-B of the Evidence Act, consists of four sub-sections. Subsection (1) begins with non-obstante clause and gives primacy and overriding effect to the said provision. A dissection of that sub-section would reveal that it consists of distinct parts. The first part stipulates that Page 144 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined any information contained in the electronic record in the form of paper print output or optical or magnetic media output, i.e. the electronic record copied, stored or recorded on an optical or magnetic media from another source, shall be deemed to be a document. The first part, therefore, deals with the paper printout or optical or magnetic media on which the electronic record has been copied, stored or recorded as distinct from the original media on which the data or information is created, or recorded, stored or copied. Media and paper print outs are tangible articles. Paper print outs can be seen and read.
Media can also be seen and read, when viewed with an appropriate equipment and paper printouts taken. Noticeably and pertinently, the paper printout output or the optical or magnetic media output, on satisfaction of the conditions stipulated in Section 65B is treated as a document by itself. The conditions would relate to the information and the computer from which the printout on paper or optical or magnetic media has been produced by copying, recording or storing the files. The Page 145 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined following part, states that when the conditions mentioned in the section in relation to
(a) information (b) computers are satisfied. The document i.e. the printed paper or the optical or magnetic media on which the files have been copied, stored and recorded, shall be admissible in evidence, without further proof or production of the original.
In such circumstances,
production of the original
computer or equipment from
which the paper print out or media was produced by copying, recording or storing the files is not required to be produced.
Once the requirements are satisfied, the printed document or the optical or magnetic media would be evidence of the contents as to what was stored in the computer from which the print out, or media was created by way of copying, recording or storing files. The last part therefore deals with the effect, when the requirements stated in Section 65B are satisfied.
xxx
34. Sub-section 2 to Section 65B explains and elucidates the term "computer output' and in a manner expounds and expands Page 146 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined what is meant by the original device or computer from which output is obtained. As per sub- clause (a) to sub-section 2 computer output can consist of information produced by the computer during the period the computer was regularly used to store or process the information for the purpose of any activity regularly carried on over "that period" by a person, having lawful control over the use of the computer.
Clause (b) states that information contained in the electronic record or derived from should be regularly fed into the computer in ordinary course of the said activities. Clause (c) postulates that the computer during the relevant period should have operated properly and if it had not operated properly or was out of operation for a part of the period, such failure should not affect the electronic record or the accuracy of its contents.
Lastly, sub-clause (d)
recognizes that electronic
record could consist of data or information collected or fed into the computer. The word "derived" used in Sub-section 2 of Section 65B finds its meaning and exposition in the explanation. The said Page 147 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined expression for the purpose of section 65B would mean, derived as a result of calculation, operation or any other process. The word derive, therefore, has been given a specific and affirmative meaning for Section 65B."
xxx
53. In view of the aforesaid discussion, information memorised as business record or records maintained in common course of events are not treated as hearsay even if the maker lacks personal knowledge of the facts or events. The document should be prepared in normal course of business must have been at or near the time of events it records and should have been made in normal course of business activities or events. Sub-section (4) to Section 65B postulates that the certificate should be given by a person occupying a responsible official position in relation to operation of the relevant device or management of the relevant activities. If the said conditions are satisfied, it promotes and establishes the trustworthiness. In such cases, presumption of fact regarding genuineness and authenticity of the content can be invoked at Page 148 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the discretion of the court under Section 114 of the Evidence Act.
xxx
57. We have already referred to the distinction between factum of a statement and truth of a statement and the concept of presumption of memorandum or records maintained in normal course of business and the credibility or trustworthiness of electronic records. However, it must be understood that mere admission or admissibility of the electronic record would not mean that the contents of the electronic record have been proved beyond doubt and debate and are automatically proved when the document is marked exhibit. Mere marking of a document as exhibit does not dispense with the proof of its contents (see Sait Tarajee Khimchand versus Yelamarti Satyam, AIR 1971 SC 1865, Narbada Devi Gupta versus Birendra Kumar Jaiswal, (2003) 8 SCC 745 and Mohd. Yusuf versus D. and Another, AIR 1968 Bombay 112). Provisions of Section 65 of Evidence Act are apposite on the said legal principle and reference can also be made to Sections 91 and 92 of the Evidence Act. The latter sections deal with Page 149 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined exclusion of oral evidence by documentary evidence in certain cases and in which cases oral evidence can be led even when there are documents recording terms of contract, grant or any other disposition of property or when a matter is required by law to be reduced to a form of a document. The effect of the aforesaid provisions is that when a certificate under Section 65B authenticates the computer output, it will only show and establish that the computer output is the paper print out or media copy, etc. of the computer from which the output is obtained. The court has still to rule out when challenged or otherwise, the possibility of tampering, interpolation or changes from the date the record was first stored or created in the computer till the computer output is obtained. The focus over here is not so much on the creation of the out-put as stipulated under sub-section (2) to Section 65B, but rather on the preservation and sanctity of the record after it was originally created. It extends beyond identification of the particular computer equipment and the process or equipment used for computer Page 150 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined output, etc. It would relate to the policies, procedures for use of the equipment that stored the said information since creation and data base and integrity of the same.
Questions which would arise and have to be answered is whether data base was protected and had no or limited access, which permits modification/ alteration; whether the data base could be wrongly lodged or created or could be transferred or changed when the data base was transferred and stored in the backup systems. These are questions which are pertinent and have to be examined to ascertain whether or not there was possibility of change, alteration or manipulation in the initial or original data after it was created. The courts must rule out that the records have not been tampered and read the data or information as it originally existed. These are aspects which are not codified as such, for probative value is examined on the case to case basis keeping in mind the relevant facts."
iii) In case of Manoj Kumar Tiwari and Page 151 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined others v. Manish Sisodia and others reported in 276 (2021) DLT 649, wherein Delhi High Court held as under:
"39. It is however essential to observe that in the instant case apart from the CD which the complainant states in paragraph 2 of his certificate under Section 65-B of the Indian Evidence Act, 1872 exhibited as Ex. CW1/24 before the learned Trial Court to having been obtained from the help of the Media Cell of AAP of the telecast on Delhi Aaj Tak, which undoubtedly the complainant would have to prove in accordance with Section 65B of the Indian Evidence Act, 1872 qua which it would be open to the Ld. Trial Court to also resort to invocation of the provisions of Section 311 of Learned Cr.P.C. and Section 294 of the Cr.P.C., the complainant has categorically stated in paragraph 2 of the certificate that two other video clips were downloaded and saved on his office computer and all three videos were extracted in the external disk and that the defamatory tweets allegedly made by the accused persons through their verified twitter Page 152 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined handles were saved with the print outs having been filed along with the complaint and that the electronic evidence having been created with the help of his office computer and printer device under his instructions and supervision and that the computer and the printer in which the video of the Press Conference telecast on 01.07.2019 on various news channels including Delhi Aaj Tak news channel and alleged defamatory tweets were all downloaded and saved in his office computer which was in his control and used by him in his office regularly and that to the best of his knowledge and belief, the computer and the printer had been operating properly throughout the period in which the electronic record was accessed, stored and used by him in his office and to the extent thus, that the contents of the CD and the pen drive and alleged defamatory tweets were saved in the computer of the complainant and produced before the learned Trial Court, the same would undoubtedly fall within the ambit of admissible evidence in terms of Section 65-B of the Indian Evidence Act, 1872."Page 153 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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iv) In case of XACT Studio International v. Liwona S.P. Z.O.O. reported in MANU/DE/2181/2018, wherein Delhi High Court held as under:
"12. The Plaintiff has filed on record a certificate under Section 65-B of the Indian Evidence Act, which reads as under:-
"It is certified that documents/photograph placed on record i.e. CC No. 77487116 is a computer printout and the same has been provided to me by the client. The same has been obtained/developed from my printer installed at his office at Poland in routine manner for the purpose of printing. The said computer was under his lawful control. It is further certified to the best of my knowledge that no addition or alteration has been made with the copy of documents provided from the extract of electronic record."
15. In view of the above legal position, the emails, which Page 154 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined have been placed on record along with the certificate as filed, are held to be sufficient to prove the genuinity of the emails. The Defendant has not filed any other version of the emails to show that the emails either have been distorted manipulated or tempered with. Thus, there is no reason to doubt the contents of the emails.
The suit is against a sole proprietary concern but the sole proprietor has not been made a party."
VII-B Submissions on merits 7.26 Learned Senior Advocate Mr. Yatin Oza appearing for the plaintiffs referred to the averments made in the memo of the plaint to highlight the infringement of the suit patent by the defendants. He referred to the entire process prescribing the method for evolution of a gemstone described in Page 155 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the application in Form No.2 prescribed under section 10 of the Patents Act read with Rule 13 of the Patent Rules, 2003 (For short "the Patent Rules") filed by the plaintiffs before the Controller General of Patent Design and Trademarks.
7.27 Learned Senior Advocate Mr. Oza referred to the said application to point out that patent is granted to the entire apparatus including the method of eliminating inclusions in a gemstone having first refractive index providing a material having a second refractive index, taking measures for reducing the presence within the said material of any substance other than the inclusion, having a third refractive index, said Page 156 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined measures including withdrawing, by a device, gas bubbles from the said materials, disposing the gemstones on a holder within the said material, illuminating the gemstones by an illuminator and detecting illumination of the gemstone with material by a detector and determining by a controller, a location of an inclusion based on said detection. He referred to the apparatus in detail which is invented by the plaintiffs for determining the location of at-least one inclusion in a gemstone having first refractive index comprising a container adapted for containing a material having a second refractive index, a holder operative to support a gemstone in the container and in Page 157 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined material when container contains the material, an illuminator positioned and adapted to illuminate said gemstones when disposed within the said material in said container with illumination at which said gemstone and said material have their respective first and second index of refraction; detector that detects illumination from the illuminated gemstones and said material and produces signals responsive thereto; a controller that receives the signal and is operative to determine a location of an inclusion in the gemstone based on the signal; and a system operative to reduce the presence within said material of any substance other than inclusions having a third refractive index, said system including Page 158 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a device for withdrawal of gas bubbles from the said material. It was therefore, submitted that Patent no.271425 granted to the plaintiffs is for the entire apparatus and not only to the measures including withdrawing gas bubbles by device from the material. He invited the attention to the observations made by the Controller General of Patent, Design and Trade mark in the order granting the suit patent to the plaintiffs in the final analysis order dated 22.02.2016. It was submitted that it was opined in the order that prior art does not disclose "apparatus" which takes measures of reducing the presence within its immersion material of any substance other than the inclusions, having a Page 159 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined third refractive index, said measures including withdrawal of gas bubbles from said material and determining the position of the inclusion in gemstone in all three coordinates by illuminating and imaging the entire gemstone. It was therefore, submitted that the suit patent is granted to entire Apparatus and not only to the devise used by the plaintiffs for withdrawal of gas bubbles from the immersion material for determining the position of the inclusion in gemstones in all the three coordinates by illuminating and imaging the entire gemstone.
7.28 Learned Senior Advocate Mr. Oza referred to and relied upon the provisions of section 58 of the Page 160 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Evidence Act to submit that in the written statement of the defendants, granting of the suit patent to the plaintiffs is admitted. With regard to apparatus, he invited the attention to paragraph nos. 12, 15, 16, 20, 21 of the written statement and submitted that the defendants have admitted that the device developed by the defendants does not infringe the suit patent as it does not comprise any device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium which is pith and marrow of the suit patent. It was therefore, submitted that the entire apparatus is an invention of the plaintiffs. It was therefore, submitted that there is infringement of the suit Page 161 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent on admission of the defendants in the written statement.
7.29 Learned Senior Advocate Mr. Oza also referred to and relied upon the paragraph no.10 of the rejoinder filed by the plaintiffs in view of Sub- Rule(5) of Order VIII of the Code, 1908 which provides that every allegation of fact in plaint if not denied specifically or by necessary implication or stated to be not admitted in the pleadings of the defendants, the same is required to be considered as admitted. It was therefore, submitted that in view of the admission made by the defendants with regard to the granting of suit patent, the plaintiffs is now only Page 162 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined required to prove that there is infringement of the suit patent subject to submissions to be made with regard to the counter claim filed by the defendants for revocation of the suit patent.
7.30 Learned Senior Advocate Mr. Oza thereafter referred to the deposition of the witnesses of the plaintiffs and cross examination of such witnesses by the defendants' side to prove that there is enough proof of infringement of the suit patent by the defendants in view of oral and documentary evidence led by the plaintiffs which the defendants have not been able to rebut or disprove in any manner.
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i) - Evidence of PW-1 7.31 With regard to plaintiff witness no.1-Roni Ben-Ari who is Deputy CEO and Vice-President-products with the plaintiff no.2 company has filed his affidavit at Exh.76. Learned Senior Advocate Mr. Oza referred to paragraph nos. 6 to 12 of the said affidavit and Exhibit PW-1/1 to PW-1/16 referred therein to submit that witness PW-1 has stated in no uncertain terms that automated inclusion identification technology invented by the plaintiffs has been protected by granting patents in various jurisdictions in India, the United States of America, Australia, Canada and South Africa and the same is in commercial use since 2009. Various copies of invoices indicating the Page 164 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined commercial usage of the automated inclusion identification technology of Galaxy machines of the plaintiffs have been placed on record at Exhibit PW-1/1 to Exhibit PW-1/11.
7.32 It is averred on affidavit by PW-1 that apparatus and method which is invented by the plaintiffs create an extremely accurate 3D map of the internal inclusions within rough diamonds using an inventive technology is protected by a number of patents and patent applications worldwide and such 3D data information is integrated into plaintiff no.2's planning products which provide the best alternatives available to a diamond planner to ensure minimum wastage and optimum commercial utilization of the rough Page 165 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined diamonds.
7.33 It was further stated that sophisticated "Advisor" software of plaintiff no.2 used in conjunction with the data output of Galaxy family of machines of plaintiff no.1, helps the manufacturer to plan the cutting and polishing of rough diamonds so as to achieve maximum profit. Copy of image of the rough diamonds, image of the corresponding 3D model of the diamond generated by the mapping/planning and copy of image of the same 3D model with finished diamond are placed on record to show the result of use of apparatus and the method invented by the plaintiffs at Exhibit PW-1/12 to Exhibit PW-1/14. Application filed by plaintiff no.1 for grant of patent in Page 166 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the year 2008 along with Certificate of Registration of Patent issued on 22.02.2016 to plaintiff no.1 in respect of invention titled as "Method for evaluation of a gemstone" are also placed at Exhibit PW-1/15 and Exhibit PW-1/16. The images of various processes which is undertaken by the machine of the plaintiffs is also described at length. It is also averred in the deposition about the procurement of one or more duplicate galaxy machines by the defendants sometime in February 2017 with regard to usage of similar machines by the defendants and reports generated in the month of July, 2017 and thereafter the efforts made by the plaintiffs by purchasing 10 rough diamonds stones from one Shiru Gems Page 167 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Diamonds Pvt. Ltd. and submitting the same to defendant no.1, a private investigator engaged by the plaintiffs to have such diamonds internally scanned and evaluated in order to identify and locate the inclusions contained in such diamonds after obtaining a laboratory report which indicates no presence of immersion material used by the plaintiffs i.e. selenium, defendant no.1 returned 10 rough diamonds along with data output of the inclusion scanning process on flash drive (disk on key) and also through website for which a link, username and password was provided. Such laboratory report and data output procured from the website of defendant no.1 are placed on record vide Exhibit Page 168 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-1/17 and Exhibit PW-1/18. It is further stated that after scanning of the diamonds by defendant no.1, the private investigator again got the same scanned diamonds tested for selenium residue at the same laboratory at New Delhi. Such exercise was carried out to demonstrate that the machines used by defendant no.1 for scanning and mapping said 10 diamonds, in fact employed the technology contained in the suit patent. The data output of five such stones as obtained from defendant no.1 are placed on record vide Exhibit PW- 1/20 to PW-1/24 and report of the laboratory showing the presence of selenium traces on the stones scanned is placed on record at Exhibit PW-1/25. 7.34 PW-1 has further stated that Page 169 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the plaintiffs were not aware as to what all similarities were there in the machines of the defendants and the Galaxy machines prior to execution of the Court Commission at the premise of defendant no.1. Therefore, the fact that the defendants were using selenium as the immersion material in their own apparatus coupled with the fact that the apparatus used by the defendant no.1 in the machines found at premises are identical to that used by the plaintiff no.1 in his own machine, it was submitted that there is clear infringement by the defendants of the suit patent. Screenshots taken by PW-1 from the website of defendant no.1 are also part of the affidavit to demonstrate that the report generated Page 170 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the defendant no.1 are respectively similar to those of the reports of the plaintiffs and reports were provided in exact format as plaintiff no.2's software. Along with the affidavit, copy of the original data output of defendant no.1 as reflected in plaintiff no.2's software is tendered as Exhibit PW-1/26.
7.35 PW-1 has thereafter referred to the similarities in the machine of the plaintiffs and that of the defendants found during the inspection carried out by the Court Commissioner by placing on record the comparative images at Exhibit PW-1/32 to Exhibit PW-1/35 after referring to the Court Commissioner's report at Exhibit PW- Page 171 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 1/28 and video recording at Exhibit PW- 1/29. It was further averred in paragraph no.49 that on bare perusal of the evidence collected by the Court Commissioner, Mr. Pranav Jain shows that machines used by defendant no.1 for scanning rough diamonds for its customers uses the exact same technology which is protected under the suit patent. It was also averred that the defendants have admitted that there is only one distinguishing factor between their machines and those of the plaintiffs which is the alleged absence of the bubble prevention device. Reference was also made in paragraph no.51 with regard to 200 vacuum pumps used by the defendants by placing on record true copies of the Trade Mark Page 172 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined reports available on the website of Hong Kong based supplier at Exh.PW-1/37 and image of vacuum pump used in plaintiff's Galaxy machine at Exhibit PW-1/38.
7.36 Exhaustive cross examination was done by the defendants of PW-1. Learned Senior Advocate Mr. Oza invited the attention of the Court to question nos. 52 to 54, 62, 69, 70, 71 to 77, 78 to 83, 84 to 87, 94, 95, 103 to 106, 107 to 114, 117, 148, 151, 160, 165 to 170, 231 and 443 to submit that the defendants have failed to extract any contradictory facts than the averments made on oath in affidavit of PW-1. It was therefore, submitted that the contents of the affidavit and documents placed on record are accordingly Page 173 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined proved.
ii)- Evidence of PW-2 7.37 Learned Senior Advocate Mr. Yatin Oza referred to deposition of Plaintiff witness No.2 Neelesh Dangal Singh at Exh.80 to submit that in paragraph no.2 of the affidavit it is stated that PW-2 was given training to operate the defendants' machines for scanning rough diamond whereas in paragraph no.4, it was averred that the defendants referred to such machine as galaxy machines which clearly shows that there is infringement of the suit patent. It was pointed out that paragraph no.7 of the affidavit talks about vacuum pump which are used in machines of the defendants which are Page 174 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined detachable from the said machines. Paragraph no.13 includes an image of vacuum pump which was shown to PW-2 and in paragraph no.14, PW-2 confirms that vacuum pump which was shown to him is in fact the same vacuum pump which is being used by the defendants in their machine. In paragraph no.15, PW-2 refers to camera-enabled shirt which was given by PW-4 to PW-2 and PW-2 captured the video of functioning of the defendant no.1's machine wearing such camera enabled shirt. PW-2 tendered in evidence camera-enabled shirt marked as Exhibit PW-2/1 as per paragraph no.16 of the affidavit. In paragraph no.17, PW-2 has averred that he returned the camera-enabled shirt to PW-4 after recording video. It was Page 175 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined further submitted that in the cross examination also, in question nos. 3, 6, 21 to 25, 30, 60, 65, 67, 68, 77 has corroborated his averments in the affidavit that PW-2 worked at the defendants' premises and the defendants are using machines for scanning diamond as galaxy machines manufactured by the plaintiffs resulting into infringement of the suit patent.
7.38 It was submitted that PW-2 stood the test of cross examination for videography through camera-enabled shirt and further that PW-2 was introduced by PW-3 to PW-4. It was further submitted that as per the question nos. 80, 86, 89, 93, 94, 103, 109, 110, 120, 121, 122, 124, 126, 127, 131, 132, 133, 140 of the cross Page 176 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined examination of PW-2 further corroborates the averments made in the affidavit of PW-2 that he was present at the defendants' premises and was checked by security guard also and further that he had confirmed to PW-4 regarding presence of vacuum pump at the defendants' premises and vacuum pump which were shown to him were actually found by PW-2 at the premises of the defendants. PW-2 has also confirmed the suggestion given to him in question no.140 that machine and accompanying vacuum pump that appears in video recorded by him and tendered in evidence is in fact defendants' machines and was present in the premises at the time of video recording. It was therefore, submitted Page 177 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the infringement made by the defendants using the vacuum pump in their machine stands proved with the deposition and cross examination of PW-
2.
iii) - Evidence of PW-3 7.39 Learned Senior Advocate Mr. Oza thereafter referred to the deposition and cross examination of PW-3 Desraj Ram Narayan at Exh.81 by referring to paragraph nos.4,5,7,13 to 17 of the affidavit wherein PW-3 has stated that there were 400 diamond scanning machines at the defendants' premises when he was working there which were commonly known as galaxy machines and vacuum pump is part of such machines in detachable form. PW-3 has also stated Page 178 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in paragraph no.13 to 17 that he put on glasses due to poor eye sight and PW-4 gave camera enabled spectacles of the same size and style to PW-3 and he has recorded the video using camera enabled spectacles given to him by PW-4. 7.40 Reference was made to the cross examination of PW-3 more particularly, question no.61 to submit that it contains admission that vacuum pumps were important as in its absence scanning diamonds will not produce a clear image. It is also stated in answer by PW-3 that he was informed by the supervisor working in the defendants' premises that vacuum pump is required in order to get clear images after scanning a diamond and Page 179 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants used to detach vacuum pump during the inspection conducted at the defendants premises when PW-3 was working from May 2017 till October 2018. In answer to question nos. 63, 68, 69, 73, 86, 87, 105 to 107, 111, 114, 129, PW-3 has corroborated his averments in the affidavit by stating that videos were recorded by him and vacuum pumps can be easily detached from the machines of the defendants during the raid conducted when PW-3 was working there. PW-3 has also confirmed in answer to question no.86 and 87 that screenshots taken from video recorded by him were produced along with affidavit of PW-4 are in fact from the videos recorded by him while he was at the defendants' premises. In answer to Page 180 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined question nos. 105, PW-3 confirmed that screenshots of videos produced by PW-4 along with the affidavit of evidence were in fact of the videos recorded by him. In answer to question nos. 106 and 107, PW-3 has shown from videos recorded by him as to where the vacuum pump is appearing in the video produced at Exhibit PW-4/1. PW-3 has also demonstrated in answer to question 111 about the defendants' conduct after the premises were inspected for the presence of galaxy machine and he has also given names of supervisor working at the defendants' premises in answer to question no.114. In answer to question no.129, PW-3 has shown that vacuum pump at the premises of defendant no.1 was never planted as Page 181 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined alleged as the workers working there were not even allowed to carry mobile phones inside the premises. 7.41 It was therefore, submitted that story put forth by the defendants that the plaintiffs planted the vacuum pump in the premises of the defendants is baseless inasmuch as the videos recorded through camera enabled spectacles by PW-3 stands proved in view of the affidavit and cross examination as the defendants failed to extract any contradictory facts from the same.
iv)- Evidence of PW-4 7.42 Thereafter reference was made to evidence of PW-4 Dinesh Shukla at Exh.82 who was working as investigator Page 182 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with Riverstone Secure Services LLP, to obtain proof of fact that the diamonds scanning machine used by defendant no.1 employ vacuum pumps to extract bubbles in the scanning process. It is stated by PW-4 that on 05.09.2018 he had a meeting with Mr.Desraj who was employed with defendant no.1 and Mr. Desraj informed PW-4 that he has been using duplicate scanning machine of defendant no.1 to scan rough diamonds. PW-4 provided camera enabled spectacles to PW-3 Desraj and familiarised him with the same so as to enable and record the usage of duplicate machines at defendant no.1's premises and to provide proof of usage of vacuum pumps in extracting air bubbles during the scanning process in the machine used by Page 183 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the defendant no.1. It is stated by PW- 4 that on three occasions i.e. on 06.09.2018, 07.09.2018 and 13.09.2018 PW-3 attempted to procure the videos and photographs and only on third occasion i.e on 13.09.2018 he managed successfully to record defendant no.1's machine including use of vacuum pump in the machine to remove gas bubbles while scanning rough diamonds. It is also stated in paragraph no.7 of the affidavit that PW-3 had returned the spectacles to PW-4 on 14.09.2018 and since then the said spectacles were in his custody. In paragraph no.8, it is further averred that PW-4 downloaded the video recording on his laptop having model namely Macbook Air, with Serial C02NI46BG085 in his possession Page 184 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and the same were transferred to DVD which is produced along with his evidence at Exhibit PW-4/1. Screenshots obtained from video are also placed on record along with the affidavit. 7.43 Reference was made to cross examination of PW-4 (Exhibit-82) with regard to question nos. 27, 28, 34, 65 to 69, 81, 83, 85, 95, 100, 101, 105, 129, 132, 133, 135, 138, 139, 142, 143, 146, 148, 149, 160, 172, 179, 180, 182, 190, 202 and 205. These questions were referred to submit that PW-4 has reiterated what is stated in affidavit and the defendants have failed to dislodge PW-4 in the exhaustive cross examination.
7.44 Reference was also made to Page 185 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined questions put to PW-4 in his re- examination by the counsel for the plaintiffs with regard to the draft affidavit on the basis of information provided by him containing basic narration of facts explaining his side of story of how the vacuum pumps are used by the defendants in their machine and how videos recorded by PW-2 and PW- 3 were procured. In question as to why the videos taken by PW-2 were not placed along with affidavit of evidence, it was answered by PW-4 that he was instructed by his office to re- verify the videos of working of the machine of the defendants and vacuum pump as was recorded by PW-3 so he approached PW-2 to re-verify the same and PW-2 made videos and gave it to him Page 186 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and same were handed over to the advocate of the plaintiffs when he was filing the affidavit. He has also stated in his re-examination to question nos.4 and 5 that he was contacted by a person with regard to his deposition of cross examination and was offered Rs.15 crores for not giving his evidence/testimony from mobile no.9999119472 which was recorded by him and downloaded on pen-drive which was produced as Exhibit PW-4/X3. 7.45 These answers were objected by the defendants' counsel as PW-4 in answer to question nos.203 and 204 in cross examination denied that anyone contacted or threatened him by the defendants. However, plaintiffs' counsel at the relevant time submitted Page 187 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that PW-4 has not contradicted his answers to question nos. 203 and 204 since the said questions specifically pertained to the defendants only whereas question put and answers given by PW-4 by way of verification do not relate to defendants and calls were received by PW-4 on 01.04.2019 whereas affidavit was filed before this Court on 26.03.2019 prior to few days of cross examination of PW-4 held on 25.04.2019. Exhibit PW-4/X3 was sealed by the Court Commissioner and was permitted to be retained by the plaintiffs' counsel as per the procedure agreed between the counsel of the parties. PW-4 further explained that only four clips are recorded in DVD exhibited at Exhibit PW-4/1. A pen- Page 188 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined drive was also placed on record at Exhibit PW-4/X4 which was objected by the defendants and ultimately the same was retained by the counsel for the plaintiffs as per the agreed procedure. PW-4 was further cross examined by the defendants and various suggestions were put to PW-4 which was negatived by him. 7.46 It was therefore, submitted by learned Senior Advocate Mr. Oza that evidence of PW-4 is uncontroverted and places on record the videos showing use of vacuum pump in the machines for scanning diamonds by the defendants which clearly proves infringement of suit patent.
v)- Evidence of PW-7 7.47 Reference was made to affidavit Page 189 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined filed by PW-7- Bhushan Dani Exh.83 who was employed with an independent investigation agency known as Screenfacts Services Private Limited as a private investigator. It was submitted that a private investigator was engaged by the plaintiffs to get rough diamonds scanned by defendant no.1 and to obtain proof that defendant no.1 is using selenium in scanning the rough diamonds. It is averred by PW-7 that law firm of the plaintiffs provided him with 10 rough diamonds on 16.05.2017 which he got tested by the laboratory at Jawaharlal Nehru University, New Delhi in order to ascertain if there is any selenium residue on the external surface of the said 10 rough diamonds. On 17.05.2017 Page 190 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined he obtained the report which showed that no selenium residue was found on the external surface of the rough diamonds. The said report is produced on record at Exhibit PW-7/1. Learned Senior Advocate Mr. Oza further referred to the affidavit of PW-7 to show that after scanning of the said diamonds done by defendant no.1, PW-7 again tested the said diamonds at the laboratory of Jawaharlal Nehru University for presence of selenium residue and as per report dated 27.05.2017 obtained from such university, it showed the presence of selenium residue on each diamond. The said report is placed by PW-7 as Exhibit PW-7/2. Learned Senior Advocate Mr. Oza referred to questions 19 to 21, Page 191 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 23, 25, 30, 31, 38, 39, 41, 43 and 48 of the cross examination of PW-7 to submit that PW-7 has testified about obtaining the report prior to scanning of diamond by defendant no.1 to show absence of selenium on such diamonds and testing of such diamonds after scanning by defendant no.1 to show that there was existence of selenium on such diamonds. It was therefore, submitted that as per the evidence of PW-7, it is proved that defendant no.1 is using selenium for scanning of diamonds. 7.48 Referring to oral and documentary evidence on record it was submitted by learned Senior Advocate Mr. Oza that the plaintiffs have proved about infringement of the suit patent by leading cogent evidence as further Page 192 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined supported by report of the Court Commissioner.
7.49 It was submitted that in civil proceedings, a fact is said to be proved in law based on preponderance of possibilities and not on proof beyond reasonable doubt, reliance was placed on the following decisions:
i) In case of M. Siddiq (D) thr. L.Rs.
v. Mahant Suresh Das and Ors. reported in 2019(15) Scale 1, wherein it is held as under:
"506. The court in a civil trial applies a standard of proof governed by a preponderance of probabilities. This standard is also described sometimes as a balance of probability or the preponderance of the evidence.
"Phipson on Evidence"
formulates the standard
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undefined
succinctly: If therefore, the evidence is such that the court can say "we think it more probable than not", the burden is discharged, but if the probabilities are equal, it is not. 114 In Miller v. Minister of Pensions (1947) 2 ALL ER 372, Lord Denning, ] (as the Master of Rolls then was) defined the doctrine of the balance or preponderance of probabilities in the following terms:
(1)... It need not reach certainty, but it must carry a high degree of probability. Proof beyond reasonable doubt does not mean proof beyond the shadow of doubt. The law would fail to protect the community if it admitted fanciful possibilities to deflect the course of justice. If the evidence is so strong against a man as to leave only a remote possibility in his favour which can be dismissed with the sentence, "of course it is possible, but not in the least probable" the case is proved beyond reasonable doubt, but nothing short of that will suffice.
(Emphasis supplied) The law recognises that within the standard of preponderance Page 194 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of probabilities, there could be different degrees of probability. This was succinctly summarized by Denning, LJ in Bater v. Bater [1951] P. 35, where he formulated the principle thus:
So also in civil cases, the case must be proved by a preponderance of probability, but there may be degrees of probability within that standard. The degree depends on that subject matter.
(Emphasis supplied) The definition of the expression 'proved' in Section 3 of the Evidence Act is the following terms "Proved".-A fact is said to be proved when, after considering the matters before it, the Court either believes it to exist, or considers its existence so probable that a prudent man ought, under the circumstances of the particular case, to act upon the supposition that it exists.
Proof of a fact depends upon the probability of its existence. The finding of the court must be based on :
A. The test of a prudent Page 195 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
person, who acts under the supposition that a fact exists;
and
B. In the context and
circumstances of a particular case.
Analysing this, Y V Chandrachud J (as the learned Chief Justice then was) in Dr. NG Dastane v. S Dastane MANU/SC/0330/1975 :
(1975) 2 SCC 326 held:
The belief regarding the existence of a fact may thus be founded on a balance of probabilities. A prudent man faced with conflicting probabilities concerning a fact-situation will act on the supposition that the fact exists, if on weighing the various probabilities he finds that the preponderance is in favour of the existence of the particular fact. As a prudent man, so the court applies this test for finding whether a fact in issue can be said to be proved. The first step in this process is to fix the probabilities, the second to weigh them, though the two may often intermingle. The impossible is weeded out at the first stage, the improbable at the second. Within the wide range of probabilities the Page 196 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined court has often a difficult choice to make but it is this choice which ultimately determines where the preponderance of probabilities lies. Important issues like those which affect the status of parties demand a closer scrutiny than those like the loan on a promissory note: "the nature and gravity of an issue necessarily determines the manner of attaining reasonable satisfaction of the truth of the issue [Per Dixon, J. in Wright v. Wright, (1948) 77 CLR 191, 210] "; or as said by Lord Denning, "the degree of probability depends on the subject-matter. In proportion as the offence is grave, so ought the proof to be clear [Blyth v. Blyth, (1966) 1 AER 524, 536] ". But whether the issue is one of cruelty or of a loan on a pronote, the test to apply is whether on a preponderance of probabilities the relevant fact is proved. In civil cases this, normally, is the standard of proof to apply for finding whether the burden of proof is discharged.
(Emphasis supplied) The Court recognised that within the standard of preponderance of probabilities, the degree of probability is Page 197 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined based on the subject matter involved.
In State of UP v. Krishna Gopal MANU/SC/0506/1988 : (1988) 4 SCC 302, this Court observed:
26. The concepts of probability, and the degrees of it, cannot obviously be expressed in terms of units to be mathematically enumerated as to how many of such units constitute proof beyond reasonable doubt. There is an unmistakable subjective element in the evaluation of the degrees of probability and the quantum of proof. Forensic probability must, in the last analysis, rest on a robust common sense and, ultimately, on the trained intuitions of the Judge.(Emphasis supplied)"
ii) In case of Syed Akbar v. State of Karnataka reported in AIR 1979 SC 4548, wherein Hon'ble Apex Court held as under:
"27. In our opinion, for reasons that follow, the first line of approach which tends to Page 198 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined give the maxim a larger effect than that of a merely permissive inference, by laying down that the application of the maxim shifts or casts even in the first instance, the burden on the defendant who in order to exculpate himself must rebut the presumption of negligence against him, cannot, as such, be invoked in the trial of criminal cases where the accused stands charged for causing injury or death by negligent or rash act. The primary reasons for non- application of this abstract doctrine of res ipsa loquitur to criminal trials are :
Firstly, in a criminal trial, the burden of proving everything essential to the establishment of the charge against the accused always rests on the prosecution, as every man is presumed to be- innocent. Until the contrary is proved, and criminality is never to be presumed subject to statutory exception. No such statutory exception has been made by requiring the drawing of a mandatory presumption of negligence against the accused where the accident "tells its own story" "of negligence on somebody. Secondly; there is a marked difference as to the Page 199 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined effect of evidence, viz. the proof in civil and criminal proceedings. In civil proceedings, a mere preponderance of probability is sufficient, and the defendant is not necessarily entitled to the benefit of every reasonable doubt but in criminal proceeding the presumption of guilt must amount to such a moral certainty as convinces the mind of the Court, as a reasonable man beyond all reasonable doubt. Where negligence is an essential ingredient of the offence, the negligence to be established by the prosecution must be culpable or gross and not the negligence merely based upon an error of judgment. As pointed out by Lord Atkm in Andrews v. Director of Public Prosecutions [1937] 2 All E.R. 552 : [1937] AC 576, "simple lack of care such as will constitute civil liability, is not enough;" for liability under the criminal law "a very high degree of negligence is required to be proved.
Probably, of all the epithets that can be applied, 'reckless' most nearly covers the case."Page 200 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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iii) In case of R.V.E. Venkatachala Gounder v. Arulmigu Viswesaraswami and V.P. Temple and others reported in AIR 2003 SC 4548, wherein Hon'ble Apex Court held as under:
"28. Whether a civil or a criminal case, the anvil for testing of 'proved', 'disproved' and 'not proved', as defined in Section 3 of the Indian Evidence Act, 1872 is one and the same. A fact is said to be 'proved' when, if considering the matters before it, the Court either believes it to exist, or considers its existence so probable that a prudent man ought, under the circumstances of a particular case, to act upon the supposition that it exists. It is the evaluation of the result drawn by applicability of the rule, which makes the difference. "The probative effects of evidence in civil and criminal cases are not however always the same and it has been laid down that a fact may be Regarded as proved for purposes of a civil suit, though the evidence may not be Page 201 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined considered sufficient for a conviction in a criminal case. BEST says: There is a strong and marked difference as to the effect of evidence in civil and criminal proceedings. In the former a mere preponderance of probability, due regard being had to the burden of proof, is a sufficient basis of decision:
but in the latter, especially when the offence charged amounts to treason or felony, a much higher degree of assurance is required. (BEST, Section
95). While civil cases may be proved by a mere preponderance of evidence, in criminal cases the prosecution must prove the charge beyond reasonable doubt." (See Sarkar on Evidence, 15th Edition, pp.58-
59) In the words of Denning LJ Bater v. B,1950 2 All ER
458."It is true that by our law there is a higher standard of proof in criminal cases then in civil cases, but this is subject to the qualification that there is no absolute standard in either case. In criminal cases the charge must be proved beyond reasonable doubt, but there may be degrees of proof within that standard.
So also in civil cases there may be degrees of probability."Agreeing with this Page 202 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined statement of law,Hodson, LJ said "Just as in civil cases the balance of probability may be more readily fitted in one case than in another, so in criminal cases proof beyond reasonable doubt may more readily be attained in some cases than in others."(Hornal v. Neuberger P.Ltd., 1956 3 All ER 970.
30. In the present case, the trial Court and the first appellate Court have noted that the plaintiff has not been able to produce any deed of title directly lending support to his claim for title and at the same time the defendant too has no proof of his title much less even an insignia of title.
Being a civil case, the plaintiff cannot be expected to proof his title beyond any reasonable doubt; a high degree of probability lending assurance of the availability of title with him would be enough to shift the onus on the defendant and if the defendant does not succeed in shifting back the onus, the plaintiffs burden of proof can safely be deemed to have been discharged. In the opinion of the two Courts below, the plaintiff had succeeded in shifting the onus on the defendant and, Page 203 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined therefore, the burden of proof which lay on the plaintiff had stood discharged. The High Court, in exercise of its limited jurisdiction under Section 100 of CPC, ought not to have entered into the evaluation of evidence afresh. The High Court has interfered with a pure and simple finding of fact based on appreciation of oral and documentary evidence which the High Court ought not to have done."
7.50 In support of submission that as per section 58 of the Indian Evidence Act, 1872 facts admitted need not be proved, reliance was placed on the following decisions:
i) In case of Gautam Sarup v. Leela Jetly and others reported in (2008) 7 SCC 85, wherein Hon'ble Apex Court held as under:Page 204 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "13. An admission made in a pleading is not to be treated in the same manner as an admission in a document. An admission made by a party to the lis is admissible against him proprio vigore.
xxx
15. A thing admitted in view of Section 58 of the Indian Evidence Act need not be proved. Order VIII Rule 5 of the Code of Civil Procedure provides that even a vague or evasive denial may be treated to be an admission in which event the court may pass a decree in favour of the plaintiff. Relying on or on the basis thereof a suit, having regard to the provisions of Order XII Rule 6 of the Code of Civil Procedure may also be decreed on admission. It is one thing to say that without resiling from an admission, it would be permissible to explain under what circumstances the same had been made or it was made under a mistaken belief or to clarify one's stand inter alia' in regard to the extent or effect of such admission, but it is another thing to say that a person can be permitted to totally resile therefrom. Page 205 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined The decisions of this Court unfortunately in this regard had not been uniform. We would notice a few of them.
"19. Hiralal (supra) has been recently noticed by this Court in Sangramsinh P. Gaekwar and Ors.v. Shantadevi P. Gaekwad (Dead) through LRs. and Ors.
MANU/SC/0052/2005:AIR2005SC809, wherein it is stated:...
xxx
216. In Nagindas Ramdas v.
Dalpatram Ichharam this Court held:
... admissions if true and clear, are by far the best proof of the facts admitted. Admissions in pleadings or judicial admissions, admissible under Section 58 of the Evidence Act, made by the parties or their agents at or before the hearing of the case, stand on a higher footing than evidentiary admissions. The former class of admissions are fully binding on the party that makes them and constitute a waiver of proof. They by themselves can be made the foundation of the rights of the parties. On the other hand, evidentiary admissions which Page 206 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are receivable at the trial as evidence, are by themselves, not conclusive. They can be shown to be wrong."
ii) In case of Nagindas Ramdas v.
Dalpatram Ichharam and others reported in AIR 1974 SC 471, wherein Hon'ble Apex Court held as under:
"27. From a conspectus of the cases cited at the bar, the principle that emerges is, that if at the time of the passing of the decree, there was some material before the Court, on the basis of which, the Court could be prima facie satisfied, about the existence of a statutory ground for eviction, it will be presumed that the Court was so satisfied and the decree for eviction, though apparently passed on the basis of a compromise, would be valid. Such material may take the shape either of evidence recorded or produced in the case, or, it may partly or wholly be in the shape of an express or implied admission made in the compromise agreement, itself. Admissions, Page 207 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined if true and clear, are by far the best proof of the facts admitted. Admissions in pleadings or judicial admissions, admissible under Section 58 of the Evidence Act, made by the parties or their agents at or before the hearing of the case, stand on a higher footing than evidentiary admissions. The former class of admissions are fully binding on the party that makes them and constitute a waiver of proof. They by themselves can be made the foundation of the rights of the parties On the other hand, evidentiary admissions which are receivable at the trial as evidence, are by themselves, not conclusive. They can be shown to be wrong."
iii) In case of Kana Dey v. Dipak Dasgupta reported in (2002) ILR 1 Cal 372, wherein it is observed as under:
"16. It is a cardinal principle of law of evidence that admitted facts need not be proved (vide Section 58 of the Evidence Act). Since the substituted Defendants (the present Respondents) are bound Page 208 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the admission made by their predecessor-in- interest in his pleadings, it will be taken as admitted fact that they inducted one M/s. Print Art into the suit premises as a sub-tenant under them and this will not require any further proof. In this connection Mr. Deb has canvassed his second ground why such admission, if at all, will not bind his clients. He contends that it is a settled principle of law that admission in the pleadings cannot be dissected and if it is to be taken, it is to be taken in its entirety including any condition which accompanies such admission. According to Mr. Deb, in the original W.S. filed by the predecessor of the present Defendants-Respondents it has been averred that such induction of a sub- tenant was done by the Defendant to the knowledge and with the consent of the Plaintiff and, therefore, if the admission- part is to be accepted, the second part indicating the giving of consent by the Plaintiff should also go hand- in-hand therewith. In support of this contention Mr. Deb has referred to a host of reported decisions, namely, M.M. Assabhoy v. M: Haridas AIR 1915 Page 209 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined P.C. 2, Union of India v. H.C. Goel MANU/SC/0271/1963: AIR 1964 S.C. 364; Sunil Chandra Ghosh v Hemendra Kr. Deb MANU/WB/0061/1985 AIR 1985 Cal. 233, F.C. Murlidhar v. Juggilal MANU/WB/0132/1955: AIR 1955 Cal. 465, Ziaul Haque (Md.) v. Calcutta Vyapar Pratisthan MANU/WB/0119/1966: AIR 1966 Cal. 605. in all these rulings more or less the same principle has been enunciated, namely, that a pleading cannot be dissected and if a written statement contains an admission of certain facts which are favourable to the Plaintiff, and at the same time it also contains a denial of Other facts or an assertion of other facts which are unfavourable to him, the Plaintiff must, if he wants to avail himself of the admission, take both the sets of facts together equally Mr. Deb contends that since in the original W.S. filed by the predecessor of the present Defendant simultaneously two sets of facts were averred, namely, that the induction of the sub-tenant had been done by the Defendant subject to the knowledge and approval of the Plaintiff, the Plaintiff cannot be permitted to utilise the first part only to his Page 210 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined advantage turning a blind eye to the second part."
iv) In case of Naveen Garg v. Rajrani Garg & anr. (judgment dated August 19, 2015 in RFA(OS) 163/2014.
v) In case of Bharwada Bhoginbhai Hirjibhai v. State of Gujarat reported in (1983) 3 Supreme Court Cases 217, wherein Hon'ble Supreme Court held as under:
"9. In the Indian setting, refusal to act on the testimony of a victim of sexual assault in the absence of corroboration as a rule, is adding insult to injury. Why should the evidence of the girl or the woman who complains of rape or sexual molestation be viewed with the aid of spectacles fitted with lenses tinged with doubt, disbelief or suspicion- To do so is to justify the charge of male chauvinism in a male- dominated society. We must analyze the argument in sup-
port of the need for Page 211 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
corroboration and subject it to relentless and remorseless cross-examination. And we must do so with a logical, and not an opinionated, eye in the light of probabilities with our feet firmly planted on the soil of India and with our eyes focused on the Indian horizon. We must not be swept off the feet by the approach made in the western world Which has its own social milieu, its own social mores, its own permissive values, and its own code of life. Corroboration may be considered essential to establish a sexual offence in the back-drop of the social ecology of the western world. It is wholly unnecessary to import the said concept on a turn-key basis and to transplant it on the Indian soil regardless of the altogether different atmosphere, attitudes, mores, responses of the Indian society, and its profile. The identities of the two worlds are different. The solution of problems cannot, therefore, be identical. It is conceivable in the western society that a female may level false accusation as regards sexual molestation against a male for several reasons such as:Page 212 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined [(1) The female may be a 'gold digger' and may well have an economic motive - to extract money by holding out the gun of prosecution or public exposure.] [(2) She may be suffering from psychological neurosis and may seek an escape from the neurotic prison by phantasizing or imagining a situation where she is desired, wanted, and chased by males.] [(3) She may want to wreak vengeance on the male for real or imaginary wrongs. She may have a grudge against a particular male, or males in general, and may have the design to square the account.] [(4) She may have been induced to do so in consideration of economic rewards, by a person interested in placing the accused in a compromising or embarrassing position, on account of personal or political vendetta.] Page 213 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined [(5) She may do. so to gain notoriety or publicity or to appease her own ego or to satisfy her feeling of self-importance in the context of her inferiority complex.] [(6) She may do so on account of jealousy.] [(7) She may do so to win sympathy of others.] [(8) She may do so upon being re- pulsed.]
10. By and large these factors are not relevant to India, and the Indian conditions. Without the fear of making too wide a statement, or of overstating the case, it can be said that rarely will a girl or a woman in India make false allegations of sexual assault on account of any such factor as has been just enlisted. The statement is generally true in the context of the urban as also rural society. It is also by and large true in the context of the sophisticated society. Only very rarely can one conceivably come across an exception or two and that too possibly from Page 214 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined amongst the urban cities.
Because (1) A girl or a woman in the tradition bound non- permissive society of India would be extremely reluctant even to admit that any incident which is likely to reflect on her chastity had ever occurred, (2) She would be conscious of the danger of being ostracized by the society or being looked down by the society including by her own family members, relatives, friends, and neighbours, (3) She would have to brave the whole world. (4) She would face the risk of losing the love and respect of her own husband and near relatives, and of her matrimonial home and happiness being shattered. (5) If she is unmarried, she would apprehend that it would be difficult to secure an alliance with a suitable match from a respectable or an acceptable family. (6) It would almost inevitably and almost invariably result in mental torture and suffering to here self. (7) The fear of being taunted by others will always haunt her. (8) She would feel extremely embarrassed in relating the incident to others being overpowered by a feeling of shame on account of the Page 215 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined upbringing in a tradition-bound society where by and large sex is taboo. (9) The natural inclination would be to avoid giving publicity to the incident lest the family name and family honour is brought into controversy. (10) The parents of an unmarried girl as also the husband and members of the husband's family of a married woman, would also more often than not, want to avoid publicity on account of the fear of social stigma on the family name and family honour. (11) The fear of the victim herself being considered to be promiscuous or in some way responsible for the incident regardless of her innocence. (12) The reluctance to face interrogation by the investigating agency, to face the Court, to face the cross- examination by Counsel for the culprit, and the risk of being disbelieved, act as a deterrent.
11. In view of these factors the victims and their relatives are not too keen to bring the culprit to books. And when in the face of these factors the crime is brought to light there is a built-in assurance that the charge is genuine rather Page 216 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined than fabricated. On principle the evidence of a victim of sexual assault stands on par with evidence of an injured witness. Just as a witness who has sustained an injury (which is not shown or believed to be self-infected) is the best witness in the sense that he is least likely to exculpate the real offender, the evidence of a victim of a sex-offence is entitled to great weight, absence of corroboration notwithstanding. - And while corroboration in the form of eye witness account of an independent witness may often be forthcoming in physical assault cases, such evidence cannot be expected in sex offences, having regard to the very nature of the offence. It would therefore be adding insult to injury to insist on corroboration drawing inspiration from the rules devised by the Courts in the western world (obeisance to which has perhaps become a habit presumably on account of the colonial hangover). We are therefore of the opinion that if the evidence of the victim does not suffer from any basic infirmity, and the 'probabilities-factor' does not render it unworthy of credence, Page 217 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as a general rule, there is no reason to insist on corroboration except from the medical evidence, where, having regard to the circumstances of the case, medical evidence can be expected to be forthcoming, subject to the following qualification : Corroboration may be insisted upon when a woman having attained majority is found in a compromising position and there is a likelihood of her having levelled such an accusation on account of the instinct of self-preservation. Or when the 'probabilities-factor' is found to be out of tune."
7.51 It was submitted that when the evidence is at variance with pleadings, it ought not to be looked into by the Court. Reliance was placed on the following decisions:
i) In case of Kashi Nath (Dead) through Lrs. v. Jaganath reported in (2003) 8 SCC 740, wherein Hon'ble Apex Page 218 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court held as under:
"17. From the judgments of the Trial Court, First Appellate Court and the High Court it is clear that there was no consistency so far as the claim regarding the adoption is concerned particularly as to who and at what point of time it was made. The High Court has taken great pains to extract the relevant variations to indicate as to how it cut at the very root of plaintiff's claim. As noted by the Privy Council in Siddiqui Mohammad Shah v. Mst. Saran and Ors. MANU/PR/0021/1929, and Trojan and Co. v.RM. N.N. NagappaChetiar MANU/SC/ 0005/ 1953 : [1953]4 SCR 789 when the evidence is not in line with the pleadings and is at variance with it and as in this case in virtual self contradiction, adverse inference has to be drawn and the evidence cannot be looked into or relied upon.
Additionally, as rightly submitted the conclusion whether there was adoption is essentially one of fact merely depending upon pure appreciation of evidence on record. This position has been stated in several decisions of Page 219 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined this Court; e.g., Rajendra Kumar v. Kalyan (dead) by Lrs. MANU/SC/0474/ 2000 :AIR20005 SC 3335 and Raushan Devi v. Ramji Sah and Ors. MANU/SC/1390/2001: (2002)10 SCC 205. Consequently, no exception could be taken to the well-merited findings concurrently recorded by the courts below, with which the High Court also rightly declined to interfere on the facts and circumstances of this case."
ii) In case of Kalyan Singh Chouhan v. C.P. Joshi reported in (2011) 11 SCC 786, wherein Hon'ble Apex Court held as under:
"22. In Kashi Nath (Dead) through L.Rs. v. Jaganath MANU/SC/0882/2003 : (2003) 8 SCC 740, this Court held that where the evidence is not in line with the pleadings and is at variance with it, the said evidence cannot be looked into or relied upon. While deciding the said case, this Court placed a very heavy reliance on the judgment of the Privy Council in Siddik Mohd. Shah v.Page 220 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Saran MANU/PR/0021/1929: AIR 1930 PC 57.
xxx
24. Therefore, in view of the above, it is evident that the party to the election petition must plead the material fact and substantiate its averment by adducing sufficient evidence. The court cannot travel beyond the pleadings and the issue cannot be framed unless there are pleadings to raise the controversy on a particular fact or law. It is, therefore, not permissible for the court to allow the party to lead evidence which is not in the line of the pleadings. Even if the evidence is led that is just to be ignored as the same cannot be taken into consideration."
7.52 It was further submitted that the written statement was not signed by a duly constituted power of attorney holder and therefore, it is liable to be discarded. Reliance was placed on the following decisions: Page 221 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
i) In case of State Bank of Travancore v. Kingston Computers (I) P. Ltd reported in (2011) 11 SCC 524, wherein Hon'ble Apex Court held as under:
"5. The Division Bench of the High Court allowed the appeal of the company, reversed the judgment of the trial Court and decreed the suit by relying upon the letter of authority issued by Shri Raj K. Shukla in favour of Shri Ashok K. Shukla. Shri J.L. Gupta, learned senior counsel appearing for the Appellant assailed the impugned judgment and argued that the High Court committed serious error by reversing the finding recorded by the trial Court on issue No. 1 totally ignoring that the Respondent had not produced any evidence to prove that Shri Ashok K. Shukla was a Director of the company and he had been authorised by the company to file the suit.
Learned senior counsel
extensively referred to the
pleadings of the parties
including the rejoinder filed on behalf of the company before Page 222 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the trial Court, evidence of Shri Ashok K. Shukla and argued that the suit could not have been decreed because no evidence was produced on behalf of the company to prove that Shri Ashok K. Shukla was authorised to file the suit. Shri Gupta pointed out that resolutions dated 14.2.2001 and 19.4.2001 passed by the Board of Directors of the company had bearing only on the issue of operating the bank account and not on the issue of filing the suit and the Division Bench of the High Court gravely erred in relying upon those resolutions and the authority letter issued by Shri Raj K. Shukla in favour of Shri Ashok K. Shukla. xxx
8. In the written statement filed on behalf of the Appellant, an objection was taken to the maintainability of the suit on the ground that the plaint has not been signed, verified and filed by a competent and authorised representative on behalf of the company and that there is neither any valid Board resolution nor any valid authorisation on behalf of the company nor a copy of the resolution has been filed along Page 223 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with the suit. It was also pleaded that the person who has instituted the suit on behalf of the company is not shown to be a power of attorney holder nor a copy of such power of attorney has been filed with the plaint and the authorisation letter purported to have been given by the so- called Chief Executive Officer is not a valid authorisation. xxx
10. In his evidence, which was filed in the form of an affidavit, Shri Ashok K. Shukla claimed that he is one of the Directors of the company and has been authorised by Shri Raj K. Shukla vide authority letter dated 2.1.2003 to file the suit. In cross- examination, Shri Ashok K. Shukla claimed that he was the only Director in the company and that the Board of Directors of the company had passed resolution authorising Shri Raj K. Shukla to take decisions independently. He also claimed that he had been given power of attorney on behalf of the company, which was filed on record. He however admitted that no resolution was passed by the Board of Directors authorising him to sign, verify Page 224 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and file the plaint.
11. The trial Court analyzed the pleadings and evaluated the evidence produced by the parties, referred to authority letter dated 2.1.2003 issued by Shri Raj K. Shukla in favour of Shri Ashok K. Shukla and observed:
"A perusal of the aforesaid authority letter shows that Shri Raj K. Shukla in his capacity as CEO of the Plaintiff company had authorised Shri A.K. Shukla to sign, verify and file the present suit. Apart from this authority letter, the Plaintiff company has not filed on record any board resolution authorising Sh. A.K. Shukla to sign, verify and institute the present suit. The Plaintiff has also not filed on record its memorandum/articles to show that Shri Raj Kumar Shukla had been vested with the powers or had been given a general power of attorney on behalf of the company to sign, verify and institute the suit on behalf of the company. The present suit, therefore, has been filed merely on the strength of Page 225 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the authority letter Ex.PW1/A...."
12. The trial Court then referred to the judgment of the Delhi High Court in M/s. Nibro Limited v. National Insurance Company Limited MANU/DE/ 0138/1991 : AIR 1991 Delhi 25, Shubh Shanti Services Limited v. Manjula S. Agarwalla and Ors. MANU/SC/0387/2005 : (2005) 5 SCC 30, Delhi High Court (original side) Rules, 1967 and proceeded to observe:
"... As already stated, it has not been averred in the plaint nor sought to be proved that any resolution had been passed by the Board of Directors of the Plaintiff company authorising Shri A.K. Shukla to sign, verify and institute the suit. It has also not been averred that the memorandum/articles of the Plaintiff company give any right to Shri A.K. Shukla to sign, verify and institute a suit on behalf of the Plaintiff company. It, therefore, follows that the plaint has been instituted by Shri A.K. Shukla only on the authority of Sh. Raj K. Shukla, CEO of the Page 226 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Plaintiff company. Such an authority is not recognized under law and, therefore, I held that the plaint has not been instituted by an authorised person. Issue No. 1 is accordingly, decided against the Plaintiff and in favour of the Defendants."
13. The Division Bench of the High Court did take cognizance of the fact that the company had not summoned any witness from the office of the Registrar of Company to prove that Shri Ashok K. Shukla was a Director of the company and that the minute book of the company had not been produced to prove the appointment of Shri Ashok K. Shukla as a Director, but reversed the finding of the trial Court on issue No. 1 on the basis of the authority letter issued by Shri Raj K. Shukla and resolutions dated 14.2.2001 and 19.4.2001, by which the Board of Directors of the company had authorised some persons to operate the bank account.
14. In our view, the judgment under challenge is liable to be set aside because the Respondent had not produced any evidence to prove that Shri Page 227 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Ashok K. Shukla was appointed as a Director of the company and a resolution was passed by the Board of Directors of the company to file suit against the Appellant and authorised Shri Ashok K. Shukla to do so. The letter of authority issued by Shri Raj K. Shukla, who described himself as the Chief Executive Officer of the company, was nothing but a scrap of paper because no resolution was passed by the Board of Directors delegating its powers to Shri Raj K. Shukla to authorise another person to file suit on behalf of the company.
15. In the result, the appeal is allowed, the impugned judgment is set aside and the one passed by the trial Court dismissing the suit of the Respondent is restored. The Appellant shall be free to withdraw the amount deposited by it in the trial Court in terms of this Court's order dated 24.7.2009."
7.53 It was submitted that the evidence obtained through whatever means or sources is admissible, if the Page 228 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined evidence is relevant. Reliance was placed on the following decisions:
i) In case of R.M. Malkani v. State of Maharashtra reported in AIR 1973 SC 157, wherein Hon'ble Apex Court held as under:
"23. Tape recorded conversation is admissible provided first the conversation is relevant to the matters in issue; secondly, there is identification of the voice: and, thirdly, the accuracy of the tape recorded conversation is proved by eliminating the possibility of erasing the tape record. A contemporaneous tape record of a relevant conversation is a relevant fact and is admissible Under Section 8 of the Evidence Act. It is res gestate. It is also comparable to a photograph of a relevant incident. The tape recorded conversation is therefore a relevant fact and is admissible Under Section 7 of the Evidence Act. The conversation between Dr. Motwani and the appellant in Page 229 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the present case is relevant to the matter in issue. There is no dispute about the identification of the voices. There is no controversy about any portion of the conversation being erased or mutilated. The appellant was given full opportunity to test the genuineness of the tape recorded conversation. The tape recorded conversation is admissible in evidence. xxx
25. This Court in Magraj Patodia v. R. K. Birla and Ors. MANU/SC/0322/1970 :[19712SCR118 dealt with the admissibility in evidence of two files containing numerous documents produced on behalf of the election petitioner. Those files contained correspondence relating to the election of respondent No. 1. The correspondence was between respondent No. 1 the elected candidate and various other persons. The witness who produced the file said that respondent No. 1 handed over the file to him for safe custody. The candidate had apprehended raid at his residence in connection with the evasion of taxes or duties. The version of the witness as Page 230 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to how he came to know about the file was not believed by this Court. This Court said that a document which was procured by improper or even by illegal means could not bar its admissibility provided its relevance and genuineness were proved.
xxx
30. It was said that the admissibility of the tape recorded evidence offended Articles 20(3) and 21 of the Constitution. The submission was that the manner of acquiring the tape recorded conversation was not procedure established by law and the appellant was incriminated. The appellant's conversation was voluntary. There was no compulsion. The attaching of the tape recording instrument was unknown to the appellant. That fact does not render the evidence of conversation inadmissible. The appellant's conversation was not extracted under duress or compulsion. If the conversation was recorded on the tape it was a mechanical contrivance to play the role of an - eavesdropper. In R. V. Leatham [1861] 8 Cox. C.C. 498 it was said "It matters not how you get it if you steal it Page 231 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined even, it would be admissible in evidence". As long as it is not tainted by an inadmissible confession of guilt evidence even if it is illegally obtained is admissible."
ii) In case of Yashwant Sinha and Ors. v. Central Bureau of Investigation and others reported in AIR 2019 SC 1802, wherein Hon'ble Apex Court held as under:
"7. An issue has been raised by the learned Attorney with regard to the manner in which the three documents in question had been procured and placed before the Court. In this regard, as already noticed, the documents have been published in The Hindu' newspaper on different dates. That apart, even assuming that the documents have not been procured in a proper manner should the same be shut out of consideration by the Court? In Pooran Mal v. Director of Inspection (Investigation) of Income-Tax, New Delhi MANU/SC/0055/1973 : AIR 1974 SC Page 232 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 348 this Court has taken the view that the "test of admissibility of evidence lies in its relevancy, unless there is an express or necessarily implied prohibition in the Constitution or other law evidence obtained as a result of illegal search or seizure is not liable to be shut out."
7.54 Reliance was placed on the following decisions with regard to evidentiary value of Court Commissioner's report:
i) In case of Suo Motu v. State of Gujarat and ors. reported in MANU/GJ/0785/2020, wherein this Court held as under:
"59. The Supreme Court also observed that it is for this reason that the Supreme Court has evolved the practice of appointing commissions for the purpose of gathering facts and data in regard to a complaint Page 233 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of breach of a fundamental right made on behalf of the weaker sections of the society. The report of the commissioner would furnish prima facie evidence of the facts and data gathered by the commissioner and that is why the Supreme Court is careful to appoint a responsible person as commissioner to make an enquiry or investigation into the facts relating to the complaint. The Court also observed that it is interesting to note that in the past the Supreme Court has appointed sometime a District Magistrate, sometime a District Judge, some time a Professor of Law, sometime a Journalist, sometime an officer in the Court and sometime an Advocate practising in the Court for the purpose of carrying out an enquiry or investigation and making report to the court because the commissioner appointed by it must be a responsible person, who enjoys the confidence of the court and who is expected to carry out his assignment objectively and impartially without any predilection or prejudice. Once the report of the commissioner is received, copies of it would be supplied to the parties so that either party if it wants Page 234 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to dispute any of the facts or data stated in the report may do so by filing an affidavit and the court can then consider the report of the commissioner and the affidavits which may have been filed and proceed to adjudicate upon the issue arising in the writ petition. It would be entirely for the court to consider what weight to attach to the facts and data stated in the report of the commissioner and to what extent to act upon such facts and data. But it would not be correct to say that the report of the commissioner has no evidentiary value at all, since the statements made in it are not tested by cross-
examination. To accept this
contention would be to
introduce the adversarial
procedure in a proceeding where in the given situation, it is totally inapposite. It may be said that the jurisdiction of this Court under Art. 226 of the Constitution of India is similar as that of the Supreme Court under Art. 32 of the Constitution of India. The Supreme Court in para 15 of the judgment in the case of Bandhu Mukti Morcha (supra) said that what it had said in regard to the exercise of jurisdiction by Page 235 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Supreme Court under Art. 32 must apply equally in relation to the exercise of jurisdiction by the High Court under Art. 226 of the Constitution for the latter jurisdiction is also a new constitutional jurisdiction and it is conferred in the same wide terms as the jurisdiction under Art. 32 and the same powers can and must therefore be exercised by the High Court while exercising jurisdiction under Art. 226. The Supreme Court also said that in fact, the jurisdiction of the High Court under Art. 226 is much wider, because the High Courts are required to exercise this jurisdiction not only for enforcement of a fundamental right but also for enforcement of any legal right and there are many rights conferred on the poor and the disadvantaged which are the creation of statute and they need to be enforced as urgently and vigorously as fundamental rights. In view of the aforesaid dictum of the Apex Court, it can hardly be disputed that in the exercise of the powers under Art. 226 of the Constitution this court in the matter of public interest litigation, like the present one, can appoint commissioner Page 236 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to make investigation and furnish the complete facts before this Court."
7.55 It was submitted that the report of the Commissioner and the evidence taken by the Court Commissioner constitute evidence under the Code of Civil Procedure, 1908 and ought to be considered by the Court. Reliance was placed on the decision in case of New Multan Timber Store and Ors. v. Rattan Chand Sood reported in 68(19970 DLT 680, wherein Delhi High Court held as under:
"(10) Since we are concerned with the construction of Order 26 Rules 9 and 10 Civil Procedure Code it would be just and proper to examine them in extenso. The same are in the following words:- @SUBPARA = 9 Commissions to make local investigations. @SUBPARA = In any suit in which the Court deems a local investigation to be requisite or proper for the Page 237 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined purpose of elucidating any matter in dispute, or of ascertaining the market value of any property, or the amount of any mesne profits or damages or annual net profits, the Court may issue a commission to such person as it thinks fit directing him to make such investigation and to report thereon to the Court; @SUBPARA = Provided that, where the State Government has made rules as to the persons to whom such commission shall be issued, the Court shall be bound by such rules. @SUBPARA = 10 Procedure of Commissioner. @SUBPARA = (1) The Commissioner, after such local inspection as he deems necessary and after reducing to writing the evidence taken by him, shall return such evidence together with his report in writing signed by him, to the Court. @SUBPARA = Report and depositions to be evidence in suit - (2) The report of the Commissioner and the evidence taken by him (but not the evidence without the report) shall be evidence in the suit and shall form part of the reports but the Court or, with the permission of the Court, any of the parties to the suit may examine the Commissioner personally in open Court Page 238 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined touching any of the matters referred to him or mentioned in his report, on as to his report, or as to the manner in which he has made the investigations. @SUBPARA = (3) ........... ".. @SUBPARA = It is abundantly clear from the relevant provisions of law cited above that the report of the Commissioner under Order 26, Rule 10 Civil Procedure Code is a legal evidence. Hence it was not at all necessary for the Court to examine the Commissioner for the purposes of proving the said report. No formal proof is needed to prove the report when the Commissioner has been appointed under Order 26 Rule 9 CPC. As per the provisions of Order 26 Rule 10 Civil Procedure Code the report can be read in evidence without any formal proof of the same, though it is true that the Court suo motu or at the instance of any of the parties may summon the Local Commissioner and examine him as a witness. The appellants herein filed objections against the report of the Local Commissioner. However, for the best reasons known to them they did not choose to summon the Local Commissioner as a witness and reconciled themselves with Page 239 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the report as it was. Thus if the Commissioner was not summoned and examined as a witness and as such no opportunity was given to the appellant to cross examine the Local Commission they can blame none but themselves for the impasse which they find themselves in. Thus the statute has put a handle in the hands of any of the parties through enactment of the provisions of Rule 10 of Order 26 CPC.
However, if they do not use the said handle they can blame none but themselves. Hence the appellants cannot be heard to say now that the report of the Local Commissioner cannot be acted upon since the Local Commissioner was not examined as a witness and they were not given any opportunity to cross examine him. A point very much akin to the point in hand arose before a Single Judge of the Andhra Pradesh High Court as MANU/AP/0079/1973 : AIR 1973 AP 168, Vemusetti Appayyamma v. Lakshman Sahu. The learned Single Judge tackled the said problem by observing : "The learned counsel for the appellant however, objects to the Commissioner's report being accepted and acted upon without its being marked and without Page 240 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Commissioner being examined. But under Order 26, R.9, Civil Procedure Code, for making a local inspection and to submit a report, the Commissioner is given the discretion to make a local inspection and record evidence if necessary and submit a report together with such evidence as he thinks fit.
Under sub-rule (2) of Rule 10 of Order 26, Civil Procedure Code, the report of the Commissioner and the evidence taken by him form part of the record. When the Rule lays down that it forms part of the record irrespective of whether it is marked or not, the Court is bound to take that evidence into consideration. The failure to mark it as a document on behalf of the parties does not exclude it from the record. Sub-rule (2), however, lays down that either the Court or any of the parties may examine the Commissioner but if the Commissioner is not examined, the report submitted by him does not cease to form part of the record. It is nowhere laid down that unless the Commissioner is examined and through him his report is marked as an exhibit, the report of the Commissioner Page 241 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined cannot be acted upon. That being so, the lower Appellate Court was right in considering the commissioner's report and in accepting the defendant's evidence and rejecting that of the plaintiff's witnesses in the light of that. The finding whether the plaintiff is in possession of the plaint schedule site or not is a finding of fact which is supported by the evidence on record and is binding on this Court in Second Appeal."
(11) The same view was reiterated by a learned Single Judge of this Court as reported in 1976 Raj LR 178 Harbhajan Singh v. Shakuntala Devi.....
"It is next contended that, in any event, the report and the material enclosed by the Commissioner with it could not be substantive evidence and at best could be utilised to corroborate other evidence on the question in controversy. This contention seems to be untenable because if the report of the Commissioner and the material enclosed with it constituted legal evidence, and I have held above that it did, I do not see how it could not be used as a substantive piece of evidence to base the Page 242 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined finding. The Authority had appointed the Commissioner to inspect the spot, to make an investigation and to submit a report and the Authority was entitled to accept the same and base its finding on such material."
(12) Admittedly the Commissioner Shri Ishwar Dass was appointed on March 4, 1976 by the learned Sub Judge at the instance of the appellants on their application dated January 9, 1970 moved by them. The commission was executed in the presence of both the parties. The report of the Commissioner dated September 13, 1970 bears the signatures of the appellants. Thus it does not lie in the mouth of the appellants to say that since the Commissioner was not examined hence the said report should not be taken into consideration. Non-examination of the Commissioner does not invalidate the said report. It is a legal evidence as per the provisions of Order 26 Rule 10(2) CPC. Furthermore, the appellants could have examined the Local Commissioner, if they wanted to do so, and they could have made a request to that effect to the learned Sub Judge Page 243 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined who could have granted their prayer under Order 26 Rule 10(2) CPC. However, for the best reasons known to them they did not avail of the said opportunity. Consequently this Court feels that this argument is not available to the learned counsel for the appellants."
7.56 It was submitted that as long as infringing goods are made with the same object in view, which is attained by the patented article, then a minor variation does not mean that there is no piracy and a person is guilty of infringement if he makes what is in substance the equivalent of the patented article and some trifling or unessential variation has to be ignored. Reliance was placed on the following decisions:
i) In case of Raj Prakash v. Mangat Ram Chowdhry and others reported in AIR 1978 Page 244 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Delhi 1, wherein Delhi High Court held as under :
"13) Sometimes people fall into error in construing specifications by relying too much on the title given to the specifications of the invention. It is settled law that the title of the specifications of an invention claimed does not control the actual claim. A misleading title similarly is of little consequence. It is on a proper construction of the specifications and the claims that the true nature of the invention claimed is to be determined and the patent granted has to be construed.
Rule 33 of the Indian Patents and Designs Rules, 1933, inter alia, lays down that the title should give a fair indication of the art or industry to which the invention relates. It should be brief, free from fancy expression. free from ambiguity and as precise and definite as possible but it need not go into the details of the invention itself. Thus, the rule itself indicates that the title of the specifications does not govern the Page 245 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined specifications or the claims. In Brereton and Another v.
Richardson, 1884 R.P.C. 165, Field, J. put the proposition rather succinctly and if we may be allowed the liberty to quote, " THEREFORE, as I said just now, let us sec what the plaintiffs' invention is.
The title is certainly
somewhat misleading. Mr.
Macrory did not put it as
anything serious, nor is it serious, because after all you must read the title by the means of the specification. The title is that it is for 'A new or improved tricycle. that is per se, as a machine. The complete specification and the provisional specification do not altogether agree with each other....At first that seemed to threaten a technical ground that they had claimed by their complete specification more than was covered by their provisional specification;
but, very fairly and very prudently, I think, the defendant did not proceed upon that, because, after all, the great object to both parties must be to Page 246 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined have their rights settled for the future, without reference to any question of that sort, that being a comparatively immaterial question..."
xxx
(19) Photography and its
various techniques are known to those interested in and indulging in this art for a long time. The various developments are well-
publicised in photographic magazines. Therefore, use of a particular type of film or camera or taking plurality of pictures on one film or in one frame is neither novel nor new. The technique of masking, super-imposing etc. are also well-known. Therefore, the trial Court fell in error in being confused by the defendants. who put up a case of cine-frames, leica frames, technique of photography etc. as defense to their infringement. The patent consisted, inter alia, in the novel idea mentioned in the statement of the counsel for the appellant recorded by us earlier. In the claims put forward by the plaintiff in the Patent Office the entire process was described. From this process the essential and Page 247 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the unessential parts have to be separated and the same stand separated in discerning and finding out the invention of the plaintiff, when we read his counsel's statement set out hereinabove. The patent in its entirety is, Therefore, upheld as valid.
xxx (22) It was urged on behalf of the defendants that although full films were got produced by him, these could be medially cut and used. In other words, the defendants had anticipated what has been claimed by the plaintiff as his invention. To establish this it had to be proved by the defendants that in some prior publication there is found information about the alleged invention more or less similar to what is claimed by the plaintiff. Mere possibility of such a thing being made is of no consequence. A new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers. The claim for anticipation has to be either by prior user or by prior publication. As was held in Martin and Biro Swan Ltd. v. H. Milwood Ltd., 1956 R.P.C. Page 248 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 125 by the House of Lords, the defendants must show that in some prior publication there is to be found information about the alleged invention:
"EQUAL for the purposes of practical utility to that given by the patent in suit. It is not enough, to use the familiar metaphor which has perhaps been run to death, to make a mosaic of prior publications and to say that thus the whole invention has been already disclosed. This is particularly the case where the invention is said to consist of a novel combination, or as is sometimes said, a new functional inter-relation of integers. ."
(23) The process of photography mentioned in the specifications and the claims, in our view unduly prolific, does not detract from the essence features of the plaintiff's invention of which, as has already been held by us, there is neither anticipation nor prior user.
xxx
25) The patented article or where there is a process then the process has to be compared Page 249 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with the infringing article or process to find out whether the patent has been infringed. This is the simplest way and indeed the only sure way to find out whether there is piracy. This is what was done in the hair-
pin case. above-referred lo, and Is. Indeed, always done. Unessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no piracy. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. Some trifling or unessential variation has to be ignored. There is a catena of authority in support of this view. We need not cite all those cases which were brought to our notice at the Bar. Suffice it to quote the words of Lord Denning, M. R. in Beecham Group Limited v. Bristol Laboratories Ltd. and another, 1967 (16) R.P.C. 406 :-
" THE evidence here shows that in making hetacillin in the United States the defendants use a principal part of the processes which Page 250 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are protected here by the English patents. The importation and sale here is prima facie an infringement. There is a further point. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. He cannot get out of it by some trifling or unessential variation........
On the evidence as it stands, there is ground for saying that hetacillin is medically equivalent to ampicillin. As soon as it is put into the human body, it does after an interval, by delayed action, have the same effect as ampicillin. In these circumstances, I think there is a prima facie case for saying there was an infringement. The process is so similar and the product so equivalent that it is in substance the same as ampicillin."
ii) In case of F. Hoffmann-LA Roche Ltd & another v. Cipla Ltd in (judgment dated 08.12.2015 in RFA(OS) 92/2012), wherein Page 251 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Delhi High Court held as under:
"9. As corrected the judgment and decree dated November 27, 2015 shall read as under:-
1. Though at first blush the plot and premise of the Roche Vs. Cipla dispute appears to be straightforward - Roche claims that on March 31, 1991, it filed an application for grant of patent in USA pertaining to Erlotinib Hydrochloride, resulting in grant of patent US '498 on August 05, 1998. During pendency of its application in USA, on March 13, 1996 it filed an application in India for grant of patent for the same molecule which was granted to it vide IN 774 on February 23, 2007. The marketable physical form of the molecule comprised polymorph A and B. Further research revealed that polymorph B was more thermodynamic and as per Roche would qualify for enhanced efficacy and thus on November 09, 2000 it applied for grant of patent for polymorph B of Erlotinib Hydrochloride in USA resulting in grant of patent US
221. Similar application filed in India.
29. Now, Section 3(d) assumes Page 252 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that structurally similar derivatives of a known substance' will also be functionally similar and hence ought not to be patentable.
What is of crucial importance is that this is not a provision that merely bars certain subject matter from patentability. On the contrary, it provides that if the new form of the known substance is found despite a structural similarity to demonstrate a better functionality i.e. enhancement of the known efficacy', it would qualify for assessment under Section 2(1)
(j) as if it were a new product involving an inventive step and it would thereafter be up to the applicant for the patent to demonstrate the patentability of this substance in accordance with Sections 2(1)() and (ja). This provision is not a patent term extension or an evergreening provision but in fact recognizes incremental innovations in pharmaceutical patents. The use of the words 'product' and 'substance' in Section 2(1)(i) and Section 3(d) is therefore telling, in that, the legislative intent appears clearly to demonstrate that all substances' may not qualify as products' under the Page 253 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Act, where the latter are only those substances that are patent-eligible. In fact, Section 2(1)(ta) provides the bridge between Section 3 and Section 2(1)(j), in that, it defines a pharmaceutical substance' as 'any new entity involving one or more inventive steps'. Thus, the discovery of an entity or substance may not involve an inventive step.
Insofar as there is no inventive step involved in its formation it is merely a substance even though its structural form may be hitherto unknown. A new chemical entity (NCE) that is structurally dissimilar but functionally similar to an existing chemical entity is thus merely a substance under Section 3(d). If the substance has an added layer of enhanced efficacy then it would be treated as a 'new product' and would be eligible for assessment under Section 2(1)(i) to ascertain whether its formation involved an inventive step. If the new product involved one or more inventive steps, then it would qualify as a pharmaceutical substance....
32. The view which we have taken is in conformity with the Page 254 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined law declared by the Supreme Court in the decision reported as (2013) 6 SCC 1 Novartis AG Vs. Union of India, in para 88 whereof it was opined as under:-
"We have so far seen Section 3(d) as representing 'patentability', a concept distinct and separate from 'invention'. But if Clause (d) is isolated from the rest of Section 3, and the legislative history behind the incorporation of Chapter II in the Patents act, 1970, is disregarded, then it is possible to see Section 3(d) as an extension of the definition of "invention" and to link Section 3(d) with Clauses (i) and (ja) of Section 2(1). In that case, on reading Clauses
(i) and (ja) of Section 2(1) with Section 3(d) it would appear that the Act sets different standards for qualifying as 'inventions' things belonging to different classes, and for medicines and drugs and other chemical substances, the Act sets the invention threshold further higher, by virtue of the amendments made in Section 3(d) in the year 2005."
33. Before we apply the Page 255 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined aforenoted legal position to the facts of the instant case we need to discuss the legal position concerning construction of claims In the decision reported as AR 1969 Bombay 255 EH & B Vs. Unichem Laboratories it was held that specifications end with claims, delimiting the monopoly granted by the patent and that the main function of a Court is to construe the claims without reference to the specification;
a reference to the
specification being as an
exception if there was an
ambiguity in the claim. Claims must be read as ordinary English sentences without incorporating into them extracts from body of specification or changing their meaning by reference to the language used in the body of the specification. In a recent decision in FAO (OS) No. 190/2013 Merck Vs. Glenmark the Division Bench held that claim construction to determine the coverage in the suit patent has to be determined objectively on its own terms with regard to the words used by the inventor and the context of the invention in terms of the knowledge existing in the industry. Abandonment of an Page 256 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined application cannot remove what is patented earlier nor can it include something that was excluded earlier and that a patent is construed by the terms used by the inventor and not the inventors subjective intent as to what was meant to be covered. Merely because an inventor applies for a latter patent that is already objectively included in a prior patent, but which inventor subjectively feels needs a separate patent application, doesn't mean it is to be taken at face value and therefore neither Section 3(d) or abandonment of subsequent patent application can be used to read into terms of prior application, which has to be construed on its own terms. In the decision reported as 415 F. 3d 1303 Edward H.Phillips Vs. AWH Corporation it was held that claims have to be given their ordinary and general meaning and it would be unjust to the public, as well as would be an evasion of the law, to construe a claim in a manner different from plain import of the terms and thus ordinary and customary meaning of the claim term is the meaning of the term to a Person Of Ordinary Skill in the Art as of effective date Page 257 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of filing of the patent application. In case of any doubt as to what a claim means, resort can be had to the specification which will aid in solving or ascertaining the true intent and meaning of the language employed in the claims and for which the court can consider patent prosecution history in order to understand as to how the inventor or the patent examiner understood the invention. The Court recognized that since prosecution is an ongoing process, it often lacks clarity of the specification and thus is less useful for claim construction. The Court also recognizes that having regard to extrinsic evidence such as inventor testimony, dictionaries and treaties would be permissible but has to be resorted to with caution because essentially extrinsic evidence is always treated as of lesser significance in comparison with intrinsic evidence. In the decision reported as 457 F.3.1284 (United States) Pfizer Y's. Ranbaxy the Court held that the statements made during prosecution of foreign applications are irrelevant as they are in response to unique patentability requirements Page 258 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined overseas. The Court also held that the statement made in later unrelated applications cannot be used to interpret claims of prior patent. In the decision reported as 1995 RPC 255 (UK) Glaverbel SA Vs. British Coal Corp the Court held that a patent is construed objectively, through the eyes of a skilled addressee. The Court also held that the whole document must be read together, the body of specification with the claims. But if claim is clear then monopoly sought by patentee cannot be extended or cut down by reference to the rest of the specification and the subsequent conduct is not available to aid the interpretation of a written document.
34. For the above conspectus, pithily put, principles of claim construction could be summarized as under: -
(1) Claims define the territory or scope of protection (Section 10(4) (c) of the Patents Act, 1970.
(ii) There is no limit to the number of claims except that after ten claims there is an additional fee per claim (1st Schedule of the Act).Page 259 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(iii) Claims can be independent or dependent.
(iv) The broad structure of set of claims is an inverted pyramid with the broadest at the top and the narrowest at the bottom Manual of Patents Office - Practice and procedure).
(v) Patent laws of various countries lay down rules for drafting of claims and these rules are used by Courts while interpreting claims.
(vi) One rule is that claims are a single sentence defining an invention or an inventive concept.
(vii) Different claims define different embodiments of same inventive concept.
(viii) The first claim is a parent or mother claim while remaining claims are referred to as subsidiary claims.
(ix) If subsidiary claims
contain an independent
inventive concept different
from the main claim then the Patent office will insist on the filing of a divisional application.
Page 260 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (х) Subject matter of claims can be product, substances, apparatus or articles;
alternatively methods or
process for producing said
products etc. They may be
formulations, mixtures of
various substance including
recipes. Dosage regimes or in some countries methods of use or treatment may also be claimed.
(xi) Where claims are dependent' it incorporates by reference everything limitations in the parent claim, and adds some further statement, Drafting), or restrictions'. (Landis on Mechanics of Patent Claim
(xii) Where claims are independent' although relating to the same inventive concept this implies that the independent claim stands alone, includes all its necessary limitations, and is not dependent upon and does not include limitations from any other claim to make it complete .... An independent Claim can be the broadest scope claim. It has fewer limitations than any dependent claim which is dependent upon it'. (Landis on Mechanics of Patent Claim Page 261 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Drafting)
(xiii) For someone wishing to invalidate a patent the said person must invalidate each claim separately and independently as it is quite likely that some claims may be valid even while some are invalid.
(xiv) At the beginning of an infringement action the Courts in the United States conduct what is known as a Markman hearing' to define the scope of the claims or to throw light on certain ambiguous terms used in the claims. Although this is not technically done in India but functionally most Judges will resort to a similar exercise in trying to understand the scope and meaning of the claims including its terms.
In the case of (52 F.3d 967 also 517 US 370) Herbert Markman Vs. Westview the Courts held that an infringement analysis entails two steps:-
(a) First step is to determine the meaning and scope of the patent claims asserted to be infringed.
(b) Second step is to compare Page 262 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the properly construed claim with the device accused of infringing.
(xv) The parts of the claim include its preamble, transition phrase and the body.
The 'transition phrase' includes terms like:-
(a) Comprising;
(b) Consisting;
(c) Consisting essentially of;
(d) Having;
(e) Wherein;
(f) Characterised by;
Of these terms some are open ended, such as 'comprising' which means that if the claim contains three elements 'A', 'B' and 'C' it would still be an infringement for someone to add a fourth element 'D'.
Further some terms are close ended such as 'consisting of', i.e. in a claim of three elements, 'A', 'B' and 'C' a defendant would infringe if he has all three elements. In case the defendant adds a fourth element 'D' he would escape infringement.
(xvi) Each claim has a priority date so that in a group of claims in a specification you Page 263 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined could have multiple priority dates. This only means that if a patent application with certain priority date and claims was followed by another application with different claims and different priority dates, then if they were consolidated or cognate with another application, each claim would retain the original priority date [Section 11(1)].
76.It is an incorrect analysis of product patent infringement in a case like the present, to use methodologies like X-Ray diffraction to ascertain whether the competing products are identical in nature. The correct test of infringement in this case is to map Cipla product against the Roche's patent claims, which we find has not been done by the learned Single Judge, and this is the third infirmity on this aspect of the dispute.
77. If Roche's patent was for a polymorphic form of Erlotinib Hydrochloride and not the molecule itself and Cipla had argued that theirs was a 'new substance', then alone the Court could have relied on evidence of use of the X-Ray diffraction technique and a Page 264 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined consequential analysis of the peaks of both to ascertain whether they are identical or dissimilar compounds. However in that situation too, the comparison would have to be between a product made on the basis of Roche's patent claim and Cipla's product and not between Roche's product as sold in the market and Cipla's product. This subtle distinction is important to be kept in mind because the holder of a patent is by no means limited to only manufacture and sell only those products that are disclosed in the claims of the patent and hence a different polymorph manufactured by the patent holder which is not the subject of the registered patent cannot be used for the purpose of comparison with the infringer product; the very product disclosed in the patent claims must be used.
79. It is therefore left to the Court to study the specification and claims of the suit patent and note that as they are in relation to Erlotinib Hydrochloride and are not restricted to any specific Polymorph, they would be infringed by any manufacture of Page 265 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Polymorph B by a third party as the same would use the subject matter of IN '774 as its basic starting point. The Learned Single Judge has correctly applied the principle in the decision reported as AIR 1969 Bom 255 F.H & B vs. Unichem, in stating that in case of any ambiguity of the Claim of the suit patent then resort can be taken to the specification of the said suit patent and nothing else. He correctly recognized that a Purposive Construction of the claims is necessary in order to not construe claims too narrowly. Yet we find that neither of these tests have been applied in the present case to construct the claims themselves and hence a conclusion that the IN 774 patent covers Polymorphs 1+B itself is erroneous.
106. Roche rebutting argument of Cipla on lack of inventive steps and obviousness claims that Cipla admitted patent IN 774 being novel, hence anticipation has not been assailed as a ground. It is contended that an invention is obvious or does not involve any inventive steps if the complete specifications are published before the priority date of Page 266 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined said claim. Obviousness has to be determined by a person of ordinary skill in the Art (in short POSA'). POSA thinks along the lines of conventional wisdom in art and does not undertake risks to go away from the main stream teaching. While conducting an inquiry into obviousness, hindsight is impermissible and the legal conclusion must be reached on the basis of facts gleaned from the prior art and should not include knowledge gleaned from patent disclosure. Teachings in prior art document have to be considered as a whole.
Teachings away from the patent claim are treated as non-
obvious. To inquire into obviousness, two fold inquiry is required to be conducted i.e. motivation to select and motivation to modify. Mere structural similarity cannot form the basis for selection of a lead compound in a prior art. The legal position is well settled that potent and promising activity in the prior art trumps mere structural similarity. There has to be a teaching, suggestion or motivation in the prior art document in order to modify the lead compound. Besides the primary consideration as noted, Page 267 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the objective indicia of non- obviousness include secondary considerations such as (i) a long-felt need; (ii) failure of others; (ii) industry acclaim; and (iv) unexpected results. Roche claims that Cipla has not discharged its onus to establish invalidity on the ground of obviousness as no clear and convincing evidence was led to demonstrate that the three distinct approaches canvassed by Cipla that POSA would be motivated to modify the lead compound Example 51 with EP 507 in order to substitute the 3rd position of Methyl on Phenyl ring with Ethynyl there being no reference of a teaching to show that Ethynyl would be a suitable alternative; the second being applying the concept of "bioisosteric replacement" to the 3rd position of phenyl ring of Example 51 of EP 226 and thirdly Cipla's relying upon 5 additional documents, two of which are not prior art namely EP 0477700, US 4138590, US 5427766, US 5736534 and WO 193004047 which were exhibited by DW-3 Prof.Ashwini Nangia. The evidence of Prof. Ashwini Nangia DW-3 cannot be relied upon as he was not a person Page 268 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined skilled in art neither being a medicinal chemist nor having any experience in drug discovery and development process from inception to animal study and clinical trials, no independent search having been conducted by DW-3 and his search was based on Google and Wikipedia few days prior to cross-examination. Cipla provides no reason to select EP 226 as the closest prior art and as 10 why Example SI would have been selected as a lead compound. The teaching of the prior art should be as a whole and various steps cannot be surgically put together. No evidence has been led by Cipla in support of its steps canvassed. Further Prof. Roger Griffin, PW-2 has explained that bioisosteric replacement at best is a rough rule of thumb and provides no motivation to a POSA 1o develop Erlotinib Hydrochloride.
Reliance is placed on the decisions reported as AIR 1969 Bombay 255 F.H.& B.Corp. Vs. Unichem Laboratories, (1979) 2 SCC 511 Bishwanath Prasad Vs. Hindustan Metal Industries, [2012] EWHC 1848 Mylan Vs. Veda, MANU/USFD/0081/2014 Pfizer Inc. Vs. Teva Pharmaceuticals, 520 F.3d. 1358 Page 269 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined OrthoMcNeil Pharmaceutical Inc. Vs. Mylan Laboratories Inc., 840 F.2d 902 Grain Processing Vs. American Maize, 231 F.3d 1339 CAFC Yamanouchi Pharmaceutical Co. Ltd.
Vs.Danbury Pharmacal Inc., MANU/USFD/0845/2012 Otsuka Pharmaceutical Co. Ltd. Vs. Sandoz Inc. and Apotex Inc., 550 U.S. 398 (2007) KSR International Co. Vs. Teleflex Inc., 471 F.3d 1369 Eli Lilly And Company and Lilly Industries Lid. Vs. Zenith Goldline Pharmaceuticals, Inc., 676 F.3d at 1072 In re Cyclobenzaprine, 619 F. 3d 1346 (Fed Cir 2010) Daiichi Sankyo Co. Ltd. Vs. Matrix Labs Lid., decision of United States District Court in Civil Action No. 04-2355(JLL titled Altana Pharma Vs. Kudco, 858 F. Supp. 2d 341 OSI Pharmaceuticals Vs. Mylan Pharmaceusicals Inc. & Pfizer Inc., Genentech Inc. Vs. Mylan Pharmaceuticals Inc., Teaching of EP 226. Teaching of EP 851, Teaching of EP 498, Teaching of EP 507, Isosterism and Molecular medication in drug design' by C.W. Thornber, decision of Boards of Appeal of the European Patent Office in case No. T 0467/94 titled Eisai Co. Lid.. decision of Boards of Appeal of the European Patent Page 270 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Office in case No. T0156/95 titled Hoechst Marion Inc., decision of Boards of Appeal of the European Patent Office in case No. I 0643/96 titled Beecham Group PLC.
109. From a bare reading of Section 64(1)(e) of the Patents Act, 1970 it is evident that obviousness' and 'lack of inventive steps' have to be seen vis-a-vis facts publically known or publically used in India or published in India or elsewhere before the priority date. The priority date of US 498 and IN 774, the suit patent is March 30, 1995, and thus teachings prior thereto can only be seen. Both US 534 and US '766 are admittedly not prior arts and thus could not have been used to test obviousness.
111. Obviousness has to be strictly and objectively judged. In the decision reported as (1979) 2 SCC 511 Bishwanath Prasad Vs. Hindustan Metal Industries (para 25) the Supreme Court laid down the principles to lest inventive step' as under:-
25. Another test of whether a document is a publication which would negative existence of Page 271 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined novelty or an "inventive step"
is suggested, as under:
"Had the document been placed in the hands of a competent draftsman (or engineer as distinguished from a mere artisan), endoved with the common general knowledge at the priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, this gives me what I want?' (Encyclopaedia Britannica; ibid). To put it in another form: 'Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?' [Halsbury, 3rd Edn., Vol. 29, p. 42 referred to by Vimadalal, J. of Bombay High Court in Farbwerke Hoechst & B. Corporation v. Unichem Laboratories [AIR 1969 Bom 255 (Bom HC)] .]"
112. To test obviousness the first test required to be applied is to see who is an ordinary person skilled in art (POSA) and what are its Page 272 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined characteristics. The features of a person skilled in the art are that of a person who practices in the field of endeavour, belongs to the same industry as the invention, possesses average knowledge and ability and is aware of what was common general knowledge at the relevant date.
117. Expressing a note of caution, the Bombay High Court in EH. & B. Corp. (supra) guarded the Courts of law against the common human failing of being wise after the event in regarding something that has been discovered by research as obvious. In Grain Processing (supra) the Court noted that care must be taken to avoid hindsight reconstruction by using the patent in suit as a guide through the MAZE of prior art references in the right way so as to achieve the result of the claims in suit. In Pfizer Inc. Vs. Teva Pharmaceuticals (supra) it was held that a patent challenger however must demonstrate the selection of a lead compound based on its promising useful properties, not a hindsight driven search for structurally similar compounds. Similar caution was Page 273 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined advanced in Yamanouchi Pharmaceutical Co. Ltd. (supra) and Otsuka Pharmaceutical Co. Ltd. (supra).
122. In Pfizer Inc. Vs. Teva Pharmaceuticals (supra) the Court of Appeals with regard to obviousness inter alia held as under:-
The determination of
obviousness is a legal
conclusion based on underlying facts. Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290-91 (Fed. Cir. 2013). After a bench trial, we review the district court's factual findings for clear error and its conclusions of law de novo. Honeywell Int'l, Inc. v. United States, 609 F.3d 1292, 1297 (Fed. Cir.
2010). A patent claim is invalid for obviousness if "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. " 35 U.S.C. § 103.
The "underlying factual
considerations in an
obviousness analysis include
the scope and content of the Page 274 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, and any relevant secondary considerations [,]" which include "commercial success, long-felt but unsolved needs, failure of others, and unexpected results." Allergan, 726 F.3d at 1290-91 (citations omitted). Patent invalidity must be established by clear and convincing evidence.
Microsoft Corp. v. i4i, Ltd. P'ship, 131 S.Ct. 2238, 2242 (2011).
Whether a new chemical compound would have been prima facie obvious over particular prior art compounds follows a two-
part inquiry under our
precedent. First, the court
determines whether a chemist of ordinary skill in the art would have selected the asserted prior art compound as a lead compound, or starting point, for further development. Eisai Co. v. Dr. Reddy's Labs., LId, 533 F.3d 1353, 1359 Fed. Cir. 2008). A lead compound is a compound in the prior art that would be "most promising to modify in order to improve upon its activity and obtain a compound with better activity.
" Takeda Chem. Indus., Ltd. v.Page 275 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Alphapharm Pry., Lid., 492 F.3d 1350, 1357 (Fed. Cil. 2007). The selection analysis may be guided by evidence of the compound's pertinent properties, such as chemical activity or potency. See Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F3d 1369, 1378 (Fed. Cir: 2006). Mere structural similarity between a prior art compound and the claimed compound does not inform the lead compound selection. Otsuka Pharm. Co. v. Sandoz Inc., 678 F.3d 1280, 1292 (Fed. Cir. 2012); see Daichii Sankyo Co. v. Matrix Labs., Lid., 619 F.3d 1346, 1354 (Fed. Cir. 2010).
Proof of obviousness of a
chemical compound "clearly
depends on a preliminary
finding that one of ordinary skill in the art would have selected [a particular prior art compound] as a lead compound." , 492 F.3d at 1357.
The second step of the obviousness analysis requires a showing that the prior art would have taught a skilled artisan to make "specific molecular modifications" to a lead compound so that the claimed compound may be made with a reasonable expectation of success. Id. at 1356-57.Page 276 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (emphasis supplied)
123. In Eli Lilly And Company and Lilly Industries Ltd. (supra) the Court of Appeals held as under:-
"... As taught by Yamanouchi Pharm. Co. and other precedent, mere identification in the prior art of each component of a composition does not show that the combination as a whole lacks the necessary attributes for patentability, i.e. is obvious. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Rather, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention."
"Furthermore, Lilly overcame any prima facie case of obviousness. Among other things, Lilly proved extensive secondary considerations to rebut obviousness. The trial court found the evidence clearly established four of the five proffered secondary considerations. Findings of Page 277 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Fact and Conclusions of Law, 364 F.Supp. 2d at 852-74, 905-
12. Lilly established (1) a long-felt and unmet need; (2) failure of others; (3) industry acclaim; and (4) unexpected results. ld. The record shows a long-felt need for a safer, less toxic, and more effective clozapine-like drug; a decade (or more) of failure to find a replacement for clozapine; a reasonable amount of commercial success for olanzapine; and a number of awards for olanzapine as indicators of industry acclaim. ld. at 852-53.
Specifically, the trial court noted a "long-felt but unsolved need for a safe atypical antipsychotic from 1975 until 1990," as well as extensive evidence supporting the other objective criteria. ld. At 832- 34, 906. The trial court also discussed the unexpected differences between the closest analog, Compound 222 and olanzapine, most of which focused on olanzapine not raising cholesterol levels in dogs, and a comparison of some humans tests with other similar drugs that raised CPK. Id. at 853-73. In sum, these objective criteria buttressed the trial court's conclusion of non obviousness."Page 278 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
125. Thus obviousness is a question of law based on facts and the burden to prove is on the party which alleges however after the party which alleges makes out a prima facie case of invalidity on the ground of obviousness, the burden shifts on the inventor to disprove obviousness.
150. To conclude, affirming the impugned judgment and decree dated September 07, 2012 passed by the learned Single Judge in so far counter claim filed by Cipla seeking revocation of IN '577 in favour of Roche has been dismissed, we set aside the impugned decision dismissing suit for injunction ear but keeping in view the fact that the life of the patent in favour of Roche in India would expire in March, 2016 we do not grant the injunction as prayed for by Roche against Cipla (because as noted above there was no interim injunction in favour of Roche and due to said reason Cipla continued to manufacture and sell Erloci). We decree that Cipla would be liable to render accounts concerning manufacture and sale of Erlocip, for which purpose suit filed by Roche against Cipla is Page 279 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined restored with direction that it be listed before the learned Joint Registrar who would record evidence pertaining to the profits made by Cipla concerning the offending product. Thereafter the report of the learned Joint Registrar shall be placed before the learned Single Judge as per roster for appropriate orders.
RFA (OS) No.103/2012 is dismissed. RFA (OS) No.92/2012 is partially allowed as above." 7.57 It was submitted that the doctrine of pith and marrow may solely be invoked once the accused product or method took all the essential integers of the patented invention despite it omitted, varied or added some inessential feature. Reliance was placed on the decision in case of CTR Manufacturing Industries Limited v. Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. reported in 2016 (65) PTC 262 (Bom), wherein it is held as Page 280 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined under:
"63 A more substantial defence is the one on prosecution history estoppel. Mr. Chagla took me theosph the original application, the various examination reports and then the complete specification, submitting along the way a chart showing the changes or amendments made from time to time. The purpose of this exercise, patent; was shortly put, was to demonstrate that the PRV was essential to the Sergi product and actively disclaimed by CTR in its patent; and yet was an essential requirement of the DTL tender. Mr. Chagla laid a very great emphasis on CTR's use of the phrase "and/or other sensing means" in relation to the Buchholz Relay to say that even CTR acknowledged the need for a PRV or an RPRR in its patent application amendments, but took these out later. CTR thus narrowed its claim to finally yield a argues, complete disclaimer of the PRV. Since the PRV is an essential component, Mr. Chagla it is not open to CTR to invoke the doctrine of equivalents to claim infringement in regard to the surrendered territory.Page 281 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Prosecution history estoppel is not restricted to amendments intended to avoid prior art but also applies to a narrowing amendment made to satisfy any statutory requirement or the demands of an examination report from the Controller's office. This is generally correctly stated as a principle in law, but on the facts before me I do not think it is at all correct, because its starting assumption, viz., that the PRV is essential to the DTL Tender, is not. CTR disclaimed the PRV as irrelevant, and it maintains that position. Mr. Seervai says, and I think quite correctly as I have already discussed, that the essential element is not the PRV at all, which is one of the substitutes possible with the Buchholz Relay, but the combination of the Differential Relay and the Buchholz Relay. CTR makes no claim to exclusivity in either of these integers on their own, as indeed it cannot. Mr. Chagla's argument seems to me to overlook the well settled law on combination patents. Once I arrive at this finding, the next argument, that CTR is confined to a system without the PRV, and can claim no infringement in a system that Page 282 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined does have the PRV, cannot hold; simply because the PRV is a substitutable and in that sense superfluous) element.
64. Indeed, viewed like this, one of the authorities cited by Mr. Chagla is actually against him. In Rodi and Wienenberger AG v Henry Showell Ltd., [1969] RPC 367 the House of Lords had before it a claim relating to an expanding watch bracelet. In separate judgments, both Morris LJ and Upjohn LJ said that one who borrows the substance of a patented invention cannot escape the consequences by making immaterial variations. The question is whether an essential feature has been infringed. There will still be infringement if non-essential integers are omitted, added or replaced (the 'pith and marrow' doctrine). The only escape is for the defendant to show that the patentee plaintiff constricted his claim by excluding something essential; and when the defendant added that essential integer, he was not guilty of infringement. But this latter portion cannot, as we have seen, apply to the present case in relation to the PRV.
xxx Page 283 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
73. Not only must I look at the complete or final patent specification, but I must, and I think this is well accepted in this branch of the law, have regard to what has for a very long time been called the 'pith and marrow' of the invention. This is an expression that can be traced back to Clark v Adie (1877) 2 App Cas 315, also a combination patent case, where the House of Lords said that the court should look to the 'pith and marrow' of the invention to see whether a patent infringement had occurred. The law then evolved to Catnic Components Ltd. v.
Hill & Smith Ltd. [1982] RPC 183, a House of Lords decision that was another watershed in which Diplock LI, borrowing quite openly from doctrines of statutory interpretation, advocated a 'purposive' approach to construction. That now-legendary passage is still worth reproducing:
"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them Page 284 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is:
whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."
74. I read the emphasized portion to mean two things:
first, as casting a duty on the court to ascertain just what it is over which the patentee claims monopoly, l.e., to determining what is essential to the patent, its 'pith and Page 285 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined marrow'; and, second, to deciding whether the removal of that so-called essential (or those so-called essentials) would defeat an infringement claim even if it made no difference to the final result. This is not to be read, in my judgment, as proposing that the addition of a superfluous element saves infringement. It is instead a test of seeing whether the removal of what the patentee claimed to be essential would have no material effect on the way the device worked.
75. What do we find when we look at the complete specification (the patent as finally granted)I believe it is wholly irrelevant at this stage that the original 16 claims were reduced to 15 (the last being deleted), and those 15 then, by a process of merging claims 1 and 2, and claim 8 with claim 9, and splitting claim 15 into two, became for all intents and purposes 14 claims. Read together, those claims make it clear that CTR has wholly eliminated and therefore disclaimed the PRV.
It insists on the two critical integers I have mentioned earlier working together. Page 286 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined These, working together, form the 'pith and marrow' of CTR's Patent. Removing either of them cannot meet either the DTL tender requirements or deliver the same result. Adding something superfluous to them does not defeat infringement. That might have been defeated had it been possible to show that removing any of these integers would still generate the same result; for then those integers would clearly be non- essential. Even Sergi does not claim this. It, too, in its Sergi 3000 product demands the use of all three integers; but it adds to this the PRV: like marzipan, this is only possibly attractive, certainly distracting but in no way essential."
VIII-Submissions of the defendants on preliminary objections and on merits VIII-A Preliminary objections 8.1 The defendants filed an application Exhibit 196 under section Page 287 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 151 of the Code,1908 to exhibit the documents that have been filed before the Court. This Court passed an order to exhibit all the documents in view of decision of Apex Court in case of Bipin Shantilal(supra).
8.2 Thereafter on completion of arguments on behalf of the plaintiffs, objections were raised by the defendants with regard to production of copies of electronic record by the plaintiffs as same are not accompanied by certificate required under provisions of section 65B(4) of the Evidence Act for admissibility of such documents. Further objection was also raised with regard to breach of provisions of Order XI of Code, 1908 Page 288 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which is made applicable under Chapter VI section 16 of the Commercial Courts Act, 2015. It was therefore, submitted on behalf of the defendants that in absence of adherence to the provisions of order XI applicable to commercial suit, the suit is liable to be dismissed.
8.3 A purshis/declaration was filed on behalf of the plaintiffs at Exh.201 to place on record Certificate dated 65B of the Evidence Act. Reliance was placed on decision of Hon'ble Apex Court in case of Arjun Panditrao Khotkar v. Kailash Kushanrao Gorantyal & others reported in (2020) 7 SCC 1 to submit that as held by the Apex Court so long as hearing in trial is not yet over, certificate under section 65B of Page 289 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Act can be filed so that the information contained in electronic record can be admitted and relied upon in evidence. Thereafter another purshis/ declaration Exh.202 was filed by the plaintiffs in addition to certificate filed with Exh.201. Another certificate under section 65B of the Act of the witness of PW-1 who extracted/retrieved electronic record from his laptop and mobile phone and sent to plaintiffs' counsel for printing and filing before this Court was filed.
8.4 Objection was also raised with regard to computer printouts of certain invoices at PW-1/1 to PW-1/11 to indicate commercial usage of plaintiff Page 290 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined no.1's patented machine on the ground that certain portion of said invoices have been redacted by PW-1 while placing the same on record as the same is sensitive confidential information in relation to the name of the plaintiffs' customers and unit prices. In response to reply to question no.165 during cross examination of PW-1, the plaintiffs have placed on record unredacted printouts in a sealed cover out of such documents being Exh. PW-1/1 to PW-1/11 for perusal of the Court along with purshis Exh.205 so as to compare the same with the invoices placed on record by PW-1.
8.5 The defendants thereafter filed purshis Exh.211 for non compliance of Page 291 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined section 65B of the Evidence Act by the plaintiffs as well as non admissibility of the documents intended to be exhibited by the plaintiffs. It is contended on behalf of the defendants that no certificate under section 65B can be issued at the stage of final hearing of the suit during the final arguments so as to attempt to correct the flagrant non compliance of provisions under the Evidence Act by the plaintiffs as the certificate ought to have been filed at the time when the evidence was led before this Court. 8.6 Learned Senior Advocate Mr. Soparkar submitted that the documents at Exh.PW-1/1 to PW-1/11 are printouts of invoices taken from the computer Page 292 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined without certificate under section 65B(4) of the Evidence Act and therefore, the same are required to be discarded. It was submitted that arguments put forth by the plaintiffs pertaining to ERP server was never advanced during the proceedings and therefore, the same is completely new and veracity of which was never tested nor an opportunity was given to the defendants to cross examine the plaintiffs' witnesses. It was also pointed out that on perusal of section 65B, certificate submitted by the plaintiffs are at variance. It was submitted that the meaning of word "produced" in section 65B(2)(a) indicates generation/production of the computer output which is, as admitted Page 293 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the plaintiffs, was done, and not on the computer of PW-1 but from ERP server of the plaintiffs and therefore, computer should not include ERP server from which invoices were produced/generated and perhaps that were transferred to PW-1's laptop solely for the purpose of printing. It was pointed out that no details of ERP server is given in the certificate and as such there is no compliance of section 65B of the Evidence Act. It was submitted that non declaration of technical details such as Sr. No., MAC address of the server etc. in section 65B certificate does not comply with the requirements under section 65B(2)
(a) of the Evidence Act. It was submitted that the invoices were never Page 294 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined stored in laptop of PW-1 and therefore, parameters mentioned in section 65B(5) also applies to ERP server and not to the laptop of PW-1. It was therefore, submitted that merely because the laptop of PW-1 was used solely for purpose of printing and tendering such invoices as part of evidence same should not to be admitted.
8.7 It was further submitted that the provisions of section 65B(5b)and (5c)are also not complied with as the activities being invoicing by the plaintiff no.1, information/computer output is not being supplied to the laptop of PW-1 in the course of such invoicing activity but especially retrieved from the alleged server Page 295 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined solely for the purposes of printing action, and therefore, laptop of PW-1 cannot be a computer as section 65B (5c) which indicates that "computer output shall be taken to have been produced by a computer". It was further submitted that reliance placed on the word "derived" by the plaintiffs in section 65B(2) is also misplaced more particularly, in the invoices placed on record file path is mentioned which indicates that such file which was used for printing was assessed from a file folder and was stored on local drive and not on any ERP server as claimed by the plaintiffs of a person named Avigial who is working with plaintiff no.2. It was therefore, submitted that the submissions of the plaintiffs that Page 296 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined archives were obtained from ERP system which is installed on the main server of the plaintiffs is not correct as such invoices are printed from the local drive of an employee of plaintiff no.2 which is not mentioned in the 65B certificate, and such printouts of invoices should not be construed to be produced at ERP server as claimed by the plaintiffs. It was pointed out that in the cross examination of PW-1, veracity and genuineness of the invoices were questioned in questions nos. 164 to 166. It was therefore, submitted that the plaintiffs have filed two 65B affidavits and by relying upon the decision in case of Arjun Panditrao v. Kailash Kushanrao Gorantyal(supra) as per the Page 297 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined convenience, such certificates cannot be relied upon.
8.8 It was further submitted that the invoices at Exh.PW-1/1 to PW- 1/11 were actually digital in nature and should have been digitally signed whereas invoices placed on record do not bear any digital signature and therefore, the same is required to be discarded. With regard to redacted portion of invoices, it was submitted that the conditions of section 65B(2) are not complied with which in fact makes the certificate produced by the plaintiffs as inapplicable as such invoices not being exact reproduction of electronic record. It was further pointed out that digital invoices which Page 298 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are electronically signed need not have requirement of signature section separately whereas invoices placed on record though digital in form contained such space which shows that such invoices do not commensurate with the requirement of section 65B. 8.9 With regard to 65B certificate of advocate placed on record on 24.11.2021 it was submitted that such certificate is nothing but an attempt to mislead the Court and fill up the lacuna knowing very well that the said document has not evidentiary value whatsoever coupled with the fact that it is inadmissible in law. It was submitted that affidavit of Ishwer Upneja, counsel of the plaintiffs is defective in nature in view of the fact Page 299 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that email ID referred therein i.e. [email protected] is of period when she was working with such law firm Indus Law and such email ID is not active when certificate was filed. It was therefore, submitted that filing of 65B certificate by citing downloading of the documents from a non active email address as a time over three years back makes the certificate fundamentally faulty and filing of section 65B affidavit at this belated stage on the basis of non active email ID defeats the whole purpose of the enactment of the said provision which is to confirm the authenticity of the electronic records.
8.10 It was further pointed out Page 300 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that there is no mention of mannerism/date/medium in/on which the said documents were received over the system and how the same were printed as there is no copy of email over which the computer output was received and printed. It was also pointed out that there is no mention of the Laptop/system including but not limited to MAC address, Sr. number of the laptop, period of use, among other requirements stipulated under section 65B used for the said printouts and neither is there any mention of the IP address and time at which the same was downloaded or a copy of email in which said documents were received. 8.11 It was submitted that Page 301 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined whether the printouts of invoices were taken by PW-1 or by his advocate or both could not have done said activity while placing the same in affidavit because as per affidavit of PW-1, it would have been PW-1 who would have printed the invoices at his end and sent them for submission of the affidavit post legalization and therefore, 65B certificate from the advocate indicates a flawed attempt resulting into a defective certificate. It was also submitted that Mr. Ishwar Upneja not being the author of the said documents referred at Serial No. 1 to 39 he ought to have entered into the witness box to answer the questions pertaining to affidavit/certificate and prove the documents being intended to Page 302 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined be exhibited.
8.12 Learned Senior Advocate Mr. Soparkar thereafter submitted his arguments on case laws relied upon by the plaintiffs pertaining to PW-1/1 to PW-1/11.
8.13 Referring to decision in case of ICICI Bank Limited vs. Surbhi Gupta (supra), it was submitted that in the said decision in para 16 it is clearly stated that "Unless there is a serious challenge to the electronic documents i.e., tampering, forgery, hacking, misuse of an email address, change in contents etc...", which is absolutely the case here as the defendants have, at least in in Page 303 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Question Nos. 164-166 put forth to PWI's Cross-Examination, questioned the veracity and authenticity of these invoices, more particularly when these invoices are not even signed, does not indicate bank details. Therefore the nature of the documents in the instant case law cannot be equated to the invoices in context. Referring to judgment in case of Bhavnagar University vs. Palitana Sugar Mill Pvt. Ltd. AIR 2003 SC 511,it was submitted that it is a trite law that a little difference in facts or additional facts may make a lot of difference in the precedential value of a decision. 8.14 It was further submitted that the case law relied upon by the Page 304 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs is grossly inapplicable in the present matter on account of the fundamental fact that in the said case law, the nature of document in question was a statement of account (such as a ledger), which in effect was a customer copy, and that a customer can always validate the said document thereby limiting the scope as far as assessment of the said document is concerned. However, in the present case, the said Invoices have been self-generated by the plaintiffs themselves, that too without even a signature, making them inadmissible in law and that the case law cited by the plaintiffs is not relevant as far as the present case is concerned.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.15 It was submitted that the case law is relied upon only to indicate that in case a duly and properly executed certified copy is produced, then the corresponding original is not required, whereas, in complete contrast, in the present case, the invoices, leave alone being certified, are not even signed or stamped or electronically signed or any proof that they were originally generated in 2009 or so. At this juncture, it was submitted that the plaintiffs have further filed a Purshis to take on record the so-called original invoices in a sealed cover which is not redacted, however, the same ought not to be taken on record considering the fact that the Page 306 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Defendants have never had access to the said documents and that it is the right of the Defendants to ask further questions in purview of the same. It was further submitted that whether such invoices in the sealed cover are actually the originally issued invoices and that authenticity/genuineness of the invoices/amount ascertained/ validated in any manner whatsoever. 8.16 It was submitted that though in the said judgment it is held that Section 65B compliance is enough (and the original may not be required) and can be filed at a belated stage, it does not give leverage to file fraudulent or incorrect 65B certificates, which is precisely the case here as the filed certificate of Page 307 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-1 does not fundamentally meet the conditions at least outlined in Section 65B(2) as the terms "produced" and "computer" themselves have been wrongly interpreted and the computer using which the printouts were given was not the one that was ordinarily being used for the purposes of generation/storage of invoices per se.
8.17 It was further submitted that in the said judgment, the computer output in context pertained to print out of a statement of accounts that was directly downloaded from the banks' server (which is a third party credible source, where fudging per se is almost impossible), and it had the full details of the bank, duration of certificate and was also duly Page 308 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined certified, and therefore a simple 65B certificate in that case did serve in intended purpose. However, in complete contrast, in the present case, the invoices are private/internal documents of the plaintiffs and generated/ stored/ processed without the involvement of any third party that can validate the transaction/genuity of the invoice, and therefore no sanctity to the said invoices can be associated unless proved by the plaintiffs itself. 8.18 It was therefore, submitted that though the said judgment gives leverage as to when the 65B certificate can be filed and the non-requirement of original per se, it does not, in any manner, discount the extent of compliance required while submitting Page 309 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the certificate per se, and therefore any non-compliance as regards the details given including the chain of custody/possession, details of all the computers involved in the obtaining of the computer output, mandate of computer output coming out of the computer that ordinarily carries out the mentioned activities, cannot be discounted with.
8.19 Thereafter reference was made on decision in case of Kundan Singh vs. The State (supra) cited by the plaintiffs and submitted that the understanding of "single computer" in the context of Section 65B(3) is to be appreciated. It is was submitted that the clause while stating "all the computers used for that purpose during Page 310 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that period shall be treated for the purposes of this section as constituting a single computer", does not intend to mean that when multiple computers are used and treated as a single computer, only the details of one of the multiple computers can be given. The sole intent is to indicate and put forth is that by virtue of all the computers being treated as a single computer, the compliance required in (2) of Section 658 should be done accordingly i.e. the details of all the computers must be given so as to indicate and prove the chain of custody and flow of computer output and specifically indicate all exact computers flowing through which the computer output has been obtained. It Page 311 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is patently wrong to assume that the intent would be only to mean that any one single computer such as of PW-1's laptop in the present case would be enough, and in fact, it clearly means that compliance with respect to all the computers involved in the transaction is to be established and detailed out which is clearly not done in the present case.
8.20 Thereafter reference was made to paragraph no. 35 wherein it is stated that "...In such cases, all computers used for the purpose during the period in question from the beginning till the period where the output is obtained, are treated and regarded as the single computer for the purpose of the Section." and therefore Page 312 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined it was submitted that the compliance has to be done/demonstrated with respect to all the computers used from the beginning to the end. Referring to Para no.37 of the aid judgment it was submitted that Sub-clause (b) applies when information is supplied to any official in the course of activities carried on by him, i.e. in the course of "official" activities with a view that the said information shall be stored and processed for the purpose of the activities carried on by that officer or official. And therefore, in the present case, as PW-1 is not the official to whom, in the course of his official activities, these invoices are regularly provided/stored/processed and the invoices were only obtained by him Page 313 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined from the server for the purposes of printing for submitting the affidavit, he cannot, in any manner whatsoever, be the official as required in the Sub- clause (b) and it may actually be the Head-Finance or Head-Accounts who may be the official involved in regular course of such activities but surely not PW-1. Thereafter reference was made to Para no. 57 of the said judgment wherein it is stated that "The court has still to rule out when challenged or otherwise, the possibility of tampering, interpolation or changes from the date the record was first stored or created in the computer till the computer output is obtained". It was submitted that from a simple reading itself, it is amply clear that Page 314 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the construction of the "computer" would always be the device on which the invoices are ordinarily stored or created, which is surely and admittedly not the device/laptop of PW-1 and therefore the certificate solely indicating the details of the laptop computer of PW-1 would not be correct and acceptable.
8.21 It was submitted that however the said judgment does not give leverage to file fraudulent or incorrect 65B certificates, which is precisely the case here as the filed certificate of PW-1 does not fundamentally meet the conditions at least outlined in Section 65B(2) as the terms "produced" and "computer" themselves have been wrongly Page 315 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined interpreted and the computer using which the printouts were given was not the one that was ordinarily being used for the purposes of generation/storage of invoices per se. It was submitted that as in the said judgment, the nature of document/computer output in this case too is completely different as it was duly certified and not strongly challenged on grounds of authenticity, validity, and veracity at least through Ques. 164-166 during the cross examination of the PW-1. 8.22 It was submitted that chance of cross examination is lost to veracity of certificate as it was not produced with evidence.
8.23 Learned Senior Advocate Mr. Page 316 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Soparkar thereafter referred submitted arguments pertaining to decision in case of Arjun Panditrao v. Kailash Kushanrao Gorantyal (supra). It was submitted that Para No. 22 of the said judgment clearly indicates that "Section 65B(2) then refers to the condition that must be satisfied in respect of a computer output, and states that the test for being included in conditions 65B(2(a)) to 65(2(d)) is that the computer be regularly used to store or process information for purposes of activities regularly carried on in the period in question. The conditions mentioned in Sub-section 2(a) to 2(d) must be satisfied cumulatively" and therefore unless the witnesses 65B certificate details out Page 317 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the complete chain of transactions i.e., details of all computers involved in taking of the invoices in the present case, requirements under Section 65B (2) cannot be said to be met. It was submitted that Para No. 31 of the judgment states that "However, Section 65B(1) clearly differentiates between the "original" document which would be the original "electronic record" contained in the "computer" in which the original information is first stored and the computer output containing such information, which then may be treated as evidence of the contents of the "original" document.", and therefore without detailing the details/information pertaining to the computer in which the invoices were Page 318 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined first stored, the 65B certificate cannot be deemed to be correct. It was submitted that in Para No. 50 of the Judgment, the Hon'ble Supreme Court observed that "We may hasten to add that Section 65B does not speak of the stage at which such certificate must be furnished to the Court, In Anvar. P.V. (supra), this Court did observe that such certificate must accompany the electronic record when the same is produced in evidence. We may only add that this is so in cases where such certificate could be procured by the person seeking to rely upon an electronic record, However, in cares where either a defective certificate is given, or in cases where such certificate has been demanded and is Page 319 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not given by the concerned person, the Judge conducting the trial must summon the person persons referred to in Section 65B(4) of the Evidence Act, and require that such certificate be given by such person persons. This, the trial Judge ought to do when the electronic record is produced in evidence before him without the requisite certificate in the circumstances aforementioned..." It was submitted that in the present case, there was no 65B Affidavit by the concerned person and even now, the said affidavit is not in accordance with the provisions of law. It was further submitted that the non-obstante language of Section 65B(1) makes it clear that when it comes to information contained in an electronic record, Page 320 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined admissibility and proof thereof must follow the drill of Section 65B, which is a special provision in this behalf. Section 62 and Section 65 are irrelevant for this purpose. Oral Evidence cannot suffice in place of a certificate under Section 65B(4) and evidence aliunde cannot be given by a person in charge of a computer device, in place of the requisite certificate under Section 65B(4). The conditions under Section 65B(2) and 65B(4) must be satisfied cumulatively, which, in the present case, the plaintiffs have miserably failed to satisfy before this Court.
8.24 It was however submitted that in case, if the Court is inclined to admit the said documents, the Page 321 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants strongly dispute the evidentiary value and relevance/credibility of these documents.
VIII-B Defendants' submissions on merits 8.25 Learned Senior Advocate thereafter submitted his arguments on the veracity and authenticity of the images/screenshot marked as PW-1/12 to PW-1/14 which have been strictly questioned in Q. No. 173 to 174 (Pg. 99,100,101 Vol 4) of PW-1.
8.26 It was submitted that there is no disclosure of any date or the details pertaining to when/manner in which the screenshot was taken and Page 322 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined filed before this Court.
8.27 Furthermore, there are no details of the Diamonds to which these screenshots pertain, and the Date of Generation of the said screenshot is also unavailable which in itself is not in consonance with the provisions of Section 65B of the Indian Evidence Act as far as the authenticity of the same is concerned.
8.28 It was also submitted that the screenshot, on the top left of the image. indicates "Advisor 3.3 Beta. Lens I whereas on Pg. 214 pertaining to another set of data output (PW-1/26) claimed to have been opened on same laptop of PW-1 has a completely different Advisor Version which is Page 323 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "Advisor 5.3 Beta Lens 2", which clearly indicates that both the screenshots have been captured from different laptops/devices. It is well known that two instances of the same software are not installed on a single laptop, for example, it is never a practice to install different versions of MS Office, Zoom or Webex on the same computer/device.
8.29 While misrepresenting before this Court, the Plaintiffs also referred to Para 2 of the Written Statement filed by the Defendants to try and create an impression that the Defendants did not object to the image not being admissible/authentic, which is a blatant lie as the Defendants in the opening paragraph itself stated Page 324 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that "At the outset the answering defendants deny all the averments and allegations contained in the Plaint as false except those that are specifically and expressly admitted herein and put the Plaintiffs to strict proof of the same." In Para No. 2 of the Written Statement, the Defendants have simply stated that "The contents of paragraph 2 of the Plaint need no reply and are matter of record". Said Para 2 of the Plaint does not even specifically mention the referred/instant-images/documents in question and therefore taking reliance of such statement of the defendant assumed especially in view of the fact that admissibility of these documents has already been questioned Page 325 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined comprehensively during the cross examination. Furthermore, it is reiterated that there is no question of admitting these documents. 8.30 It was submitted that the reliance placed upon the decision in case of Gujarat Industrial Investment Corp. Lid. Vs. Ishwarlal L. Patel & Ors. (supra) by the plaintiffs is irrelevant as far as the present case is concerned as in the present suit pending before this Court there is clear denial of all averments in the opening para itself "unless specifically and expressly admitted". Moreover, PW-1 in his cross-examination was put forth with Q. No. 173 and 174 wherein which the veracity of PW-1/12 to PW-1/14 has been questioned. Page 326 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.31 It was submitted that in any case, if this Court is inclined to admit the said documents, defendants strongly dispute the evidentiary value and relevance/ credibility of these documents.
8.32 With regard to documents at Exh. PW-1/15, PW-1/16, DW-2/XI, DW-7/X1, DW-7/X3, DW-7/X4, DW-7/X5, and DW-7/X7 it was submitted that the same being in public domain, defendants have no objection as far as exhibiting of these documents per se is concerned. However, defendants humbly submit that it strongly disputes the evidentiary value and relevance/credibility of these documents.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.33 With regard to documents at Exh. PW-1/17, PW-1/25, PW-7/1 and PW- 7/2, it was submitted that while the contents, reliability, and accuracy/credibility of the documents are heavily objected, defendants do not have an objection as far as exhibiting the corresponding documents as brought on record by Dr. Ruchita Pal but not Exh. PW-1/17, PW-1/25, PW-7/1 and PW- 7/2.
8.34 It was further submitted that there exist serious anomalies as far as the modalities and process through which the said process was carried out. The attention of the Court was drawn to Question Nos. 19 to 25 of Cross Examination of PW-7 wherein PW-7 stated that he gave money directly to Dr. Page 328 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Ruchita Pal (CW-1) for carrying out the analysis process, however, Dr. Ruchita Pal during her Cross Examination in Q. Nos. 10-11, 43-46, in complete contrast, stated that the charges are paid by Demand Draft in favour of the Finance Officer, JNU. Additionally, while the requisition forms placed on record by Dr. Ruchita Pal (CW) are for 10 diamonds, she has claimed to generate reports for 20 diamonds, for which too there was no explanation provided by her, making the reports absolutely unreliable, which is evident from her replies to Q. No. 33, 50. 58. 8.35 It was further submitted that CW-1 admitted to having conducted the mandate without following the process/norm, and making an exception Page 329 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for which she had no power (Q. 36-40.). 8.36 It was submitted that CW-1 further confirmed that she has no record of when the diamonds were received and delivered back (Q. 36 and 47-48).
8.37 It was submitted that in answer to Q. 70-80, 84, and 92-99, Dr. Pal (CW-1) also confirmed that there is absolutely no correlation between the first set of reports and the second set of reports i.e. she confirmed that the second set of reports are not for the same diamonds for which the first set of reports were generated, making these reports absolutely unreliable. 8.38 It was therefore, submitted Page 330 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that in any case, if this Court is inclined to admit the said documents, defendants strongly dispute and would argue the evidentiary value and relevance/ credibility of these documents.
8.39 Referring to documents at Exh. PW-1/18 - PW-1/24, PW-1/26 and PW-1/27, it was submitted that the veracity, admissibility, and authenticity of Report/Data output Images marked as Exh.PW-1/18 to PW-1/24 have been strictly and comprehensively questioned in Q. No. 188 to Q. No. 197. For Exh. PW 1/26, the veracity of the same has been questioned in Q. No. 178-182 and 193 of the Cross Examination. 8.40 Reference was made to Para No. Page 331 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 5 and 6 of 65B Affidavit of PW-1 as under:
"5. I say that the electronic records mentioned at Sr. No. 16 & 17 of the table set out in para 10 hereinafter, are the screenshots of the steps for accessing the data output through the Defendants No. I's website, taken from my laptop. I say that I have sent the said screenshots to the Plaintiffs counsel for printing and filing before this Hon'ble Court.
6.I say that the electronic records mentioned at S. No. 18 to 23 of the table set out in para 10 hereinafter, are screenshots of the images of the data output for the five stones as obtained from Defendant No. 1, bearing file numbers. AB-PM-1 (CH350863).cap. AB-PM- 1(CH350864).cap. AB-PM-1 (CH350860).cap. AB-PM-1(CH350861).cap and AB-PM- 1(CH350862).cap which have been taken by me from my laptop that is regularly used by me. I say that I viewed the said data output of the Defendant No. 1. by accessing the results which were made available at the time on the Defendant No, I's website, ie.
http://www.divorabhanderi.com Page 332 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined using the user ID viz [email protected] and password viz. 123. I say that after capturing the aforementioned screenshots of the images of the five stones and after retrieving the data output report from Defendant No. I's website, using the aforementioned user ID and password, I shared the same with the Plaintiff's Counsel for printing and filing before this Hon'ble Court."
8.41 Referring to above paragraphs, it was submitted that PW-1 has stated that the said data/screenshots have been taken from the Laptop regularly used by him, however, it cannot be the case as there arise blatant anomalies as to the existence of two completely different versions of Advisor Software Le Beta Lens 1 and Beta Lens 2 installed on the very same laptop. The same is clearly not possible and unknown to the realm Page 333 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of any computing device.
8.42 It was submitted that coupled with the above anomaly, these data outputs can easily be self-generated at the convenience of the plaintiffs as file name can easily be altered as per their whims and fancies, and also user interface of a website can be quickly made on a photoshop tool too, which is more so evident in view of the anomaly in the email address/username mentioned in the affidavit of PW-1 versus the one mentioned in the screenshot that the plaintiffs are attempting to get exhibited.
8.43 It was submitted that not only that, there is no authenticity/mapping between the characteristics/ Page 334 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined properties/carat other attributes of the stones as allegedly scanned through the defendants and the screenshot of the report shown in PW-1/26.
Furthermore, there is no
linkage/mapping that the diamonds
reported in this report were the same diamonds as allegedly obtained/scanned from/by the defendants.
8.44 It was further submitted that no invoices/receipts have been put forth by the plaintiffs to substantiate that the said stones were scanned by Defendants and the same has also been heavily questioned to the PW-1 Witness in the questions referred above. Considering all of these factors, the said evidence by the plaintiffs are inadmissible on the face of it. Page 335 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.45 As regards PW-1/27, it was submitted that the said report is self- generated/prepared and claims to have analyzed the so-called data output received from the Defendants, which is being strongly objected to on admissibility and genuineness. Also, PW-1/27 is merely a report that has been self-generated by the plaintiffs at their own convenience and therefore there is no authenticity of the Report and that it was even created/authored by PW-1. It was submitted that in any case, if this Court is inclined to admit the said documents, Defendants strongly dispute and would argue the evidentiary value and relevance credibility of these documents. Page 336 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.46 Insofar as Exh. PW-1/28. PW- 1/30, PW-1/32-35 are concerned, it was submitted that i.e. Court Commissioner Report per se, while the Defendants have raised several preliminary objections regarding the content of the said Report in the Written Statement filed before this Court on Page No. 625 to 632 of Vol 1, the Defendants have no objection as far as exhibiting the said report, and it is requested that the report submitted by the Court Commissioner itself be admitted and not Exh. PW-1/28.
8.47 With regard to Exh. PW-1/31, it was submitted that defendants strongly object to the same as the Court Commissioner went beyond his jurisdiction and mandated the Page 337 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants witness to lead evidence by asking the Defendants to explain the working of the Defendants diamond scanning machine and recording his statement to suit the Plaintiff's convenience. Admissibility of the document on ground on this alone should be denied. It was submitted that in any case, if this Court is inclined to admit the said documents, Defendants strongly dispute and would argue the evidentiary value and relevance/ credibility of these documents. 8.48 With regard to document at Exh.PW-1/29, it was submitted that while the plaintiffs declared and stated before this Court that they do not intend to get the Exh. PW-1/29 admitted, defendants hereby place it on Page 338 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record that the video of Defendants private premises was recorded completely illegally, and without any approval/authorization from the Defendants or from the Local Commissioner. PW-1 was also questioned during the cross examination on such illegality vide Question Nos. 206-207 of PW-1's Cross Examination. 8.49 Insofar as Exh. PW-1/36 is concerned, it was submitted that while the plaintiffs do not intend to get the Exh. PW-1/36 admitted, it is pertinent to note that even for these data output reports, the plaintiffs have not disclosed from where the diamonds were procured, from where the data output reports were obtained, any evidence that these reports were even generated Page 339 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the Defendants. It was further submitted that upon careful perusal of the said document, it is clear that the same is not an exact reproduction of the so-called original since one can see arrow marks and numbering done over the alleged screenshot thereby making it completely inadmissible and not only that, Para No. 7 of PW-1's Certificate under Section 65B clearly states that "I further say that the electronic records mentioned at S. No. 24 of the table set out in Para 10 hereinafter, are screenshot of data output reports issued by the Defendant No. 1. as reflected in Plaintiff No. 2's software, which screenshots taken by me after accessing the reports which were provided to me by one of the customers Page 340 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and shared by me with the Plaintiffs counsel for printing and filing before this Hon'ble Court"
8.50 It was therefore submitted that the said document was firstly provided by a third party i.e., customer and secondly, there is no authenticity attached to the so-called data output since the plaintiffs failed to produce on record the said diamonds against which the alleged report was generated in the first place. The customer herein therefore is, if at all, the original author of the reports, and therefore unless the 65B certificate from the customer is placed on record, and the chain of custody of the reports is established, the data output records cannot be admitted. Additionally, there Page 341 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is no genuineness of the reports to evidence that they were even generated by the Defendants as they are not supported by any invoice, receipt, or any other documentary evidence if it being generated by the Defendants. It was submitted that PW-1 was also questioned on these reports vide Question nos. 237-239.
8.51 With regard to Exh. PW-1/37 which is a print out of Trade Report -
200 vacuum pumps, it was submitted that Exh.PW-1/37 is disputed in view of the fact that no appropriate Section 65B Certificate has been placed on record with respect to the same, and that the contents of the said document are not proved to be available on the public domain. Moreover, upon cursory perusal Page 342 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the 65B Affidavit placed on record by the counsel for the plaintiffs at a belated stage has no mention of the exact link from where the said document has been downloaded. It was submitted that the counsel for the plaintiffs in Para No. 2 of his Certificate under Section 65B affidavit states that "2...
The documents mentioned at S No. 15 to 27 are printouts as downloaded from the websites www.ipindia.gov.in and www.52wmb.com wherein no trade reports are per se available on ipindia.gov.in/ and 52wmp.com is seemingly a hoax website that does not have any credibility or genuineness and can be created by anyone to suit their respective interests. It was submitted that upon accessing www.52wmb.com, the Page 343 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined only page that opens up on the browser is the Home Page of the said website in Chinese Version which when opened by converting to English has a header stating "Find Your Potential Target Customers" and that there is no access to PW-1/37 on the said website link as blatantly lied by the Plaintiffs on oath before this Court.
8.52 It was submitted that apart from that the said website www.52wmb.com is not an authentic government website and the same is simply a Chinese platform for people to "find and verify target companies, a platform for trade companies to share information and expand business." It is merely a Chinese platform wherein which they publish data for the purpose of Page 344 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined providing business development to companies.
8.53 It was submitted that on perusal of the User Agreement of the said Website, in Clause 11 of the same, the said Website in clear terms state that "Users shall be solely responsible for the authenticity, lawfulness, and effectiveness of the uploaded information. We will not assume responsibilities for any information recorded, uploaded or downloaded by you as it does not reflect our view or policies".
8.54 It was therefore, submitted that since the said website itself does not claim any responsibility or authenticity of the documents so Page 345 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined uploaded by them, the same in effect becomes inadmissible in law and notwithstanding the fact that there is no such link that has been made available by learned counsel for the plaintiffs for the said document so claimed to be a Trade Report, the genuineness and authenticity of the same is questionable and thus, the same cannot be allowed to be exhibited by this Court.
8.55 It was submitted that in any case, if the Court is inclined to admit the said documents, Defendants strongly dispute and would argue the evidentiary value and relevance/credibility of these documents.
8.56 Learned Senior Advocate Mr. Page 346 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Soparkar thereafter referred to document at PW-1/38 which is image of vacuum pump used in the plaintiff's galaxy machine and submitted that no details of the source of the image, and the manner in which it was obtained/captured has been detailed out in the mobile device including the time and how it was transferred on to the computer. Even if it was captured from a physical machine, photo of the complete machine, model/serial number thereof, and details of the premises where the machine is positioned ought to have been mentioned, none of which has been done, leading to scenario where source of the image cannot be ascertained at all. As the image captured by the mobile/recording device Page 347 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined would have been eventually transferred to the laptop at the time of preparation of affidavit, no flow of transfer of camera output is detailed in the 65B affidavit which in itself makes the Affidavit filed by PW-1 not in consonance with the provisions mandated. Also the image does not seem to have been taken from any premises and seems to have been taken/downloaded directly from the Internet. It was submitted that in any case, if this Court is inclined to admit the said documents, defendants strongly dispute and would argue the evidentiary value and relevance/credibility of these documents.
8.57 With respect to Exhs.PW-2/1, PW-4/1, PW-4/X1 PW-4/X2, and PW-4/X4, Page 348 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined learned Senior Advocate reiterated that the content of the video is heavily objected to and that the videos completely fail to demonstrate or show any so-called vacuum pump in any manner whatsoever and include numerous anomalies inconsistencies that make the videos unreliable, fudged, and manipulated.
8.58 Insofar as chain of custody for Exh. PW-2/1 along with Exh. PW-4/X2 is concerned, it was submitted that PW-2 has claimed to have captured the video on 22nd March 2019 and gave the camera embedded in the shirt back to PW-4 on 23 March 2019 (Para 15-16 of Affidavit). In reference to Q. No. 121- 133, PW-2 stated that he gave the shirt having camera to PW-4 and did not Page 349 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined possess any article thereafter. However, it was submitted that PW-2 never had a copy of the video as the camera-shirt was given to PW-4, who in turn gave it to the Advocate. Thereafter, the Advocate for the plaintiffs extracted the videos from the Camera and then filed it through the affidavit of PW-2. PW-2 therefore did not possess the video per se and hence never downloaded it himself on the computer. Mode of proof and power and possession is therefore heavily questionable in view of the lack of any 65B Certificate filed by PW-2. 8.59 It was submitted that even as regards the original camera enabled shirt Exh. PW-4/X2, in answer to Q. 177, PW-4 has stated that he had given Page 350 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the article to the advocate but in answer to Q. 105, while tendering the original, counsel for the plaintiffs stated in Point (4) that "witness had to also retain the camera enabled shirt used by PW-2 for recording the video..", and therefore the chain of custody and the genuineness of the so- called primary evidence is heavily questionable. It was submitted that in answer to Q. 175 and 176, PW-4 also stated that he gave the camera-enabled shirt to his Boss Mr. Arnav Sharma, which further distorts the complete chain of custody and genuineness of the so-called primary evidence. 8.60 It was submitted that if at all, PW-2 was the sole author of the video and should have submitted the so- Page 351 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined called primary evidence which was not done and it was done by the advocate through PW-4 through conflicting statements.
8.61 Learned Senior Advocate thereafter referred to chain of custody for Exh.PW-4/1 along with PW-4/X1 as under:
a) PW-3 recorded the so-called videos (Exh.PW-4/1) using the so-called camera enabled spectacles (Exh.PW-4/X1). PW-3 has claimed to have worn Exh.PW-4/XI for the first time on 6th Sep 2018 (Para 14 of the Affidavit), and after 3 attempts, procured the videos and photographs. It was submitted that only videos are placed on record but no photographs have been placed on record Page 352 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by PW-3 or PW-4 or by the plaintiffs till date.
b) In Para 13 of the affidavit, PW-3 also states that PW-4 gave him a pair of spectacles without camera to him to get familiarized with over the next 4-5 days. In answer to Q. 53, PW-3 stated that he met PW-4 for the first time on 6th Sep 2018, and therefore as he has claimed to have worn Exh. PW-4/X1 for the first time on 6th Sep 2018 (Para 14 of the Affidavit), how could PW-3 have worn spectacles without camera (given to him by PW-4) for 4-5 days before wearing Exh.PW-4/X1 if he met PW-4 for the first time an 6th September, 2019, there is therefore a complete disruption in the chain of custody.Page 353 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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c) In Para 15 of the affidavit, PW-3 stated that the Exh. PW-4/XI was in possession of PW-4 at all times and was given to him only before entering the Defendants' premises and was then handed back over after working hours.
d) In Para 16, PW-3 states that procured videos and photographs on 6th, 7th, and 13th Sep 2018 but no recording could take place on first two dates but he still states in the preceding line that he procured videos and photographs on 6th, 7th Sep 2018. Again, till date, no photographs have been placed on record by the plaintiffs.
e) In Para 19, PW-3 claims to have handed over the Exh.PW-4/X1 to PW-4 on 14th Sep 2018. In answer to Q. 79-80, Page 354 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-3 confirmed that he returned Exh.PW- 4/XL on 14th Sep 2018 at 9 AM. The videos were transferred by PW-4 to his personal device (Ref to Para 8 of PW- 4's Affidavit) and were shown to PW-3 (Q. 83). PW-4, in answer to Q. 155, confirms that he took the camera embedded in the spectacle on 14th Sep 2018 at around 9 AM and downloaded on his laptop system and called his Boss (Mr. Arnav Sharma) and then with advocates on 25th March 2019. Additionally, in answer to Q. 170, PW-4 said that the videos he shared with Mr. Arnav Sharma which in turn was shared with Advocates on 15th Sep 2018.
f) Answer to Q Nos. 86-89. 103-104 to PW-3 and Q. 142-149, and 154 indicate various anomalies in the videos. Page 355 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.62 Learned Senior Advocate Mr. Soparkar thereafter submitted arguments on non-admissibility of Exhs. PW-2/1, PW-41, PW-4/X1 PW-4/X2, and PW-4/X4 stating that on perusal of the List of Witness dated 05.03.2019 filed by the plaintiffs wherein the plaintiffs have mentioned at Sr. No. 5 about three Ex- Employees of the Defendants However, in complete contrast, PW-2 is being claimed to have been under employment of Defendant No. 1 till 23rd March 2019 (i.e., he was not an ex-employee as on the date of submission of the list of witnesses), and therefore he was not even a witness that should have been allowed to depose in view of the fact of list of witnesses submitted by the plaintiffs. It was submitted that the Page 356 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavit of PW-2 and the so-called video tendered vide Exh. PW-2/1 are unreliable, fraudulent and incapable of being admitted.
8.63 It was submitted that in Para No. 16 it is stated that "video obtained by me with the help of camera enabled shirt is being tendered in evidence and is marked as PW-2/1. The relevant screenshots of the video procured by me, are extracted as follows." It was submitted that this statement is incorrect and contradicts the answers given during the cross examination, wherein he admitted that Advocate Pankhuri Bhardwaj prepared the affidavit (answer to Q. 5), and therefore, if at all, she was the one who had included the screenshots/videos Page 357 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined along with the affidavit. Also, 65B Certificate issued by Advocate Mr. Ishwar Upneja therefore, cannot be considered as valid 65B certificate. It was submitted that by merely relying on case of Arjun vs. Kailash, Ishwer Upneja (Advocate of the Plaintiff) has filed 65B affidavit in which he states in Para No. 3 that "I further say that the videos at S No. 29 was uploaded by me in DVD which was provided to me by PW-4. Dinesh Shukla" This declaration is completely false and incorrect as PW-4, at least in answer to Q. No. 178, has confirmed that he had given the shirt embedded with the Camera to the Advocate, and it could not have been the case that PW-4 extracted the videos and gave it to the Advocate. It Page 358 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined was therefore, submitted that the power, possession, and transmission of the electronic record including the so- called primary evidence clearly indicates the fraud played by the plaintiffs and also there is no 65B certificate from Advocate Pankhuri who is said to have prepared the affidavit and included the screenshots and the tendered the video through PW-2. 8.64 It was further submitted that defendants are also not aware if the video stored in the camera memory even corresponds to and is the same as the video tendered by PW-2 and/or PW-4. The videos can be procured through any other means and placed in the spectacle camera memory. Defendants also strongly objected to the premises being that of Page 359 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Defendants as numerous questions such as Q. 133-135 to PW-2, and Q. 12, 104-105 to PW-3 have been asked. It was further contended that videos in the memory of the so-called primary evidence were deleted/modified to correspond to or be replaced by the videos as have now been tendered by PW- 2 and PW-4 and therefore, solely because primary electronic evidence is placed, authenticity/accuracy/ originality of the same cannot be automatically assumed especially when PW-2 and PW-3 are not even visible in the said videos.
8.65 It was submitted that PW-4 in Para No. 7 of his affidavit has admitted that PW-3 (Desraj) carried out the video recording (Exh.PW-4/1) using Page 360 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the camera enabled spectacles (Exh.PW- 4/X1) which was given by PW-4 on 14.09.2018. It was therefore, submitted that this, in effect clearly proves that PW-4 is not the author of the said videos in the first place upon perusing his very own affidavit. Therefore, the video at Exh.PW-4/1 is inadmissible on the basis of the above-mentioned fact alone as it was PW-3 who recorded the alleged premises of Defendant No.1 and that it was PW-3 who ought to have placed it before this Court along with 65B Certificate and not PW-4. Attention of the Court was drawn to answer to Q. No. 105 of cross- examination of PW-4 through which Exh. PW-4/X1 was placed on record by PW-4 and the same was heavily objected Page 361 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to by the Defendants since the said spectacles were used by PW-3 in September 2018 and that he had all the opportunity to place it on record. Furthermore, in response by the Plaintiff's Counsel to the objection at Sr. No. 3 it was stated that "original spectacles had to be retained by this witness for safety and security reasons and the sealing of the said spectacles was required to ensure that there is no tampering of the original." It was submitted that the same confirms that PW-3 was the author of the said recordings in the spectacles and therefore the chain of custody and the genuineness of the so-called primary evidence as well as the video is questionable.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.66 It was further submitted that in answer to Q No. 155, PW-4 confirmed that he received the video on 14.09.2018 (recorded by PW-3) and that after downloading it in his laptop, he called up his Boss (Aarnav Sharma) and informed him about the same. PW-4, in response to Q No. 157, also stated that he shared these videos with the Advocates on 25.03.2019.
8.67 Learned Senior Advocate Mr. Soparkar submitted that the screenshots filed by PW-4 claiming to have been extracted from video captured by PW-3 showing Defendants Premises have exactly been reproduced of PW-9 (Inventor of the Suit Page). Upon asking in Q. 163, PW-4 confirmed that he never sent these photos to PW-9. PW- Page 363 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9, in Para 19 of his affidavit, stated that "An image of data output generated by the Plaintiff's machine in the presence of a device for removal of air and/or gas bubbles is extracted as follows", which image is exactly the same as captured from the videos tendered by PW-4 and said to have been captured by PW-3. Upon asking PW-9, in Q 126, he re-confirmed that these images were taken in Israel itself and therefore it was submitted that it is beyond any doubt that the videos as tendered along with the so-called primary evidence are not original, authentic, and genuine. It was further submitted that in response to Q. No. 170, in an attempt to wriggle out of the anomalies in the said videos and Page 364 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined screenshots asked in the previous questions, gave a completely tutored answer that "When I was talking to my Boss earlier today regarding my testimony, My Boss told me that the videos recorded by Mr. Desraj that I shared with My Boss were further shared by him on 15.09.2018 with the client. He also told to be that the screenshots that are extracted in my affidavit are those screenshots which were taken by the client on 17.09.2018 and were shared by the Client with the Advocate, since the screenshots which were taken by me were not clear enough." It was therefore, submitted that there is a clear misrepresentation in the affidavit of PW-4 and that there is no proper chain of custody proved by the Page 365 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs with respect to Exh. PW-4/1 and Exh. PW-4/X1 in view of the fact the author of the said videos never placed it on record and that there is nothing on oath to prove the chain of events as to the videos attempted to place on record which in effect is inadmissible since it raises serious question of authenticity of such evidence.
8.68 It was submitted that with regards to 65B certificate of PW-4 which forms part of the affidavit, it is completely faulty on multiple grounds as under :
(i) Numerous questions as to the laptop were put to PW-4 at Q136-137, 163-164 of Cross-Examination of PW-4.Page 366 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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(ii) PW-4 has claimed that the screenshots attached by him are taken from the videos taken by PW-3, wherein the screenshot clearly indicates that they were taken in Israel as the Software File System indicates the language being Hebrew. Not only that, the operating system in the screenshot is also indicated to be of Windows, whereas PW-4 said he used a MAC laptop for the screenshots. (Q. No. 162, 163,
164)
(iii) The facts pertaining to the Arjun Panditrao case is completely different as the CD pertaining to a video taken in election premises using CCTV camera (where all the involved parties are visible), and not in the surreptitious Page 367 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined manner in which the plaintiffs have claimed to gather video using PW-2 and PW-3 in which neither the original claimed author is visible nor did they tender the videos from their end including numerous discrepancies that form part of the video to suggest that they were neither taken at the premises of the defendants nor they were the employees of the defendants. 8.69 Learned Senior Advocate Mr. Soparkar thereafter submitted that it is necessary to satisfy the four conditions under Section 65B(2) for the videos in question before this Court, and in the present case, the same is not satisfied on account of the following reasons:
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(i) There is no statement in the Affidavit as to clarifying that the video recording has been produced by the Computer during the period over which it was regularly used to store or process information for the purpose of any activity regularly carried on over that period by the person having lawful use of that computer. There is no affidavit by PW-2 regarding details of the computer article device used by him to download the video from the spy cam, nor details of the chip from which it was downloaded.
(ii) No submissions have been made that the video that was derived was regularly fed into the computer as the video, if seen automatically, cuts off at a particular timing without any Page 369 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined uniformity, thereby raising a huge doubt that the said video is not authentic and has been tampered with.
(iii) Major concern pertaining to authenticity and reliability of the content of the video from the computer.
(iv) No clarity as to whether the information contained in the video is a reproduction or derivation from the information fed into the computer in the ordinary course of the said activity.
8.70 Learned Senior Advocate Mr. Soparkar submitted that the defendants strongly object to authenticity and genuineness of the videos including the so-called primary evidences placed on Page 370 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record. The Defendants unambiguously object to the authorship, premises, and employment of these witnesses and have comprehensively cross-examined all the witnesses on these aspects. 8.71 It was further contended that the primary evidence ought to have been filed by the author himself, which is not at all done as neither PW-2 nor PW-3 tendered the so-called primary evidences from their possession. Also, as the DVD videos do not have the faces of the authors, there is no basis to prove that the so-claimed author's PW-2 and PW-3 even captured these videos, and on this basis along the videos ought not to be admitted. It was submitted that in para 72(b) of the decision in case of Arjun Panditrao Page 371 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (supra), it is stated that "clarification referred to above is unnecessary if the original document itself is produced. This can be done by the owner of the laptop computer, by stepping into the witness box and proving that the concerned device, on which the information is first stored, is owned and/or operated by him". It was submitted that as the device herein is the shirt having the camera, and it was operated for the purposes of recording only and solely by PW-2, how can the plaintiffs' Advocate through PW-4 submit the same as PW-2 did not tender it and was not cross examined on this aspect at all, and therefore did not prove this shirt at all. 8.72 It was submitted that it is on Page 372 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record that the defendants were never given access to these so-called primary evidences, and were never given an opportunity to cross examine the witnesses on the same. The defendants also strongly contend that the plaintiffs have miserably failed to prove that these so-called secretly taken primary evidences are actually the original articles using which the fabricated videos were captured, especially in view of the fact that the tendered videos do not even show the face of the authors. It can be any third party that captured the videos from any remote location and submitted it through the witness claiming it to be the original author.
8.73 With regard to Exh.PW-4/X4, it Page 373 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined was submitted that PW-4 tendered the pen drive vide QR.6 at a much belated stage as an afterthought as part of the re-examination which took on the next day of the completion of the cross- examination, wherein it was said that the DVD filed at Exh.PW-4/1 had four clips, and two clips were missing, and therefore a new pen drive was given as Exh.PW-4/X4 having the six clips. It was submitted that the defendants heavily object to the reliability and genuineness of the pen drive and the contents thereof as if PW-4 would have genuinely retrieved the videos from the camera memory, all the six clips would have come in a single DVD and therefore, there is no genuineness and authenticity to the two clips that were Page 374 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined missing and newly added, specifically when PW-4 is not even the author of the videos and only claims to be the handler for PW-2 and PW-3.
8.74 Thereafter learned Senior Advocate Mr. Soparkar referring to Exh. PW-1/XS-X8 which is Video Conference with Ashishbhai and Presentation, it was submitted that keeping aside the fact that the complete video clearly includes only and solely commercial negotiations between the parties without prejudice, and the plaintiffs are falsifying and misrepresenting the video to be an admission with respect to the Suit Patent, it was submitted that the said Video Conferences and the Presentation placed on record by the plaintiffs are grossly inadmissible on Page 375 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined account of the fact that the same was carried out "Without Prejudice" to the case pending before the Courts and it was explicitly mentioned to be solely for commercial negotiations/ discussions. It was submitted that however, PW-1 in a covert manner went on to record the conversation using a secret recorder, and has placed it on record in an attempt to mislead this Court. It was further submitted that in the said video of Exh.PW-1/X5 at time stamp 24:36, the Defendant No. 10 clearly states that the presentation and information shared with PW-1 is not to be misused in any manner whatsoever. Thus, on account of the same, the said documents ought not to be admitted by this Court and even the presentation Page 376 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined being referred to was given first to Ms. Rajeshwari and then sent by email/digital means to PW-1, and therefore, as no 65B certificate has been given by Ms. Rajeshwari in this context, the presentation cannot be admitted.
8.75 Learned Senior Advocate Mr. Soparkar thereafter referred to Exh.DW2/X3 which are six screenshots claimed to have been generated by the Defendants and submitted that these documents have not been proved by any one and are being claimed to have been generated by the Defendants to a customer, no details of which have been placed on record and the said customer has also not entered into the witness box and therefore, the genuineness and Page 377 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined originality of the reports is fundamentally at question as there is no reason to believe that they were ever generated by the Defendants. It was submitted that the plaintiffs have miserably attempted to mislead the Court by stating that as the witness did not explicitly dispute these screenshots being generated by the Defendant No. 1, they are deemed to be admitted. It was submitted that the witness DW-2 is a not a legal expert and does not possess any legal knowledge to appreciate that each and every word/phrase is to be refuted. He was simply asked in Question No.238 about the presence of bubbles, and he confirmed that he can see some bubbles, subsequent to which the defendant's Page 378 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined counsel strongly objected to the admissibility of the screenshots as they not being generated by the Defendants especially in view of the fact that the Plaintiffs have not placed on record any invoice, receipt, online record, of any other information to substantiate that these screenshots are generated by the Defendant No 1 and even the fact that the screenshots were taken by the laptop of PW-1 is heavily objected.
8.76 Thereafter referring to Exh.DW- 9/X2 which are audio recordings of DW-9 with Mr. Arnav Sharma, it was submitted that keeping reserved their objections as regards the evidentiary value of this document, the defendants have no objections to the document being Page 379 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined admitted on record.
8.77 Learned Senior Advocate Mr. Soparkar thereafter submitted reply of the defendants to the application dated 29.11.2021 filed by the plaintiffs under Order XIV Rule 5 of the Code of Civil Procedure, 1908 for framing of additional issues and purshis dated 23.12.2021 filed by the plaintiffs for further framing other additional issues.
8.78 Learned Senior Counsel at the outset, submitted that the Application dated 29.11.2021 and Purshis/ Declaration dated 23.12.2021, filed by the Plaintiffs is devoid of any merit whatsoever and is liable to be rejected by this Court on the face of it. Page 380 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.79 It was submitted that upon cursory perusal of the said application dated 29.11.2021 and Purshis dated 23.12.2021 filed by the plaintiffs, nowhere has the plaintiffs justified the need for filing such an application before this Court knowing very well that they do not have any right whatsoever in that regard and even even otherwise, the bereaved attempt by the plaintiffs requesting this Court to frame such additional issues is nothing but preposterous and a wastage of precious judicious time since the said Application is coming at the stage of Final Arguments after a period of 5 years from the filing of the said suit. 8.80 It was submitted that since the Page 381 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs accepted the said issues framed vide Order dated 19.02.2019, it stood accepted that the Plaintiffs are not pressing on other purported claims by the plaintiff and that at this juncture, the plaintiffs' application ought not to be allowed by this Court on account of the same.
8.81 It was submitted that this Court vide Order dated 19.02.2019 was pleased to frame all issues in relation to the dispute at hand, between the parties and the same was accepted as well. It was submitted that the issues were framed in the present matter nearly three years ago and, after framing of such issues, significant time-period having lapsed, the plaintiffs have only now realized to Page 382 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plead additional issues. It was submitted that the same is nothing but an afterthought and this application is nothing more than an attempt to harass the Defendants and mislead the Court.
8.82 It was submitted that the present suit was instituted by the plaintiffs in the year of 2017, i.e. nearly five years ago and in these five years, the Plaintiffs did not press for damages as part of an issue, or that damages be awarded to them, or to raise any other additional issues and even otherwise, upon cursory perusal of the pleadings in Para No. 45 of the plaint, the witness need to be cross-examined exhaustively since the same was not questioned extensively in view of the Page 383 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined fact that it did not form part of the issues framed before this Court. Referring to said paragraph no.45, it was submitted that the basis on which the said damages being claimed and the non-clarity pertaining to the quantification are nothing but vague and that the same would have been put to exhaustive cross-examination if the same formed part of the issue so framed in the year 2019.
8.83 Insofar as the purported issues being requested to be framed in Purshis/Declaration dated 23.12.2021 is concerned, it was submitted that it is not the first time that the plaintiffs have raised such an issue before this Court. In application Exh. 64, the Plaintiffs sought directions from the Page 384 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court not to take on record the Written Statement, Revocation as "Counter Claim" and Reply to Application under Order 39 Rule 1 & 2, to which the Commercial Court, Vadodara (Comm TM Suit No. 9 of 2017) vide Order below Exh. 64 dated 18.09.2017 allowed the Defendants to cure the defects in affidavit and statement of truth and took the Written Statement as well as Counter Claim on record and accordingly, the Defendants cured the defects and filed Board Resolution along with Authority Letter before the Court at Exh. 66 in compliance to the directions issued by this Court. 8.84 It was submitted that the parties have already led evidence on all the issues framed as on 19.02.2019 Page 385 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and the trial is at the stage of final arguments after closing of evidence, and for the plaintiffs to wait to file such an application at this belated stage, speaks at length of the intentions of the plaintiffs, which is nothing more than to waste the precious time of the Court and to derail the process of justice and to further deny the defendants of its legal rights available under law. It was therefore, prayed to reject the application filed by the plaintiffs and reprimand the plaintiffs for their sordid effort to mislead this Court.
8.85 It was submitted that the plaintiffs in their application dated 29.11.2021 for framing additional issues and Purshis Declaration dated Page 386 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 23.12.2021 have not furnished any explanation whatsoever as to why the application could not be filed earlier. After closure of evidence, the plaintiffs were silent about the purported issue and when the final arguments commenced and the matter was being heard finally, an application for framing additional issues has been filed by the Plaintiffs. It was submitted that the plaintiffs had full knowledge about the purported issue as claimed by them and that since they were aware of the same, they ought to have made the said application in time and not at such a belated stage of final arguments only to derail the process of justice and even otherwise, if the said application is allowed, Page 387 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined there would be fresh recording of evidence to determine the same recalling all the witnesses relevant for the said issues being claimed by them by way of the Application under Order XIV Rule 5 of the Civil Procedure Code, 1908 and Purshis/Declaration dated 23.12.2021.
8.86 Learned Senior Advocate thereafter submitted reply to the purshis dated 22.12.2021 filed by the plaintiffs for placing on record original non-redacted invoices which correspond to invoices tentatively exhibited at Exh.PW-1/1 to Exh.PW-1/11. It was submitted that at the outset the Purshis dated 22.12.2021 filed by plaintiffs to take on record so-called original non-redacted invoices which Page 388 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined allegedly corresponds to the tentatively exhibited invoices at Exh.PW-1/1 to Exh. PW-1/11 is nothing but an attempt to mislead this Court and waste the precious judicial time of this Court, notwithstanding the fact that the redacted invoices tentatively exhibited as Exh.PW-1/1 to Exh.PW-1/11 in effect are non admissible in view of the defective 65B affidavits by PW-1 and Mr Ishwer Upneja, and the attempt of plaintiffs to file such invoices in sealed cover goes against the principles of natural justice and law of admissibility of evidence. 8.87 It was submitted that it is only at the belated stage of final arguments, knowing very well that their 65B Affidavits are not in consonance Page 389 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with the provisions of law, the plaintiffs filed so-called original invoices in a sealed cover of which the Defendants were never provided with a copy in the first place, and therefore were never given an opportunity to cross-examine the witness. 8.88 It was submitted that Plaintiffs cannot be allowed to file the original invoices on record considering the very fact that the redacted invoices which were placed on record at Exh. PW-1/1 to Exh.PW-1/11 suffer from irregularities that have already been pointed out in the replies to Purshis filed by the plaintiffs seeking to place on record 65B Affidavit of PW-1 and Mr Ishwer Upneja. Page 390 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.89 It was submitted that it is only at the stage of final arguments did the plaintiffs for the very first time mention about alleged ERP Server on which they allegedly maintain a record of the invoices. This argument in itself is flawed since the suit was filed in the year 2017 and there was not a single mention of the alleged ERP server which the plaintiffs ought to have specified as per the mandate of Section 65B of the Indian Evidence Act. 8.90 It was further submitted that if the said Invoices are taken on record, it will lead to reopening of Evidence at the stage of Final Arguments since no copy of the so- called original non-redacted invoices have been provided to the defendants Page 391 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined till date and that it is the right of the Defendants to cross-examine the Witness upon the so-called original invoices which allegedly corresponds to Tentative Exhibits PW-1/1 to PW-1/11. 8.91 It was submitted that the so- called original invoices cannot be deemed to be original solely because the plaintiffs claims them to be so and, it goes very much against the rights of the defendants available under law. It was further submitted that whether such invoices in the sealed cover are actually the originally issued invoices and the authenticity/genuineness of the invoices cannot be ascertained/ validated in any manner whatsoever without being questioned to on that Page 392 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined aspect and even otherwise, the said documents filed by the Plaintiffs can be easily fabricated since it is available in a digital medium and without ascertaining the authenticity of the same, which the Plaintiffs have miserably failed to do so, the said documents cannot be admissible on account of the same. It was submitted that the said invoices tentatively exhibited as Exh.PW-1/1 to PW-1/11 are not even signed either digitally or otherwise and therefore, their authenticity and genuineness cannot be ascertained as they can easily be self- generated by the plaintiffs at their sole convenience. It was submitted that the digital invoices always need to carry a digital signature which the Page 393 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined invoices Exh.PW-1/1 to 1/11 do not even remotely carry and therefore in the absence of their issuance/execution details, their credibility always remains in question.
8.92 It was therefore, prayed to dismiss the said Purshis dated 22.12.2021 filed by plaintiffs to place on record the so-called original non- redacted invoices which allegedly corresponds to Exh.PW-1/1 to Exh.PW- 1/11.
8.93 Learned Senior Advocate Mr. S. N. Soparkar further submitted that there are two hurdles which the plaintiffs in the present matter have to cross before the defendants need to go into the factual aspect as to Page 394 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined whether there is an infringement or not. The first is there are no pleadings by the Plaintiffs in their plaint pertaining to vacuum pump or 'device for withdrawal of gas bubbles' and second, Counter Claim arguments put forth by the defendants that the suit patent is liable to be revoked by this Court. It was submitted that the pleadings are the foundation upon which the whole case revolve around. Thus, once the pleadings are filed, the evidence must be confined to the pleadings. No amount of evidence ought to be examined by this Court outside/beyond the scope of whatever that has been pleaded in the suit. It was therefore submitted that in the present suit, it becomes of utmost Page 395 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined importance to analyse what are the pleadings which were made by the plaintiffs in the present suit pending adjudication before this Court. It was submitted that the core arguments put forth by the plaintiffs in their pleadings being that the defendants are using Selenium, which according to the plaintiffs is part of the suit patent and that the defendants are allegedly infringing the Suit Patent. It was submitted that on the contrary, the evidence led by the plaintiffs are in the nature of alleged infringement of said system including a device for withdrawal of gas bubbles from the said material. Referring to paragraph nos. 3, 6, 7, 8, 9, 10, 11, of the plaint, it was submitted that nowhere in the Page 396 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined said paragraphs, there is not a single mention of "removal of bubble". 8.94 Referring to paragraph nos. 27, 28 and 29 of the plaint, it was submitted that there is not a single evidence with respect to the allegations made in the said paragraph, more particularly, referring to paragraph no.29 it was submitted that in the said paragraph allegations were made pertaining to presence of selenium in the diamonds submitted through private investigator and that Selenium is an active component used in the process of detecting inclusions in rough stones and also an integral part of the Suit patent. It was submitted that primary argument of the Plaintiffs was that the said report coupled with Page 397 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the analysis of the data output shared provided by the defendant No.1 to the private investigator, prove beyond any doubt that the machines used for scanning and mapping the rough diamonds employ the Suit Patent. Learned Senior Advocate Mr. Soparkar submitted that nowhere in the plaint, the term "said system including a device for withdrawal of gas bubbles from the said material (220)" is present except while copying the whole claims in Para No. 19 of the Plaint wherein suit specifications have been reproduced. It was submitted that there is no amendment made by the plaintiffs with respect to this, and therefore, according to the pleadings made, the presence of selenium is according to Page 398 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined them, their suit patent and that in view of the earlier patent application no. 876 which stood refused evidently destroys the whole case of the plaintiffs and that no infringement has been done by the Defendants. 8.95 It was submitted that application under Order 26 Rule 9 and Order 39 Rule 7 read with Section 151 of the Code of Civil Procedure, 1908 was filed by the plaintiffs for appointment of Local Commissioner. It was submitted that in para No. 7, again, the plaintiffs talk about the diamonds submitted through Private Investigator and got it "tested for Selenium Residue" and that the report coupled with the analysis of alleged data output (which is disputed heavily Page 399 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by way of objections in the first place) shared by the Defendant No. 1 to private investigator, allegedly prove the presence of selenium and accordingly the plaintiffs prayed that Local Commissioner may accordingly be appointed on this basis. It was submitted that Local Commissioner in his report has confirmed that there was no vacuum pump.
8.96 Learned Senior Advocate Mr. Soparkar referred to paragraph no.43 at page 78 of Part IV of the Court file wherein it is stated that the plaintiffs learned from reliable sources that just five days before the date when the court commissioner inspected the premises of Defendant No. 1, at around 2 AM, Defendants had got Page 400 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined removed all vacuum pumps by loading them in a public carrier vehicle. It was submitted that no evidence was produced by the plaintiffs for this assertion. Moreover, it is submitted that if the plaintiffs knew about this assertion, then why did the plaintiffs want the Court Commissioner to be appointed. It was submitted that making such an application for appointment of Court Commissioner clearly shows their objective as to the reason why Court Commissioner was sought to be appointed being for confirming the presence of selenium and this brings out the crucial aspect that evidence has been led in variance to the pleadings made in the plaint by the Plaintiffs. Page 401 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.97 In support of the contention that pertaining to Variance of Pleadings to support the arguments of the Defendants that evidence has been led by the plaintiffs in complete variance to their pleadings made, reliance has been placed on the following decisions:
i) In case of Janak Dulari Devi & Anr.
Vs. Kapil reported in (2011) 6 SCC 555,wherein Hon'ble Apex Court held as under -
"8. In the plaint, the specific plea of the plaintiffs-
appellants in regard to payment of Rs. 17000 was that it was initially agreed that the consideration would not be paid at the time of execution and registration of the sale deed, but would be paid later, against exchange with the Registration Receipt; that the appellants paid Rs. 17000 to the second respondent at the Page 402 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined time of registration of the sale deed; and that though the appellants were ready to pay the balance of Rs.5000, the second respondent stated that he would take the said amount when he needed it in exchange of the registration receipt. But the evidence led by the appellants was contrary to the pleadings. PW3 (the attesting witness to the sale deed), PW4, PW6 (first plaintiff) and PW7 (husband of the first plaintiff) deposed that a sum of Rs. 17,000 was paid to the defendant at the residence of the first plaintiff, that thereafter they went to the Sub-Registrar's office at Arrah and got the sale deed written by the scribe - PW5, and that thereafter, the second respondent executed the sale deed and got it registered. The sale deed dated 22.7.1988 also recited that Rs. 17000 was received by the vendor prior to the execution of the sale deed and the balance of Rs.5000 was to be paid at the time of transfer of Registration Receipt.
9. The first appellate court after analyzing the evidence held that the evidence was contrary to the pleadings and Page 403 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined therefore liable to be rejected. When what is pleaded is not proved, or what is stated in the evidence is contrary to the pleadings, the dictum that no amount of evidence, contrary to the pleadings, howsoever cogent, can be relied on, would apply. The first appellate court also found that there was no endorsement in the sale deed by the Sub- Registrar about payment of Rs. 17000 in his presence, nor any separate receipt existed to show the payment of Rs. 17000 prior to the preparation and the execution of the sale deed."
ii) In case of Ramesh Kurnar and Anr. Vs Furu Ram & Anr. reported in (2011) 8 SCC 613, wherein it is held as under:
"30. The written statements were also filed on the same day the suits were filed, that is 16.3.1992. The written statements were not signed by either of the appellants but were signed by C.B. Sharma (defendant no.3 in those suits) as advocate for the defendants 1 and 2 (appellants). The brief Page 404 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined written statements stated that paras 1 to 7 of the plaint were correct and admitted and that paras 8 and 9 were legal and that therefore the suit be decreed.
xxx
32. We find three different versions from the pleadings and evidence led by the respondents. The case set forth in their written statements was completely different from the case made out in the evidence of their witnesses DW1, DW2, DW3 and DW4. More interestingly, the case set forth in the written statements and the case made out in the oral evidence were completely different from what is stated in the documentary evidence. Let us refer to them briefly.
(a) The written statements filed by the respondents merely stated that the appellants did not execute the sale deed, on the date fixed for sale, as per agreement of sale dated 18.10.1991 and therefore, and the said dispute was referred to arbitration and awards were made by the arbitrator on the basis of their statements and decrees were made in terms of the award.Page 405 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(b) The evidence of DW1 to DW4 was that appellants unreasonably demanded the price to be increased from Rs.14,22,000/- to Rs.16,00,000/-, that the resultant dispute was referred to Panchayat, that a price of Rs.16,00,000/- was agreed before the Panchayat on 12.3.1992, that immediately the respondents paid the balance of Rs.15,00,000/- in cash to the appellants in the presence of the panchayat, that the respondents felt that the stamp duty and registration expenses were high and that therefore, it was agreed on the suggestion of their counsel that they should resort to the process of getting an arbitration award and decree to convey the title instead of execution of a sale deed. It was stated that C. B. Sharma was appointed as the arbitrator who made the awards and decrees were obtained in terms of the awards.
(c) The documentary evidence, that is the reference agreements, the statements recorded by the Arbitrator, the awards, the plaints in the suits under sections 14 and 17 of Arbitration Act, 1940 , on the other hand do not refer to Page 406 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the agreement of sale or the payment of price. They showed that the appellants had borrowed Rs.8 lakhs from Furu Ram and Rs.8 lakhs from Kalu Ram, about four months prior to 12.3.1992, and had agreed to repay the same with interest at 2% per month; that thereafter, Furu Ram and Kalu Ram demanded the money and the appellants were not in a position to repay the loans and therefore a dispute arose; and that by mutual consent, C.B. Sharma was appointed as an Arbitrator and parties agreed to be bound by his decision. The appellants allegedly made statements before C.B. Sharma (Arbitrator) admitting that they had taken Rs.8 lakhs from Furu Ram and Rs.8 lakhs from Kalu Ram as loans, agreeing to repay the same with interest at 2% per month, and that as they did not have the means to repay the same, they had given 49 Kanals 10 Marlas to Furu Ram and 49 Kanals 9 Marlas of land to Kalu Ram and also delivered possession of respective lands to Furu Ram and Kalu Ram."
8.98 Referring to above judgments it Page 407 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined was submitted that the suit is to be dismissed on the ground that the evidence is in variance to the pleadings made by the plaintiffs in their plaint filed before this Court. 8.99 Learned Senior Advocate Mr. Soparkar submitted that the scope of Suit Patent 271425 is limited to an Apparatus (200) comprising "said system including a device for withdrawal of gas bubbles from the said material (220)" owing to:
a. Disclosure of the apparatus and method made in prior filed application no.876, stands refused. Intent of referring to application no. 876 is to indicate constructional elements of the apparatus disclosed therein, and the Page 408 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined method of determination of position of inclusions as claimed in claim 1 of 876 application, so as to segregate/draw a line between the subject matter of the suit patent and the subject matter of 876 application (two patents cannot be granted on a single invention). This was further affirmed by the Controller in the Hearing notice (Objection 2 of the Hearing notice on Pg. 1762 of Part VI) and tacitly admitted by the Plaintiffs by differentiating and submitting that the objection is not tenable as 876 application does not disclose "said system including..."
b. Specific admissions by the Plaintiffs during response to the Examination Report (FER) and the Hearing notice issued by the Controller Page 409 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of Patent as regards the "special technical feature". The term "special technical feature", as defined by PCT Rule 13.2, denotes "those features that define a contribution which each of the claimed inventions makes over the prior art"
c. Specific amendments done by the Applicants/Plaintiffs at the final juncture post the hearing, which indicates the admitted stand of the Plaintiffs that barring the above element/limitation "said system including" being a part of the gemstone scanning apparatus, all other claimed elements (container + holder + illuminator + detector + controller) are taught/disclosed by the prior arts as also held/observed by the Page 410 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Controller. It is only after the above amendment that the Controller granted the patent.
d. Specific objection by the Controller in the hearing notice on lack of novelty and inventive step that led to incorporation of the above element i.e. "said system including a device for withdrawal of gas bubbles from said material (220)"
8.100 It was submitted that in view of the prior-art documents admitted by the Plaintiffs in the suit patent, admissions made in the specification, and the complete prosecution history and arguments presented, the only purported technical feature that is considered (while incorrectly) to be Page 411 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined novel and inventive is the "system including...", and therefore this element becomes an essential ingredient for infringement analysis. 8.101 It was submitted that the defendant's apparatus and method does not infringe claims of the Suit Patent, and the Apparatus and Method of the Defendants are substantially based on the prior art and hence, Gillette Defense is applicable. The Defendants do not use "system including a device for withdrawal of gas bubbles from the immersion medium", and hence, the pith and marrow of the invention claimed in the suit patent i.e. the key reason why the patent was granted in the first place, is not present in the alleged infringing apparatus/method of the suit Page 412 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent.
8.102 It was submitted that the apparatus though is only supplemental in nature, the Defendants in fact use an image processing software that is able to, by rotation of the gemstone during the scanning operation, and multiple images obtained therefrom, differentiate between bubbles and inclusions/defects based on change in relative position, and therefore has not used any device to withdraw gas bubbles.
8.103 It was submitted that the Image Processing Software is a software that the defendants have developed internally for image-processing based bubble removal. It is furthermore key Page 413 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to note that Image Processing Software is not required in all the cases and is to be implemented only on need/client request basis. Defendants have time and again submitted that they are not taking any device/means to remove the bubbles, and if/when the bubbles come, they come and the Defendants live with a small inaccuracy, if any. It was submitted that the complete Written Statement is indicative of this defense, and that the Defendants take measures such as replacing the immersion medium regularly to lower the chances of bubble generation. If however, the bubbles are big, Image Processing Software can be used to differentiate between the bubbles versus inclusions/defects, and bubbles Page 414 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined can be removed from the captured images using the image Processing Software. It was submitted that Pen Drive Exh.DW1/X6 includes two folders In' and 'Out', wherein the images in the 'In' folder include scanned images that have inclusions + bubbles, and the 'Out' folder includes images processed by the Image Processing Software, and therefore only indicate the inclusions with the bubbles being extracted from the images, Executable file of the Image Processing Software along with Hasp Key is also placed on record vide Exh.DW1/X7 and Exh. DW1/X8 (Sealed Cover). It was submitted that DW-1 was also extensively cross-examined on the Image Processing Software vide Question Nos. 337, 400, 410, 411, 412 Page 415 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.104 In support of his submission, reliance was placed on decision in case of TVS Motor Company Ltd. vs. Bajaj Auto Limited 2009 (3) CTC 178, wherein it is held as under:
"34(f) In the House of Lords decision reported in Catnic Components Limited and another v. Hill and Smith Limited, 1982 RPC 183 at page 242 it has been held as under:
"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow"
of the claim A patent Page 416 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is:
whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."
(Underlining is ours).
(g) In a Division Bench decision of the Delhi High Court reported in Raj Prakash v. Magnet Ram Choudhary and others, AIR 1978 Delhi 1, it has been held as under in paragraph 12:
"12. We have therefore, to read Page 417 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the specifications and the claims from the specifications and the claims from the point of view of the persons in the trade manufacturing film strip viewers. It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentees or alleged violators.......
again in paragraph 13 it is held that:
"13.....It is settled law that the title of the specifications of an invention claimed does not control the actual claim. A misleading title similarly is of little consequence. It is on a proper construction of the specifications and the claims that the true nature of the invention claimed is to be determined and the patent granted has to be construed......" (Emphasis added)
49. Keeping the above provisions of the Patents Act in mind when we consider the rival submissions of the parties, we are able to discern the following uncontroverted Page 418 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined facts viz.
(a) The Respondent's Patent Application along with the specifications was filed on 16.07.2002. In the said Application, the invention claim related to improvement in the combustion characteristic of a single cylinder internal combustion engine working on four stroke principle with two valves and with two spark plugs.
(b) On 07.07.2003, the Respondent filed its amended complete specification, wherein, it was claimed that the provision of pair of spark plugs was an improvement of the prior art with one spark plug and that the provision of two spark plugs improved combustion of lean mixture of fuel without affecting the performance.
(c) On 13.08.2004, the
International Search Report
came to be made which stated that the claimed invention cannot be considered novel or cannot be considered of involving inventive step when the document is taken alone in the light of the US Honda Patent No. 4534322 A1 (MATSUDA) dated 13.08.1985. Subsequently, Page 419 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Respondent filed the provisional/complete specification on 08.11.2004 titling the same as an improved internal combustion engine working on four stroke principle.
(d) Honda Patent No.4534322 is known as US Patent MATSUDA dated 13.08.1985, the engine of which contained two spark plugs with two valves. The details of the said patent as placed before the Court did not specify the bore dia, but it was a 'V' type engine.
(e) The Respondent's patent No. 195904 of 16.07.2002, came to be issued with a date of sealing of 07.07.2005, declaring the invention as an Improved Internal Combustion Engine working on four stroke principle and was published in Issue No.28/2005 dated 29.07.2005
(f) The Appellant entered into a Technical Assistance Agreement dated 13.11.2000, with M/s. AVL, Austria for designing a new three valve cylinder head with lean burn combustion system with a provision for twin plugs. The consideration as stipulated in Page 420 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the agreement payable by the Appellant was fixed at a sum of EURO 349.522. The agreed bore dia in the said agreement was 44 mm and upwards with cylinder volume capacity of 75 CC and upwards with three valves provision.
(g) The Appellant entered into a Technical Collaboration Agreement with M/s. AVL, Austria on 10.06.2005.
(h) The Appellant has filed his Application for revocation of Respondent's patent No.195904 before the Intellectual Property Appellate Tribunal, Chennai on 24.08.2007. In the grounds of revocation, the Appellant contended that the subject matter of the patent specification stands anticipated, it is obvious, it is not patentable and that the patent specification is not clear. In support of its stand that the Respondent's patent stands anticipated, the Appellant relied upon the Japan publication No.59-060056 published on 05.04.1984. For the ground that the Respondent's patent was not new, the Appellant relied upon US Patent No. 4534322 of MATSUDA. For the contention Page 421 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the Respondent's invention clairn was obvious and that internal combustion engine with two spark plugs was already known, the Appellant relied upon various other existing patents.
(i) The invention as claimed by the Respondent in the application filed in support of the Injunction Application is usage of two spark plugs for efficient burning of lean air fuel mixture in a small bore engine (bore size between 45 mm and 70 mm) in order to provide improved combustion characteristic of lean air fuel mixture burning as stated in paragraphs 11 and 14 of the affidavit filed in support of the Injunction Application with specific averment in paragraph 34(i) to the effect that its invention is spark plug centric and not valve centric.
(j) There was a complete specification bearing No.678-
2001, dated 17.07.2001 of Honda Giken Kogyo Kavushiki Kaisha a Corporation of Japan claiming invention of four stroke engine with plurality of ignition plugs exposed to the same combustion chamber stating that it can be applied widely to any Page 422 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined engine i.e. without any restriction to the size of the bore.
60. Therefore in the original specification filed on 16.07.2002, the provision of twin spark plugs as against the prior art engine with one spark plug was the centric of the claim.
61. In the amended complete specification dated 07.07.2003 also, the centric point was the provision of two spark plugs for generating spark at two predetermined location at the same time to enable the engine to run efficiently resulting in decreased emission, decreased fuel consumption and good drivability 69 (vi) There can be no infringement if the opponent has proved the same result by a different combination of different elements.
69 (ix) In construing an allegation of infringement, what is to be seen is whether the alleged infringement has taken the substance of the invention ignoring the fact as to omission of certain parts or addition of certain parts. Page 423 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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82. As far as the application of the concept of pith and marrow of the claim, what is stated is that novel feature which is claimed to be essential would constitute the pith and marrow. The novel feature in the invention of the Respondent based on Patent No.195904 dated 16.07.2002, varies in very many respects in the novel feature of the Appellant's product based on Patent No. 196636 dated 25.05.2000. While the acclaimed novel feature of the Respondent's product is twin plug operation resulting in improved internal combustion, the acclaimed novel feature in the Appellant's product is in the operation of two intake valves with one exhaust valve providing a combination of swirl and tumble operation of lean and rich air fuel mixture in its internal combustion process of course with the aid of twin plugs. If the pith and marrow of the Respondent and the Appellant are distinctively identifiable there is absolutely no scope for grant of injunction as has been done by the learned Single Judge.
84. Therefore, while on the one Page 424 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined hand the Respondent's patent having been granted is to be accepted prima facie as a valid one, in the same breath, it will have to be held that merely because such a valid patent is existing in favour of the Respondent, that by itself, it cannot be held that the Respondent has made out a strong prima facie case of infringement as against the Appellant. We say so because we too find a distinctive feature of a different operation in the Appellant's technology with three valve provision with twin plugs operation and the said three valves operation of the engine produce distinctively different result in its operation. To be more precise, while the twin plug operation in the Respondent's internal combustion engine may have resulted in improved internal combustion, the three valve technology of the Appellant also with twin plug provision produce a distinctive product of its own, different from the claimed invention of the Respondent.
8.105 Learned Senior Advocate Mr. Page 425 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Soparkar referred to paragraph nos. 16, 17, 18 to 28 of the evidence affidavit of PW-1 and question nos. 71,131,132, 188 of the cross examination of PW-1 pertaining to use of selenium to show that PW-1 was not aware about the report obtained by private investigator for presence of selenium residue on 10 diamonds which were scanned by defendant no.1 as he had relied upon the website of defendant no.1. Reference was made on paragraph no.31 of evidence by way of affidavit of PW-1 and cross examination questions pertaining to Court Commissioner question nos. 202, 203, 204 to 210 of the cross examination and video placed on record by Exh. PW-1/29 has been given up. It was therefore, Page 426 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that in view of same the defendants have not further elaborated before the Court. However, it was submitted that the act of PW-1 in recording the premises without permission is abuse of the Court Commission process by adopting illegal means.
8.106 Reference was made to answer to question nos.92, 144, 228, 229, 230 and 240 of the cross examination of PW-1 with regard to vacuum pumps alleged to have been used by defendants' machines vis-a-vis cross examination of PW-9 who is inventor of the suit patent. It was therefore, submitted that the documents placed on record are not elaborate since documents were not pressed by the plaintiffs at Exhs. PW-1/X5, PW-1/X6, Page 427 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-1/X7 and PW-1/X8 as the plaintiffs have given up these documents. 8.107 Learned Senior Advocate Mr. Soparkar submitted that plaintiffs vide C.A. No. 1 of 2018 dated 11.06.2018 filed a Perjury Application under Section 340 of the Criminal Procedure Code before this Court stating that the defendants have purchased over 200 vacuum pumps of the same make and model as used by the plaintiffs in Galaxy machines and that the defendants have purchased the said vacuum pumps from the same supplier which supplies the said vacuum pumps to the plaintiffs. It was submitted that on perusal of the said application, the allegation by the Plaintiffs being that false statement has been made by the defendants in Page 428 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Written Statement and Reply to Exh. 5 Application, cannot be believed. 8.108 Reliance was placed upon Trade Reports (Exh.PW-1/37) as purportedly available on website www.52wmb.com showing that Defendant No. 5 had purchased Vacuum 200 Pumps. It is brought to the notice of the Court that the website from which the said document was procured by the plaintiffs is not authentic in the first place and the contents of the said document cannot be relied upon owing to the said issue. It was submitted that the defendants have heavily objected to the said documents with respect to its admissibility at Exh. 211 and the said document therefore, need not be looked into by this Court.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.109 Reference was also made to answer to question nos. 291 and 296 and answer to question nos. 304 to 317 of the cross examination of defendant witness no.1. Learned Senior Advocate Mr. Soparkar also referred to the affidavit filed by plaintiff witness no.8 (Beenita Modi) and cross examination to submit that what is stated in the affidavit is contradictory to the audio clips placed on record at Exh.PW-8/X1. 8.110 Reference was made to answer to question nos. 2,3,4,6 to 10 of the cross examination of PW-8 to show that plaintiffs have tried to dislodge the evidence led by the defendants of import of vacuum pump and false Page 430 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined evidence was led before this Court by stating that all the evidence placed by the defendants were purportedly false in nature. It was further submitted that PW-8 deliberately in her evidence suppressed/ failed to disclose the fact that Mr. Mithun S. Shah had subsequently sworn on a supplementary affidavit on 30.08.2018 at Exh.143 wherein he stated that upon re-scrutiny of the records in the possession of M/s NM Diam LLP, it was found that all the invoices placed on record by the defendants have been received and the annual services for various machines have been rendered by the defendant and the said invoices were duly paid and duly apologised for the previous affidavit dated 16.07.2018 filed at Page 431 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Exh.141.
8.111 It was therefore, submitted that plaintiffs deliberately did not rely upon the evidence of Exh. PW-8/X1 for exhibiting voice record already on record before the Court. It was therefore, submitted that on verification of the audio played in the open Court and affidavit of PW-8 it is clear that there exists no sanctity in her evidence by way of affidavit and shows the misconduct carried out by the plaintiffs with a sole intent of harassing the defendants. It was therefore, submitted that veracity of invoices placed on record before this Court at Exh.140 was in fact on the contrary proved by the voice recordings and the defendants are engaged in Page 432 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined providing services and repair maintenance work and the entire vacuum pump issue and the perjury application at Exh.139 raised by the plaintiffs are nothing but false and frivolous in nature and holds no sanctity whatsoever. It was submitted that defendants have also filed an application under section 340 of the Code, 1973 against the plaintiffs and PW-8 for the same.
8.112 Learned Senior Advocate Mr. Soparkar submitted that after the filing of Suit in July 2017, the plaintiffs in 2018 deployed an investigator/miscreants to sabotage defendant's business process through one of the investigation firm based in NCR by the name of River Stones LLP Page 433 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which clearly shows that PW-4 along with PW-2 and PW-3 were working for Mr. Aarnav Sharma and were engaged by Plaintiffs to install/deploy/place vacuum pumps at the premises of the defendants and then undertake videography to capture that use of the pumps at the Defendants' premises to fraudulently demonstrate infringement, while clearly knowing that the Defendants don't use any vacuum pump in any manner and the same was also established during the Local Commissioner's visit in 2017 upon institution of the suit. It was submitted that the main hired investigator and partner at River Stones LLP, Mr. Arnav Sharma, was also taken into custody upon the statement Page 434 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined made by DW-9 in Application No. 1088/2018 dated 29.11.2018. The said police reports have been produced along with the Evidence by way of affidavit of DW-1.
8.113 Learned Senior Advocate Mr. Soparkar thereafter pointed out the sequence of events pertaining to the alleged illegal act carried out by the Plaintiffs through Mr. Aarnav Sharma as under :
i) Defendant No. 11 filed a complaint dated 27.11.2018 against two individuals having (motorcycle nos. GJ-
05-BJ-1006 and GI-05-BK-5867 inter- alia stating that there is a possibility that two individuals on their vehicle have been involved in Page 435 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined threatening and looting or robbing the employees carrying diamonds outside the Defendant No. 1 premises and thus investigation was requested to be carried out by the Police Authorities on the same.
ii) The police authorities found these individuals and it was revealed that the two individuals on two different motorcycles were working with a Delhi- National Capital region based private investigator Mr. Aarnav Sharma (Riverstones LLP) to take videos of the labourers working in the defendant no.1's factory for Sarine Technologies Ltd.
iii) On 29.11.2018, notice was issued against the respective persons in view Page 436 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the complaint made by Defendant No.
11. Thereafter in statement dated 29.11.2018 by the culprits it became crystal clear that Aarnav Sharma (from River Stones LLP) had assigned the two individuals to follow and take video of the manager or labourers/workers vehicle working with defendant No. 1 carrying diamonds along with them for money.
iv) Thereafter on 30.11.2018, Mr. Dhameshbhai Dhanjibhai Vaghasıya (DW-
9) (employee of Defendant No. 1) made his statement before the Police Station. He was asked to deploy vacuum pumps at the premises of Defendant No.
1. DW-9 (Dharmesh Vaghasiya) also entered the witness box.
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v) On 01.12.2018 Mr. Aarnav Sharma made a statement before the Police Station that the two individuals were hired by him to check the movement of vehicles and the same was done on account of case where Plaintiff No. 2 had filed a copyright infringement case on the defendants and to check if vacuum pumps were being moved out. He further stated that plaintiffs had contacted DW-9 to give pump and place that pump in the Defendants premises and to take video of the same and to forward it to Shubhi Kapoor's mobile number. They had also placed on record a report which on the basis of pictures provided by two individuals.
vi) On 06.04.2019. Mr. Aarnav Sharma took a complete U-Turn and wrote to the Page 438 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Commissioner of Police that his signatures were allegedly taken on blank papers at the Kapodara Police Station, Surat under duress in police custody).
vii) Notice was issued to Mr. Aarnav Sharma to appear before the Police Station, however he never appeared before the station as proved from the information secured by the Defendant by filing an application confirming the status as to the said proceedings and whether or not he appeared before the Police Station.
8.114 With regard to Court Commissioner's report it was submitted by learned Senior Advocate Mr. Soparkar that on perusal of the report of the Page 439 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined commission executed on 28.06.2017 it is nowhere found that the defendants are using vacuum pump for the machines for scanning of the diamonds.
8.115 Learned Senior Advocate Mr. Soparkar thereafter submitted that entire evidence placed on record by the plaintiffs with respect to PW-2 to PW-4 with respect to videos captured from the alleged premises of defendant no.1 is nothing but devoid of any merit as the said videos ought to be rejected from any consideration for purpose of adjudication by this Court in view of the fact that Mr. Aarnav Sharma who was claiming himself to be an investigator had suo motu filed an application at Exh.185 for re-examination which was objected by the plaintiffs at Exh.192 Page 440 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined on the ground that the plaintiffs did not produce Mr. Aarnav Sharma as the plaintiffs' witness and prayed to dismiss such application. It was therefore, submitted that the plaintiffs have not come with clean hands before this Court and have failed to prove the videos obtained through camera enabled shirt and camera enabled spectacles by PW-2, PW-3 and PW-4. 8.116 Learned Senior Advocate Mr. Soparkar thereafter referred to the relevant paragraphs of the Affidavit as well as cross-examination of PW-3 and PW-4 as under:
a) Referring to Para No. 2 read with Q. 44 to 47, it was submitted that PW-3 answers that he cannot understand who Page 441 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is a 'scanning operator' whereas in Pg.
742 wherein the questions were translated by counsels in Hindi and therefore, PW-3 was not tricked into terms that are in English.
b) Referring to para No. 4 read with Q. 98 to 101 (Pg. 761), it was submitted that PW-3 has never been to all floors and made a false statement as to the number of machines which clearly shows that he has no knowledge about machines and floors/ Reference was also made to answer to Q. 5 and Q. 57 to 59 towards the machines known as Galaxy machines.
c) Referring to Para No. 6 read with Q. 61, 62, 63 & 64, it was submitted that Vacuum Pump is located at the right Page 442 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined bottom corner whereas the red light that plaintiffs point out in the video claiming to be the vacuum pump, is on the left bottom comer which indicates a clear contradiction, and it was submitted that the only light in the defendants' machine lower section is of the Power Unit. It was submitted that in Para 6, PW-3 stated that he took a picture of the Vacuum pump, but admittedly in the complete video of PW- 3, the pump is not visible and the reliance is only placed upon the red light. It was submitted that PW-3 has not submitted any such picture as referred in the affidavit. d) Reference was also made Para No. 7 read with Q. 68 and Para No. 8 to 10 Page 443 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined read with Q. 93.
e) Referring to Para No. 11, 12, 13, 14, 15, 16 with respect to Video (Exh.PW-4/1) and Q. No. 48, 49, 50, 51, 52, 53, 54, it was submitted that first meeting took place on 06.09.2018 and had it been so, how was PW-3 given numbered spectacles and if the spectacles were not numbered, how did PW-3 record the video. It was submitted that the timeline is in direct conflict with what PW-4 has stated on oath. Reference was drawn to answer to Q. 65 of PW-4 & Q. 21, 22, 23, 24, 25, 26, 27, 28, 29, 32, 33, 34, 65, 66, 67, 72, 73, 74, 75, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, Page 444 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 117, 129 of PW-3. It was submitted that PW-4 helped PW-3 in January 2018 and therefore, he helped PW-4, but the case of PW-3 is that he met PW-4 for the first time on 6th September 2018. It was submitted that PW-3 has no knowledge about the machine and no knowledge of the functioning and screenshot of purported video taken by PW-3 (Exh.PW- 4/1) produced on record by PW-4, was shown to PW-3 wherein he has stated that he had captured it himself, however, the screenshots in affidavit of PW-9 shows that it has the same screenshots (in Hebrew) as in PW-3 Affidavit and the machines are of the plaintiffs as admitted by PW-9.
f) Referring to Para No. 1 of Page 445 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavit of PW-4 read with Q. 5, 27, 28, of the Cross-Examination, it was submitted that case of PW-3 with respect to timeline is demolished as the same is clearly conflicting in nature. It was submitted that in Para No. 2 of Affidavit of PW-4- Desraj (PW-
3) who does not understand what is a scanning machine, informs PW-4 that he has been using duplicate scanning machine to scan rough diamonds. Reference was also made to Para No. 3 of PW-4 Affidavit read with answers to Q. 37, 38, 39, 40, 44, 45, 46, 47, 105,
179. 8.117 Learned Senior Advocate thereafter referred to Para No. 13 of the Evidence by way of Affidavit of PW- Page 446 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 3 (Desraj) (Exh. 81), wherein PW-3 has stated that "I say that I have poor eye sight, and I wore glasses. Besides, I used to wear a different pair of glasses while taking a closer look at the diamonds during the scanning process. I say that Mr. Shukla at first had given a pair of spectacles without the gadget (camera), of the same size and style for me to get familiar with the same over the next 4-5 days". It was submitted that in Para No. 14 of the Evidence by way of Affidavit of PW- 3, he states that he wore the camera enabled spectacles on and around 06.09.2018, which implies that PW-3 met PW-4 on and around 01.09.2018 if Para 3 is to be believed. It was submitted that however, in answer to Question No. Page 447 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 53 put forth to PW-3 (Exh. 81), he stated that he met PW-4 for the first time on 06.09.2018 which is clearly in contradiction with his Evidence by way of Affidavit and thus, there is falsification on oath by PW-3 and furthermore, PW-4 further contradicts PW-3 that he met PW-3 on 05.09.2018. It was submitted that PW-3 further clarified in answer to Q. No. 54 that on 06.09.2018, PW-4 met him and told him to make a video.
8.118 It was submitted that at various instances, such as Para No. 13 of the Affidavit, PW-3 has stated that he has poor eyesight, and the Defendants understand that Camera Enabled Spectacles (Exh.PW-4/X1) has no Page 448 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prescription numbered lenses on it, meaning thereby that PW-3 is lying on oath before this Court. It was submitted that if PW-3 has poor eyesight, PW-4 (Dinesh Shukla, Handler) would be knowing the same and therefore ought to have given numbered glasses. 8.119 It was submitted that in his affidavit PW-3 has stated that he has procured videos on 3 different dates/occasions however, in Exh.PW-4/1, the videos in the DVD are claimed only to be of 13.09.2018 and no data of 6.09.2018 or 7.09.2018 is shared, which means that the plaintiffs fabricated and altered primary evidence and the credibility of the same is heavily questioned making it inadmissible Page 449 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined before this Court. It was therefore, prayed to check the original spectacles to confirm if any videos/photos were captured on 6.09.2018/7.09.2018 as well. It was submitted that it was therefore necessary to access Exh.PW- 4/X1 as placed before this Court and confirm what all video files are actually present in the said camera enabled spectacles.
8.120 Referring to para 6 of the Affidavit of PW-3 it was submitted that perusal of the same points out that Vacuum Pump is located at the right bottom corner whereas the red light that Plaintiff points out in the video claiming to be the vacuum pump, is on the left bottom corner which indicates Page 450 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a clear contradiction and it was submitted that the only light in the defendant's machine lower section is of the Power Unit. It was further submitted that in Para 6, PW-3 stated that he took a picture of the Vacuum pump, but admittedly in the complete video of PW-3, the pump is not visible and the reliance is only placed upon the red light and PW-3 has not submitted any such picture as referred in the affidavit.
8.121 Learned Senior Advocate Mr. Soparkar submitted that there are blatant discrepancies in the Evidence by way of Affidavit of PW-4 (Exh. 82), more particularly, in view of the Screenshots relied upon by PW-4 in Para Page 451 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined No 9 of his affidavit. It was submitted that Ran Ziskind (PW-9 - Exh.
77) in the affidavit has placed some pictures indicating that they are generated from plaintiffs' machine. This was also confronted to PW-9 at Q.
126. Exactly same photos have also been placed on record by Shukla (PW-4) on pages 8-10 of PW-4's Affidavit indicating that they are that these are screenshots taken when the vacuum pump was allegedly in use in the defendant's machine which was also confronted to PW-4 in Q. 162. It was submitted that in the same context , Question No. 126 was put forth to PW-9 wherein it was questioned that "image of the data output report generated by the Plaintiffs' machine in the presence of Page 452 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a device for removal of air and/or gas bubbles is extracted..." and are placed at page nos. 17, 18 and 19 of your affidavit. Please tell when these photographs were taken and where?". It was submitted that in reply to such question the PW-9 answered that "I do not remember the exact dates of the images but you can see on the images that the scanning was done in September, 2018 and the screenshot also was taken few days later in September, 2018. The location is Israel." 8.122 Thereafter reference was made to Question No. 162 put forth to PW-4 wherein PW-4 was asked did he share these pictures with PW-9 (Mr. Ran Ziskind) or did he secure these photographs from PW-9 and not from the Page 453 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined video which was recorded by PW-3 and have placed the same in his affidavit. 8.123 It was submitted that at this stage, the witness was confronted with the affidavit of PW-9. However, objection was raised by the plaintiff's counsel that the witness cannot be confronted with the affidavit of PW-9 since the present witness is not the author of the same and the said affidavit being confronted has not been signed or executed by him.
8.124 Counter objection was raised by the defendant's Counsel that the witness is not being confronted with the affidavit of PW-9. The witness is only being confronted with respect to the photographs that have been produced Page 454 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by him in his affidavit as well as the exactly same photographs being produced by PW-9 as well.
8.125 PW-4 replied to such question that he did not share these pictures with PW-9. Neither did he secure these photographs from PW-9, and he had taken these screenshots as extracted in his affidavit under para 9 from the video recorded by Mr. Desraj. 8.126 Thereafter reference was made to questions put forth to PW-3 in cross-examination, more particularly questions with respect to Credibility of the Witness as per answer to Q Nos. 7, 10-12, 15- 16, 32-34, 45-47, 95-97. 8.127 Reference was thereafter made Page 455 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to Q. No. 107 put forth to PW-3 wherein it was questioned that as it was stated in answer to question no. 106 that the red light is an indicator of vacuum pump, can the red light be for some other indicator?. In reply to such question PW-3 stated that the red light is of vacuum pump only and when the vacuum pump is switched on this red light gets switched on. It was submitted that PW-3 has submitted that when Vacuum Pump is switched on, red light gets on, whereas, the counsel for the plaintiffs while showing the video during the course of hearing in the Court on 30.09.2022, submitted completely in contradiction that red light indicates that Vacuum Pump is off and green indicates that Vacuum Pump is Page 456 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined on. It was therefore submitted that these are all figment of imagination and the red light is only of the power unit that is positioned on the bottom left of the lower chamber.
8.128 Learned Senior Advocate Mr. Soparkar thereafter pointed out contradictions in the statement of PW-3 inasmuch as in question nos. 45 and 46 to the question putforth that whether he understands who is a scanning operator, it was replied that he cannot understand whereas to the question put forth whether he understands what is a scanning report, it was replied that he cannot understand the question. However, when PW-3 was confronted that in paragraph no.2 of the affidavit he had stated Page 457 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that he used to work as scanning operator and prepare scan reports, whereas in answers to question no.45 and 46 he had stated that he does not know who is a scanning operator and what is a scanning report, then how did he state in the affidavit that he prepared the scan reports, to which PW- 3 replied that he knows who is a machine operator but he does not wish to say anything further.
8.129 Thereafter reference was made to question no.57 put forth to PW-3 wherein it was asked that in paragraph 5 of affidavit the fellow employees had told him that the machines at DBC premises are known as Galaxy machines, which are used for cleaning the diamond Page 458 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and getting scans of the diamond after cleaning then how did he know what the cleaning of diamond means? It was replied by PW-3 that he only knows that the diamonds are cleaned by vacuum and then the diamonds are taken out and he does not know anything beyond this. It was therefore, submitted that the reply of PW-3 indicates that he has no understanding at all and the pumps are not used for cleaning in any manner. 8.130 Reference was made to paragraph nos. 58 wherein question was put forth to PW-3 that the fellow employees had told him that the machines at DBC premises are known as galaxy machines so whether the machines at DBC premises were actually Galaxy machines or only Page 459 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined known as Galaxy machines, to which PW-3 replied that they are only known as Galaxy machines whereas in question no.59 which was putforth to PW-3, it was asked whether he found the machines known as 'Super Nova at DBC premises to which he replied that he does not know and he only knows the machines as DBC Machines.
8.131 Reference was made to question no.60 wherein it was inquired from PW-3 whether the scanning machines at DBS premises remain opened or locked for security and cleanliness purpose, to which it was replied that the lower part of the machine has a window panel which remains locked and is opened only when the machine breaks down and is to be repaired. Learned Senior Counsel Mr. Page 460 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Soparkar submitted that machines remain closed and therefore, it can never be stated that the defendants used vacuum pump as only the particular machine in the video was open which indicates planting of pump.
8.132 Thereafter reference was made to answer to question nos, 72, 88 to 89, 100 to 101, 103 to 106 and 117 to highlight the anomaly in evidence of PW-3.
8.133 Learned Senior Advocate Mr. Soparkar referring to answer to Q. 12- 16, 44-47, 56-57, 96-100, 104 submitted that the plaintiffs kept on harping that the defendants never contested PW- 3 being an employee of the defendants and that the defendants purportedly Page 461 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined never questioned the veracity of the premises as shown in the video. 8.134 It was submitted that none of the videos claimed to be procured from the camera enabled spectacles show any Vacuum Pump whatsoever. The red light is of the power supply unit. Thereafter, learned Senior Advocate Mr. Soparkar highlighted the technical discrepancies in the video purportedly captured by PW-3 (Desraj) from the camera enabled spectacles as under:
• MOVI0000 (10) The video starts at 18:31:05 and ends at 18:41:18 - The video thus, according to the timeline should be 10 mins and 13 seconds long.
However, upon playing the video, it ends in 9 mins and 59 seconds.Page 462 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined • MOVI0001 (05)- The video starts at 18:41:34 and ends at 18:51:45 - The video thus, according to the timeline should be 10 mins and 11 seconds long.
However, upon playing the video, it ends in 9 mins and 59 seconds • MOVI0002 (06) - The video starts at 18:31:05 and ends at 18:41:18 The video thus, according to the timeline should be 10 mins and 13 seconds long.
However, upon playing the video, it ends in 9 mins and 59 seconds.
• MOVT0005 (09) The video starts at 18:31:05 and ends at 18:33:17. The video thus, according to the timeline should be 2 mins and 12 seconds long.
However, upon playing the video, it Page 463 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ends in 2 mins and 10 seconds.
8.135 Referring to above technical discrepancies, it was submitted that Video titled MOVI0000 (10), MOVI0002 (06) and MOVI0005 (09) all start at 18:31:05 which cannot be possible since the same has a date stamp of 10.09.2018.
8.136 Thereafter, reference was made to the cross-examination questions pertaining to the technical discrepancies pertaining to the video replied by PW-4 upon being asked Q. Nos. 76, 81, 103, 104, 105, 106, 116, 117 of PW-3 & Q. 139, 140, 141, 142, 143, 144, 145, 146, 147, 148, 149, 154, 158, 160, 161, 162, 163-170 of PW-4. Page 464 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.137 Reference was made to questions put forth to PW-4 in his cross- examination pertaining to credibility of the Witness being Q. Nos. 2-3, 15, 20, 36, 38-39, 47, 49-57, 62, 71, 74- 75, 76-77, 87-94, 99-104, 121-128, 132- 135, 137, 156-159.
8.138 Thereafter reference was made to Q. No. 127 of PW-3 and Q. No. 42 & 43 of PW-4 pertaining to different locations of hospitals. In Q. no.127, PW-3 was asked about the hospital in which his brother was treated for cancer and what was the cost of the treatment to which PW-3 replied that he does not know the name of the hospital and the hospital is at a place called Golpadia in Gwalior and cost of treatment would be above Rs. One lac Page 465 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined but he was not sure of the exact amount. Thereafter to question no.42 regarding whether he facilitated the doctor to him, he replied that he gave him a phone number of a doctor based out of Morrena, M.P. To question no.43 that for what purpose did he provide this number and who was the doctor, he replied that when he told him that his brother was suffering from cancer then he told him that he would look for a doctor who can help him in Morrena and then he gave him the number of the doctor but he does not remember the name of the doctor.
8.139 Reference was also made to questions pointing out contradictions being answer to Q nos. 77,93,96-97, 121, 123-124, 130, 205-207, CR1, CR4-9. Page 466 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 8.140 Thereafter, reference was made to key questions pertaining to the Video from the camera enabled spectacles being Q. Nos. 143-149, 154, 158, 160-161, 162 is a key question, 163-170, 177-178.
8.141 Reference was made to question No. 81 wherein it was asked to PW-3 at what time did he switch on camera on 12.09.2018 and at what time did he switch off the camera after the video was recorded, to which he replied that he did not remember at what time he switched it on the camera on 13.09.2018 but he switched on the camera after entering the premises at 8:30 pm and he switched it of after about an hour of switching it on. Learned Senior Page 467 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Advocate Mr. Soparkar submitted that the date in the video recording is of 10.09.2018 and all the recordings start at the instances after 6:30 pm and screenshots were also produced on record.
8.142 Thereafter, contradictions with respect to the statements made by PW-3 and PW-4 were highlighted as under:
Issue Deesraj PW-3 Shukla PW-4 Meeting of PW3 I met Shukla on 6th Spoke/called on 5th and PW4 Sep 2018 (53) Sep (37). and Met Desraj on 5th Sep 2018 Got treatment in Jan Was told about 2018 (27), Shukla Desraj's brother's helped cancer (1007) in Dec 2018 Going to Nepal Dinesh Shukla He's not aware of the coordinated Nepal details (120). everything (120) Doesn't know the team leader (122). Didn't introduce the 12-13 people (123).
Treatment Doctor/Hospital in Doctor of Morrena MP
Golpadia/Gwalior (43)
(127)
Page 468 of 1093
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undefined
8.143 Referring to above
contradictions, it was submitted that
in essence the video placed on record by the plaintiffs suffer from major discrepancies and that the said videos are fudged, fabricated, self-created by the plaintiffs (as admitted by PW-9) in nature with a sole intent to mislead this Court especially when the said videos are inadmissible.
8.144 Learned Senior Advocate Mr. Soparkar thereafter referred to videos purportedly taken from camera enable spectacles alleging to be fundamentally misrepresentations as under:
i) PW-9 claims that the videos were recorded in Israel of the machines of Page 469 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Plaintiffs whereas PW-3 states that the screenshots were from the video purportedly recorded from the premises of Defendant No.1.
ii) All videos are indicating that recording took placed on 10.09.2018 whereas, PW-3/4 claims the said video being purportedly recorded on 13.09.2018.
iii) All videos were stated to be recorded at 8:30PM whereas the videos show time of 6:30 PM onwards.
iv) videos (MOVI0000 (10) & MOV10002(06) & MOV10005 (09)) start at the same time (18:31:05) and out of these 3 videos, MOV10000 (10) and MOVI0002(06) stop at the same time Page 470 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (18:41:18).
v) All videos run faster than the actual duration of the video as seen in the time stamp within the video.
vi) The videos also show processing of diamonds having an inward date of 15 September 2018 which is practically impossible if the same was purportedly recorded on September 2018.
vii) Camera enabled spectacle seem to be without any prescription number whereas PW-3 had admitted he had poor eyesight in his affidavit as well as in his cross- examination.
viii) The Vacuum Pump claimed to be located on the right hand bottom side Page 471 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in the affidavit of PW-3 whereas in videos points out that red light belong to vacuum pump which in contradiction since it is on the left side of the bottom portion in the video.
ix) Various other contradictions between PW-3 and PW-4 and their fraudulent intent to place the vacuum pump in premises of Defendant No. 1 becomes apparent from the submissions made in the present compendium.
x) The evidence is not proved in accordance with Section 65B of Evidence Act or Order 11 Rule 6 of CPC 1908.
xi) How could have PW-4 brought the camera enabled spectacles from Delhi without knowing about the size of the Page 472 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined target when at that time it was not known as to who would agree to be a spy.
xii) Whether PW-4 met PW-3 first time on 05.09.2018 or on 06.09.2018.
xiii) PW-3 tried the spectacles before 06.09.2018 for 1 day or for 4-5 days or at all.
xiv) It is the case of the
Plaintiffs that PW-4 brought these
spectacles from Delhi. At that time who would wear them was not even known. Obviously, he would not carry spectacles with numbered glasses. If so, these spectacles are useless for PW-3.
Page 473 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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xv) The screenshots relied upon are in Hebrew language.
xvi) Spectacles from the custody of wrong person i.e., PW-4.
xvii) PW-4 could not have produced them in Cross-Examination-(i) Not in the List of Documents,(ii) Not offered in Chief (ii) Not asked in cross- examination.
8.145 Learned Senior Advocate Mr. Soparkar therefore, submitted that there is no infringement of the suit patent as the plaintiffs have failed to prove such infringement the suit is liable to be dismissed with cost. Page 474 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined IX-Counter Claim filed by defendant nos. 4 and 5 for revocation of the suit patent 9.1 The Counter Claim is filed by the defendant Nos. 4 and 5 for revocation of the suit Patent No. IN271425 of the plaintiffs which relates to the determination of location of inclusion in gemstone. 9.2 The plaintiffs have filed the Civil Suit No. 2/2017 for infringement of the Patent No. IN271425 against the defendants. The defendants therefore, have interest in opposing the patent and have locus standi to initiate the proceedings under section 64 read with section 104 of the Patent Act,1970 for revocation of the suit patent as counter claim in the suit filed by the Page 475 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs.
"The suit patent IN271425 (hereinafter referred to as IN'425) issued from a national phase application in India being Indian Application no. 1606/MUMNP/2009 arising out of the PCT Application No. PCT/IL/2008/000232 dated February 21,2008 which was published under PCT Publication No. WO2008102361 the Indian Application was published in the official journal dated April 30,2010 while the grant notification was published in the official journal dated February 26,2016."
9.3 First Examination Report (FER) was issued on 16.04.2014 rejecting all the claims of Patent Application No. 1606/MUMNP/2009 under section 2(1)(j) of the Act as the Controller of the Patents was of the opinion that such application does not qualify the test of invention as laid down in section Page 476 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 2(1)(j) in view of the document US 4049350A(D1-US Patent).
9.4 Section 2(1)(j) provides that "invention means a new product or process involving an inventive steps and capable of industrial application". 9.5 The Controller of Patents opined that:
"D1 discloses{Figs. 1-5, and col. 4, line 14-col. 5, line 26): An apparatus (10) for determining location of at least one inclusion (30) in a gemstone (20) having a first refractive index, comprising:
a container (16) adapted for containing a material having a second refractive index, a holder operative to support a gemstone in the container and in the material when the container contains the material {col. 5, lines 13-15}; an illuminator (12) positioned and adapted to illuminate said gemstone (30) when disposed within said material in said container, with illumination (24) at which said Page 477 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined gemstone (20) and said material have their respective first and second index of refraction; a detector (22) that detects illumination from the illuminated gemstone and said material and produces signals responsive thereto; a controller that receives the signals and is operative to determine a location of an inclusion in the gemstone based on the signals {col. 4, line 59-col.
5, line 5}; and a system (26), operative to reduce the presence within said material, at least when the gemstone is disposed therein, of any substance other than inclusions, having a third refractive index {col. 2, lines 41- 48}".
9.6 The plaintiff No.1 filed Patent Application before the Controller of Patents pursuant to the objections raised under section 2(1)(j) that the apparatus for determining the location of at-least one inclusion in gemstone as disclosed in US Patent does not include a system, operative to Page 478 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined reduce the presence within said material of any substance other than inclusion, having a third refractive index, the said system including a device for withdrawal of gas bubble from said material as recited in the independent Claim No. 1 of the suit patent. The plaintiff No.1 in reply dated 23.09.2014 to the First Examination Report contended as under:
"According to PCT Rule 13, independent claims having a common special technical feature should be considered as meeting the requirement of the unity of invention, and such special technical feature is defined as providing together with other claimed features contribution over the state of the art.
The independent claims
currently present in the
revised set of claims are as follows:Page 479 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Claim 1 directed to an apparatus for determining location of at least one inclusion in a gemstone, whose special technical feature is that it includes a system operative to reduce the presence of any substance other than gemstone and the inclusions within the material in which the gemstone is disposed; and Claim 18 directed to a method for determining the position of inclusion in a gemstone, and its special technical feature is that it includes taking measures for reducing the presence of any substance other than gemstone and the inclusions, within the material in which the gemstone is disposed.
It can be noticed that, two independent claims in the revised set of claims have the same special technical feature directed to the reduction of the presence of any substance different from the gemstone and inclusions in the material, in which the gemstone is disposed. Also, it is submitted that the above feature is not disclosed in US4049350A (D1) cited by the Page 480 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined learned Controller in the First Examination Report."
9.7 Considering the submissions made by the plaintiff No.1 in response to the First Examination Report and in reply to the pre-grant opposition filed under section 25(1), as per the plaintiffs, novelty and/or inventive steps of the invention as claimed in the claims of the suit patent lies in the feature of a system, operative to reduce the presence within said material of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of gas bubbles from said material.
9.8 The Plaintiff No.1 also Page 481 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted a detailed description of the patent as under:
"any substance other than inclusions, having a third refractive index" can be gas bubble(s) and accordingly, the apparatus (200) as claimed in claim 1 of the impugned application comprises a system, including a device operative to reduce the presence of gas bubbles from said material (220).
Accordingly, any prior art that discloses and/or provides teaching for a system, operative to reduce the presence or to confer withdrawal of gas bubbles from the material/ immersion fluid raises the substantial question as to the novelty and/or inventive step of claims of the impugned patent."
9.9 The Controller of the Patent granted the Patent-IN271425 to the plaintiff No. 1 in respect of one of its invention pertaining to the determination of the location of the Page 482 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined inclusion in gemstone on 22.02.2016. 9.10 The plaintiff made 39 claims in the suit patent, out of which, Claim Nos. 1 to 18 were granted by the Controller of Patent which read as under:
"1. An apparatus (200) for determining location of at least one inclusion in a gemstone (202) having a first refractive index, comprising:
a container (222) adapted for containing a material (220) having a second refractive index;
a holder (204) operative to support a gemstone (202) in the container (222) and in the material (220)when the container (222) contains the material (220);
an illuminator (206) positioned and adapted to illuminate said gemstone (202) when disposed within said material (220) in said container (222), with Page 483 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined illumination at which said gemstone (202) and said material (220) have their respective first and second index of refraction;
a detector (212) that detects illumination from the illuminated gemstone (202) and said material (220) and produces signals responsive thereto;
a controller (230) that receives the signals and is operative to determine a location of an inclusion in the gemstone (202) based on the signals; and a system, operative to reduce the presence within said material (220) of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of gas bubbles from said material (220)."
"18.A method for determining the position of inclusions in a gemstone (202) having a first refractive index, said method comprising:
providing a material (220) Page 484 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined having a second refractive index;
taking measures for reducing the presence within said material (220) of any substance other than the inclusions, having a third refractive index, said measures including withdrawing, by a device, gas bubbles from said material (220);
disposing the gemstone (202) on a holder (204) within said material (220);
illuminating the gemstone (202) by an illuminator (206) and detecting illumination of the gemstone (202) within said material (220) by a detector (212); and determining, by a controller (230) a location of an inclusion based on said detection."
9.11 The defendants have prayed for revocation of the patent granted to the plaintiff No.1 under sections 64(1)(e) Page 485 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and 64(1)(f) of the Act contending that invention so far as any claim of the complete specifications is not new having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13 of the Act and that the invention so far as claimed by the plaintiffs of the complete specification is obvious or does not involve any inventive steps, having regard to what was publicly known or publicly used in India or what has been published in India or elsewhere before the priority date of claim.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.12 The defendants have referred to and relied upon the various Prior Arts for the patent of the plaintiffs by placing on record various documents as under:
"Prior Arts Referred to herein Document Patent No./Non-patent Publication date literature details D1 US4049350 September 20, 1977 D2 WO2005116617 December 8,2005 D3 Barth, Tom (Some new October 1929 immersion melts of high refraction, Am.
Mineralogist, Vol, 14/10,pp.358-361,1929) D4 Harrison et al (Growth May 1965 of Large Single Crystals of Hexagonal Selenium from the Melt at High Pressures, Journal of Applied Physics, Volume 36, Number 5, pp 1680-
1683)
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undefined
D5 Mohan et al 1993
(Temperature
dependence under
pressure of the
kinetics of
crystallization of
bulk amorphous
selenium,
Philosophical magazine
Part B, 67:5, 705-720,
1993
D6 US20050052642 March 10, 2005
D7 US7014966 March 21, 2006
D8 US20060174655 August 10, 2006
9.13 Learned advocate Mr Khurana for
the defendants made reference to the
patent application filed by the
plaintiffs being the Patent Application No. 876 of 2018 to demonstrate that each and every single limitation of the claim of the suit patent were already Page 488 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined admittedly disclosed by the plaintiffs in the said application which was filed around one and half year prior to the filing of the application for the suit patent and therefore, there is lack of novelty of the suit patent.
9.14 It was submitted by learned advocate Mr. Khurana that the container, holder, illuminator, detector and the controller of the suit patent were already part of the earlier patent application which clearly shows that system, operative to reduce the presence within the said material (220) of any substance other than inclusions, having third refractive index, said system including device for withdrawal of the gas bubbles from the said Page 489 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined material was also mentioned by the controller of the patent during the prosecution of the suit patent vide hearing notice dated 03.07.2015 and reply dated 28.08.2015 of the plaintiffs. Reference was made to para 2 of the hearing notice of the Controller of Patent which called upon the plaintiffs that subject-matter of claim 1-43 of the suit patent application was in conflict with claims of 876 of 2018 and only difference was to reduce the foreign element from the inclusion by agitating and the tilting which is obvious to person's skilled in the art in the consideration and no apparatus can be granted for the same invention as per section 46 of the Act. It was also Page 490 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pointed out that feature of taking measures for reducing the presence within an emergent material of any substance other than the inclusion, having third refractive index is not disclosed nor is obvious in view of the cited Prior Arts.
9.15 Learned advocate Mr. Khurana further submitted that during the prosecution of the suit patent the only feature that the plaintiffs referred to as the special technical feature "of the suit patent" was the "reduction of presence of any substance different from the gemstone and inclusion in the material in which, gemstone is disposed".
9.16 It was submitted that the term Page 491 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "special technical feature" as defined by Patent PCT rule 13.2 denotes "those feature that defined a contribution which each of the claim invention makes other the Prior Arts". It was submitted that the plaintiffs during the prosecution of the suit patent in order to overcome the Prior Art D1 reference amended the claim to include the "system including a device for withdrawal of gas bubbles from the said material" and therefore, it was submitted that if there was no Novelty apart from this element, the plaintiffs would not have been required to make this amendment and argue on Novelty with respect to Prior Arts D1 in view of the originally filed claim of the suit patent. It was therefore Page 492 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined vehemently submitted by learned advocate Mr. Khurana that all other claim elements are admittedly disclosed in the D1 reference and hence, were not argued against except just for this above limitation. It was submitted that such amendment of the claim is clearly indicative and should be taken as admission by the plaintiffs that only novelty owing to which, the patent plausibly issued was "system including a device for withdrawal of the gas bubble from the said material". 9.17 Thereafter, learned advocate Mr. Khurana referred to the Prior Art D1 US Patent No. 4049350 as well as suit patent figures and components thereof to demonstrate that plaintiffs Page 493 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by itself in its background section of the suit patent admitted about existence of a similar apparatus as well as the generation of images in three dimensions and therefore, generation of 3D images have been self admitted by the plaintiffs vide the background section to be in public domain. Learned advocate Mr. Khurana relied upon the screenshot of relevant portion of the admission by the plaintiffs in the background section of the suit patent as disclosed by the plaintiffs in the application for patent as under:
Particulars Cited Portion Portion of the of the Cited Counter Claim Prior Art that that raises the invalidate the said ground Claim Claims Prior Art D1 Page 494 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 1,2,3,18,19,24,25,31 lack novelty over Prior Art Document D1 Claim 13; Claim 14;
Para No. 13 onwards-Pg Summary of Invention, No. 16 of the re-filed Col. 1, Lines 58-68;
Counter Claim Summary of Invention, Col. 2, Lines 41-48;
Summary of Invention, Col. 3 Lines 15-19:
Description of the preferred embodiment, Col. 4, Lines 14-58; Col. 5, Lines 6-9 D-5 relied upon in Para No. 30 onwards - Pg. 4"
of Counter Claim refiled.
Claims lack inventive Prior Art D1 to D8 step over prior art D1 to D8 D2 - Para 0018, 0019, D-2 relied upon in 0032, 0034, 0041, 0044, Counter Claim Para No. 0048 & 0051 26-Pg. 40 of the Counter Claim refiled.
D3-Para 1 to 3 & Figure D-3 relied upon in Para 1 No. 27-Pg. 46 of Counter Claim refiled.
D4-Col. 1, Para 1 Also relied upon in Para No. 29-Pg. 48 of Counter Claim refiled.
D5 - Heading 2, D-5 relied upon in Para Preparation of Bulk a-Se No. 30 onwards - Pg. 49 Specimens, Para 1 & of Counter Claim refiled.
Heading 3,
Characterization of the
Specimens, Para 3
Prior Art D-6
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undefined
Summary of Invention Relied upon in Para No. Para 0022, 0061, 0088, 91 Pg. 123 of Counter 0097 and 0115 Claim refiled before this Hon'ble Court Prior Art D-7 Abstract; Background, Relied upon in Para No. Col. 1, Lines 39-67; 131 Pg. 178 of Counter Claim 1; Claim 2; Claim Claim refiled 3; Col. 9, Lines 32-51 Prior Art D-8 Relied upon in Para No. 81-86 Pg. 111 onwards of Para 0010 & 0011 the Counter Claim refiled.
9.18 Learned advocate Mr. Khurana for the defendants submitted that it was admitted by PW-5, witness of the plaintiffs, in question Nos. 153 and 154 that spatial position means, position in 3D and D1 discloses identification of spatial position [line 37] and therefore, identification of 3D images is admittedly disclosed Page 496 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and taught by D1 itself.
9.19 It was further submitted that the plaintiffs have admitted in the suit patent that the mechanisms used for removal of gas bubbles are the same mechanism as known in the Prior Art for removal of bubble from glass i.e. ultra sonic method. It was therefore submitted that the only interpretation of the term 'device' in the independent claims can be the vacuuming device/pump as in the entire specification, there is only reference to term 'device' in context of device for vacuuming in the suit patent. Reliance was placed on the answers to Question Nos. 113 and 115 of the cross-examination of PW-1 and answer to Question No. 106 of the Page 497 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined cross-examination of PW-9 wherein they have admitted that throughout the suit patent, the Device is used only in the context of vacuuming/applying vacuum, and the Device is nothing but a vacuum pump.
9.20 It was therefore submitted that as regards novelty is concerned, the plaintiffs has admitted, and it has also been opined by the Controller that all the elements except "system including a device for withdrawal of gas bubbles from the said material" are present in Prior Art D1 US 4049350.
Learned advocate for the defendants categorically pointed out that D1 specifically teaches an apparatus that comprises a device referred to as Page 498 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "Ultrasonic Transmitter 26" which has inherent capability and characteristics/ attribute/property of of reducing gas bubbles and such inherent capability would also be demonstrated by the device irrespective of where and how it would be used. It was further submitted that Ultra Sonic Transmitter was admitted by the plaintiffs and also in the patent application as being the means to remove a gas bubble. Reference was made to answer to question No. 138 of PW-5 of his cross-examination which confirms that Ultrasonic Transmitter can assist in removal of gas bubbles and that is immaterial if the container is open or close.
9.21 Learned advocate for the Page 499 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants thereafter referred to the suit patent application on page 33 which describes different well-known means of reducing gas bubbles including ultrasonic means which reads as under:
"The temperature of the
immersion medium is then
increased (668). Optionally,
the temperature is increased in order to make a better mechanical match between the stone and the medium, as, for example, increasing temperature causes selenium to melt and the viscosity of selenium to decrease. Optionally, the container is surrounded by a plurality of heating elements in order to provide uniform heating of said material therein.
Optionally, bubbles are removed from the medium at 670.
Optionally, the bubbles are removed by methods similar to those used for refining glass, namely a gas blowing method (saturation of melt with a light gas like helium), a Page 500 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined reduced pressure method, a sonic/ultrasonic method, reduction of viscosity by increasing a temperature, reduction of viscosity by using additives, etc. and combinations thereof, Optionally, removing of bubbles is performed by decreasing pressure in the container by applying vacuum. Alternatively, bubbles are removed by further increasing the temperature and vacuum in the container.
At 672 vacuum is removed by addition of an inert gas (preferably helium) and setting a slight excess pressure of helium, such as 0.1-0.2 bar gauge pressure. It is noted that according to an exemplary embodiment of the invention, bubbles may be removed by both 670 and 672 or only one of 670 and 672. Optionally, 670 and 672 are repeated until the desired atmosphere in the container is reached.
Optionally, 668, 670 and 672 are simultaneously performed." 9.22 Learned advocate for the Page 501 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants thereafter demonstrated by detail mapping of claims of the suit patent with D1 Prior Arts by tallying item to item and part-by-part in detail as under:
9.23 Referring to above diagrams, it was submitted that Claim nos.
1,2,3,16,18,19,24,25, and 31 of the suit patent lacks Novelty over Prior Art D1 as under:
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Claims of suit patent Mapping from Prior Art document D1 An apparatus (200) for determining [Col. 1, Lines 17-31] location of at least one inclusion in a gemstone (202) having a first refractive The object of the Invention is index comprising. to provide a process of the above kind, and an apparatus for its performance, enabling Inclusions present in a precious stone to be detected objectively and independently of human Impressions and preferably their size to be a container (222) adapted for determined, preferably so that containing a material (220)having a both the position and the size second refractive index; of the inclusions thus detected can be ascertained with the desired degree of accuracy [D1-Claim 13] Apparatus for detecting the presence and size of A holder (204)operative to support a inclusions which scatter light gemstone (202) in the container (222) in stones, comprising:
and in the material (220) when the container (222) contains the material a container into which the (220) stone to be examined is insertable with a predetermined alignment;
an immersion liquid having a refractive index substantially equal to the refractive index of the stone for the wavelength of the incident an illuminator (206) positioned and Page 503 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined adapted to illuminate said gemstone beam, contained within the (202) when disposed within said container in sufficient material (220) in said container (222), quantity to fully immerse the with illumination at which said stone; gemstone (202) and said material (220) have their respective first and second index of refraction a light source for producing a light beam with a cross-
a detector (212) that detects section of the same order of illumination from the illuminated magnitude as the smallest gemstone (202) and said material (220) inclusions to be detected and and produces signals responsive which scatter light from said thereto; beam;
an adjusting device for aligning the beam in a particular direction relative to the stone when inserted in the a controller (230) that receives the container; signals and is operative to determine a location of an inclusion in the gemstone a moving device for (202) based on the signals; and relatively moving the stone and the beam to scan the light beam across the stone; and means responsive to the intensity of unscattered light from said light beam to the exclusion of light scattered by inclusions for measuring the intensity of said unscattered light with respect to each relative position of the beam and the stone during the scan caused by said moving device.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined [D1-Description, Col. 4, Lines 14-28] As shown in the drawings, an apparatus 10 for detecting and measuring inclusions in precious stones comprises a laser 12, a mirror 14 and a container 16 of liquid having a refractive index generally equal to that of a stone to be tested, that is between 2 and 2.4 if the stone is a diamond. In the container 16 is a plate 18 which is parallel to its base and on which can be placed the precious stone 20 to be examined so that it is immersed in the liquid. A photo-sensitive device 22, comprising photo-conductive cells, photo-diodes or photo- conductive tubes, is inserted in the plate 18. The area over which the photo-sensitive device 22 extends in the plate 18 is such that even the largest stones to be examined can be accommodated by their projection surface on the Page 505 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plate 18 'within this photosensitive device 22. [D1-Description, Col. 4, Lines 34-40, Lines 44-48] An ultrasonic-transmitter 26 is also provided on a side wall of the container 16 shown in FIG. 1. It is possible, e.g. with a suitable means of driving the plate 18 in the container 16, this means being not shown in the drawing, and with a feed device 14, on the mirror 14, to rotate the stone 20......This means that the signal which is emitted by the photo-sensitive device 22 in the course of this movement and which directly depends on the intensity of the beam of light which has passed through the stone 20 [Col. 4, Line 59 to Col. 5, Page 506 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Line 9] If a precious stone has two inclusions 30 and 32, as shown in FIG. 3, then the small inclusions 30, owing to its dispersion of the laser ray 24, will manifest itself as an interruption 34 to the maximum signal otherwise measured between the third and fourth spiral turn, at about 270°, while the large inclusions 32, in the zone of a system, operative to reduce the the spiral turns 3 to 8 and the presence within said material (220) of subsequent turns will in each any substance other than inclusions, case occur shortly before having a third refractive index, said 180° are reached, First system including a device for increasing and then withdrawal of gas bubbles from said decreasing at 36, 36', 36", material (220). 36""likewise in the form of a break in the maximum signal otherwise continuously measured. Both the width and the multiple occurrence of interruptions in the signal in succession to one another in the same angular position of successive spiral turns are an indication of the size of the inclusions detected.
A second scanning operation may be carried out from a different direction to determine the positions of the inclusions, between which the transmitter is operated to Page 507 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined displace any dust on the surface or within the liquid. [D1- Summary of Invention, Col. 1, Lines 37-40] This offers the advantage that the exact spatial position of an inclusions detected in a stone by the first scamming operation can be calculated on the basis of the two scannings.
D1-Claim 14) "Apparatus as claimed in claim 13, further including an ultrasonic transmitter mounted within said container for agitating the immersion liquid between separate scanning operations."
[Summary of Invention, Col.
2, Lines 41-48] "Furthermore, the stone under examination preferably undergoes at least one further scanning operation, at the same angle as before, after the immersion liquid has been agitated, for which purpose the immersion liquid is Page 508 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined preferably irradiated, in between these scanning operations by an immersed ultrasonic transmitter, or is displaced by tilting the container if too viscous for the said irradiation."
[Summary of Invention, Col. 3, Lines 15-19] "The interior of the container is preferably fitted with an ultrasonic transmitter by which the immersion liquid is statistically agitated between the separate scanning operations."
[Col. 5, Lines 6-9] "A second scanning operation may be carried out from a different direction to determine the positions of the inclusions, between which the transmitter is operated to displace any dust on the surface or within the liquid," Page 509 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Claim Element Mapping from Prior Art document D1 Claim 18 [D1- Abstract] A method for determining the position of A process and apparatus for inclusions in a gemstone (202) having a detecting inclusions in precious first refractive index, said method stones in which the stone is scanned comprising. with light from a laser. The stone is immersed in a liquid of the same refractive index as the stone so that there is no reflection from the outer surfaces of the stone, so that the shape of the stone does not affect the process.
[Background of the Invention] The object of the invention is to provide a process of the above kind, and an apparatus for its performance, enabling inclusions present in a precious stone to be detected objectively and independently of human impressions and preferably their size to be determined, preferably so that both the position and the size of the inclusions thus detected can be ascertained with the desired degree of accuracy. In this connection it should be borne in mind that the position of an inclusions in a precious stone may be likewise very important, as the value of the precious stone may be seriously reduced or else unaffected, according to the position of the inclusions and the extent to which it is apparent to the naked eye or noticeable in the over-all impression received of the precious stone.Page 510 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Providing a material (220) having a second [Claim 1] refractive index.
A process for detecting the presence and size of inclusions which scatter light in precious stones, comprising: scanning the stone, while the stone is submersed below the surface of an immersion fluid having a refractive index substantially equal to the refractive index of the stone for the wavelength of the incident beam, with a concentrated beam of light, the cross-section of which is of the same order of magnitude as the smallest inclusions to be detected and which scatter light from said beam, the scanning taking place over the entire cross-sectional plane of the stone perpendicular to the incident beam and along scanning trajectories separated from one another by a distance not exceeding the beam cross- section; and measuring, with respect to each position of said concentrated beam of light during said scanning step, the intensity of unscattered light of the beam after it has been subjected to the influence of the stone to the exclusion of light scattered by inclusions.
[Claim 2] Page 511 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined A process as claimed in claim 1, in which the refractive index of the immersion liquid is between 2 and 2.4 and the stone is diamond.
[Claim 3] A process as claimed in claim 2, in which the refractive index of the immersion liquid is at least 2.2.
Taking measures for reducing the presence [Claim 7] within said material (220) of any substance other than the inclusions, having a third A process as claimed in claim refractive index, said measures including withdrawing, by a device, gas bubbles 6, in which the immersion from said material (220); liquid is irradiated before the further scanning operation with an immersed-ultrasonic transmitter.
[Summary of Invention, Col. 2, Lines 41-48] "Furthermore, the stone under examination preferably undergoes at least one further scanning operation, at the same angle as before, after the immersion liquid has been agitated, for which purpose the immersion liquid is preferably irradiated, in between these scanning operations by an immersed ultrasonic Page 512 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined transmitter, or is displaced by tilting the container if too viscous for the said irradiation.
[Summary of Invention, Col. 3, Lines 15-19] The interior of the container is preferably fitted with an ultrasonic transmitter by which the immersion liquid is statistically agitated between the separate scanning operations.
[Col. 5, Lines 6-9] A second scanning operation may be carried out from a different direction to determine the positions of the inclusions, between which the transmitter is operated to displace any dust on the surface or within the liquid.
disposing the gemstone (202) on a [Claim 10] holder (204) within said material (220); illuminating the gemstone A process as claimed in claim (202) by an illuminator (206) and 9 in which the beam of light is detecting illumination of the a laser beam. gemstone (202) within said material (220), by a detector (212); and determining, by a controller (230), a (D1- Description of the location of an inclusion based on said preferred embodiment, Col. 4, detection Lines 14-58) As shown in the drawings, an Page 513 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined apparatus 10 for detecting and measuring inclusions in precious stones comprises a Laser 12, a mirror 14 and a container 16 of liquid having a refractive index generally equal to that of a stone to be tested, that is between 2 and 2.4 if the stone is a diamond. In the container 16 is a plate 18 which is parallel to its base and on which can be placed the precious stone 20 to be examined so that it is immersed in the liquid. A photo-sensitive device 22, comprising photo-conductive cells, photo-diodes or photo-
conductive tubes, is inserted in the plate 18. The area over which the photo-sensitive device 22 extends in the plate 18 is such that even the largest stones to be examined can be accommodated by their projection surface on the plate 18 within this photosensitive device 22.
FIG. I shows a beam of light 24 whose cross-section is of the same order of magnitude as the smallest inclusion to be detected, i.e. 0.03 mm, which passes from the laser 12 to the mirror 14 and is reflected from the latter to the precious stone Page 514 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 20 so as to be normal to the base of the stone 20. An ultrasonic transmitter 26 is also provided on a side wall of the container 16 shown in FIG. 1. It is possible, e.g. with a suitable means of driving the plate 18 in the container 16, this means being not shown in the drawing, and with a feed device 14, on the mirror 14, to rotate the stone 20 to be examined and at the same time to displace the laser ray 24 in the direction required to produce a spiral scanning trajectory to cover the entire stone, the successive spirals being closer than the cross- section of the beam, i.e. 0.02 mm. This means that the signal which is emitted by the photo- sensitive device 22 in the course of this movement and which directly depends on the intensity of the beam of light which has passed through the stone 20 constitutes a kind of spiral development of the volume of the stone 20 illustrated on a larger scale in FIG. 2, this process being indicated by the spiral line 28 in FIG. 3.
A signal of this kind is shown Page 515 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in FIG. 4, in which the abscissa of the diagram gives the number of spiral turns, i.e. 1,2,3 etc., of the spiral line 28, proceeding from the inside towards the outside, these turns being subdivisible by angular degrees, while the ordinate gives the magnitude of the signal, i.e. the intensity of particular beam of light which has passed through.
9.24 Learned advocate Mr. Khurana further submitted that there is no inventive steps taken by the plaintiffs and relied upon the references of Prior Arts D1 to D7 all of which in different combination, categorically and comprehensively teach and suggest use of vacuuming/de-gasing technology and use of vacuum pump for numerous years before filing of the suit patent for removal of bubble/substances. Page 516 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.25 For Prior Arts D2, it was submitted that D2 discloses a technical problem of presence/immergence of gas bubbles and/or other particulates/ contaminants in the index-matching fluid/immersion medium resulting in scattering of the collimated light beam and hence, generation of noise which ultimately reduces the detecting sensitivity of the apparatus. It was submitted that the presence of the black coating on the second major surface is essential for the inclusion inspection process of the present invention. The plaintiffs have found that small gas bubbles or other particulates tend to exist in the index-matching fluid, however, some of Page 517 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the bubbles may rise and adhere to the second major surface if the surface is not coated with the black coating and in addition, the major surfaces may comprise particles and other contaminants and bubbles on or near the major surfaces,which may scatter light and generate noise and reduce detecting sensitivity.
9.26 It was submitted that disclosure of D3 proves beyond doubt that, as of the earliest priority date of the said patent, a person skilled in the art had very limited options available with regards to the material(s) that can serve the need of an immersion medium/index-matching fluid in apparatus for detection of inclusion(s) in gemstone. There have Page 518 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined been difficulties in finding good media of high refraction for refractive index determinations with the microscope. Up to an index of about 2.1 good melts of iodine and piperine can be obtained. Above this value melts of selenium and sulphur have been used, and for still higher values melts of selenium and arsenic trisulfide. However, these melts are not very convenient to use; they are highly colored and many are opaque for all but the red rays. If, therefore, the powder to be examined is itself colored, or nearly opaque, which often is the case for substances with high refraction, it is almost impossible to obtain satisfactory results. For this reason better melts of high refraction (above 2.3) are Page 519 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined highly desirable. The halogen compounds of thallium will render good service if used as high refraction immersion media. They are isotropic and very transparent; they are easily prepared and melted on an object glass (or better, between two cover glasses) over a low flame. The refractive indices of TICI (lower curve), and TIBr (upper curve) for different wave lengths is as under:
9.27 Accordingly, there is a clear incentive (more specifically, a restriction) for a person skilled in Page 520 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the art to utilize molten metal(s) or salt thereof (specifically, molten selenium, molten thallium etc.) as immersion medium in inclusion detection apparatus for gemstones. Based on the disclosure of D2 and in view of teachings of D3, it is crystal clear that a person skilled in the art facing the technical problem of presence of gas bubbles in the index-matching fluid/immersion medium resulting in reduced detecting sensitivity of the apparatus, as of the earliest priority date of the impugned patent, with all certainty would have looked for documents that teaches on how to remove gas bubbles from fluids with high refractive index (e.g. molten selenium, molten thallium and the likes).Page 521 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.28 With regard to Prior Art D4 (Harrison et al.) it was submitted that it exactly provides such teaching to a person skilled in the art in want of knowledge on how to remove gas bubbles from fluids that can find utility as immersion medium in inclusion detection apparatus. Disclosure of D4 provides a method for degassing molten selenium including exposing molten selenium at 400°C to a pressure of 4 uHg until the bubbling stopped i.e. pressure reduction method or application of vacuum. The highest purity (99.999+%) selenium obtainable from the American Smelting and Refining Company was used without further purification except for degassing. Degassing was done by exposing molten selenium at 400°C to a Page 522 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pressure of 4 uHg until the bubbling stopped. Spectrographic analysis revealed that selenium was least contaminated by vials made of fused silica. Crystals were recovered free of mechanical damage by dissolving away the glass container in hydrofluoric acid. Pyrex. Vycor, and gold foil were also investigated for use as container materials. Gold was entirely unsatisfactory, since it was severely corroded by molten selenium at higher pressures.
9.29 For Prior Art D5, it was submitted that disclosure of D5 (Mohan) also provides similar teaching for utility of pressure reduction method (vacuum application) for removing any entrapped air bubbles from the molten Page 523 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined selenium. The bulk a-Se specimens were prepared by melting Se in vacuum (10-3- 10-4 Torr), and quenching the melt in air. About 20g of 99.999% pure Se granules (Kochlight Chemicals UK) were melted under vacuum in a quartz tube, and the melt was continuously degassed at 630 k 2 K for 4 h. The melt was then allowed to solidify in air. While the solidified mass was still in the quartz tube, slices nearly 12 mm long were cut. The samples could be easily pushed out of the quartz tube by cooling them in ice-water. The final dimensions of the sample (12.3mm in diameter and 8mm in length) were obtained by hand grinding the flat ends. These samples were free from trapped bubbles. Amorphous Se obtained from the melt, Page 524 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which has not been thoroughly vacuum degassed before quenching, has been found (Vasko 1969) to possess air bubbles or cavities. It is essential to select samples with minimum porosity for the crystallization studies by the volume-change method.
9.30 It was submitted that in view of above, it is proved beyond doubt that the person skilled in the art in possession of D2 with the knowledge of materials that can find utility as immersion medium/index-matching fluid in inclusion detection apparatus for gemstones (as evidenced by disclosure of D3) would have used pressure reduction method (i.e. vacuum application) for its degassing (or removal of gas bubbles therefrom) as Page 525 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined taught in any of the prior-art documents D4 or D5. It is therefore apparent that an apparatus provided with a system, operative to reduce the presence within said material of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of gas bubbles from said material, as disclosed in D4 and/or D5, is obvious to try for a person skilled in the art in possession of an inclusion detection apparatus, as disclosed in D2, and with the knowledge of materials that can find utility as immersion medium for inclusion detection apparatus, as taught byD3. Further, it is submitted that a person skilled in the art in possession of teachings of D2, D3 and Page 526 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined D4 and/or D5 can easily arrive at an apparatus as claimed in claim 1 of the suit patent, with reasonable expectation of success and without bearing undue burden of experimentation. Accordingly, subject matter of claim 1 of the suit patent lacks inventive step over the disclosure of D2 in view of teachings of D3 and any of the documents D4 or D5.
9.31 It was submitted that from Prior Art D6, it is crystal clear that a person skilled in the art in possession of document D2 and in want of knowledge on how to remove gas/air bubbles from the immersion medium can easily arrive at a document D6 that specifically discloses an apparatus for Page 527 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined inspecting defects in an optical-type visual substrate immersed in an immersion medium, technical problems owing to presence of gas/air bubbles in the immersion medium and means/ways to remove gas/air bubbles therefrom. Further, disclosure of D6 clearly provides an incentive/motivation to a person skilled in the art to try measure/ways of removing gas/air bubbles from the immersion medium that finds utility in inclusion/defect detection apparatus. It is submitted that that an apparatus provided with a system, operative to reduce the presence within said material of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of Page 528 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined gas bubbles from said material, as disclosed in D6, is obvious to try for a person skilled in the art in possession of an inclusion detection apparatus, as disclosed in D2. Further, it is submitted that a person skilled in the art in possession of teachings of D2 and D6 can easily arrive at an apparatus as claimed in claim 1 of the impugned patent, with reasonable expectation of success and without bearing undue burden of experimentation.
9.32 It was submitted that from Prior Art D7, it is apparent that an apparatus provided with a system, operative to reduce the presence within said material of any substance other than inclusions, having a third Page 529 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined refractive index, said system including a device for withdrawal of gas bubbles from said material, as disclosed in D7, obvious to try for a person skilled in the art in possession of teachings of document D2. Further, it is submitted that a person skilled in the art in possession of teachings of D2 and D7can easily arrive at an apparatus as claimed in claim 1 of the suit patent, with reasonable expectation of success and without bearing undue burden of experimentation.
9.33 It is therefore, submitted that the subject matter of claim 1 of the suit patent lacks inventive step over the disclosure of D2 in view of disclosure of D7.
Page 530 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.34 Learned advocate Mr. Khurana also referred to and relied upon answers to the various questions put to the witnesses of the plaintiffs in cross examination to substantiate as a clear admission was made by witnesses of the plaintiffs to suggest that vacuum pump/vacuuming technology has been used for number of years well before filing of the suit patent more particularly answer to question No. 92 put forth to PW-1 and question Nos. 119, 120, 132, 170 put-forth to PW-5 which reads as under:
"PW-1 Question No. 92: It was general knowledge before the date of filling of the suit patent in 2007 that vacuum pumps/vacuum technology can, in general, be used for withdrawing gas Page 531 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined bubbles. Yes or no?
Ans: It was known to me. I
do not have an opinion
regarding the general
knowledge.
PW-5
Question No. 119.
Utilization of vacuum pump for degassing, in general, was known before the filing of the suit patent in 2007. Yes or No?
Ans: Yes. For example, I have used this technique in the course of my PHD in the 1980s to remove air bubbles from epoxy while mounting the diamond for analysis.
Question No. 120:
Utilization of vacuum pump for removal of gas bubbles entrapped in a liquid, in general, was known before the filing of the suit patent in 2007. Yes or No?
Ans: Yes.
Q. No.170: According to you, in around the year 2004 or before, in general what were the commonly used techniques for Page 532 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined withdrawing/reducing gas bubbles that are already present within a liquid?
Ans: The most common
technique was always to
wait and let the gas
bubbles rise and disappear, vacuum is also used in order to expand the bubbles and allow them to rise faster. There are also certain ways to make it harder for the bubbles to nucleate."
9.35 Learned advocate Mr. Khurana further submitted that the plaintiffs have not advanced any argument/defence with respect to the key element "a system, operative to reduce the presence within said material (220) of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of gas bubbles from the said material" and therefore, all the Page 533 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined arguments of the defendants qua this element are deemed to be admitted by the plaintiffs. It was therefore, submitted that there is no argument made by the plaintiffs regarding how the "system including device for withdrawal of gas bubbles from the said material" is Novel in view of ultrasonic transmitter of D1, and inventive in view of the cited references.
9.36 It was submitted that the plaintiffs were silent on the arguments qua the Novelty with respect to Prior Art D1 where the defendants had argued extensively as to why Ultrasonic Transmitter has an "inherent property/ characteristic/inherent function" of Page 534 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined withdrawing/ reducing the presence of gas bubbles and therefore, no Novelty lies in the suit patent. It was therefore, submitted that the Prior Art D1 comprises each and every element of the claims of the suit patent and accordingly, the suit patent is required to be revoked. Reliance was placed on the decisions of :
(i) In case of EMI Group North America, Inc. Vs Cypress Semiconductor Corporation (268) F.3d 1342) (Fed.
Cir. 2001) wherein it is held as under:
"A hypothetical example
clarifies this principle.
Humans lit fires for thousands of years before realizing that oxygen is necessary to create and maintain a flame. The first person to discover the of oxygen certainly could not have obtained a valid patent claim Page 535 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for a method of making a fire by lighting a flame in the presence of oxygen". Even if prior art on lighting fires did not disclose the importance of oxygen and one of ordinary skill in the art did not know about the importance of oxygen, understanding this law of nature would not give the discoverer a right to exclude others from practicing the prior art of making fires.
ii) In case of Atlas Powder Company vs Ireco Incorporated 190 F.3d 1342 (Fed. Cir. 1999), it is held as under:
"To invalidate a patent by anticipation, a prior art reference normally needs to disclose each and every limitation of the claim. See Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369, 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). However, a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it. See id.;Page 536 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed.
Cir. 1987). Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. See Titanium Metals, 778 F.2d at
780. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. See id. at
782. However, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer. See id. at 782 ("Congress has not seen fit to permit the patenting of an old [composition], known to others by one who has discovered its..... useful properties."); Verdegaal Bros., 814 F.2d at 633.
Because "sufficient aeration"Page 537 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of Dr. Clay's alleged invention that air may act as the sole sensitizer of the explosive composition. An inherent structure, composition, or function is not necessarily known. See, e.g., In re King, 801 F.2d at 1327; Titanium Metals, 778 F.2d at
782. Once it is recognized that interstitial and porous air were inherent elements of the prior art compositions, the assertion that air may act as a sole sensitizer amounts to no more than a claim to the discovery of an inherent property of the prior art, not the addition of a novel element. Insufficient prior understanding of the inherent properties of a known composition does not defeat a finding of anticipation. See Titanium Metals, 778 F.2d at
782. In addition, there was evidence that Butterworth did recognize the functioning of interstitial and porous air in sensitizing the composition. Butterworth recognizes the need for a gaseous sensitizer.
Butterworth, p. 2, II. 38-56." Page 538 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(iii) In case of Schering Corporation vs Geneva Pharmaceuticals, Inc. & Novartis Corporation (339 F.3d 1373, 1377, 67 U.S.P.Q.2d 1664, 1668) (Fed. Cir. 2003), it is held as under:
"At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior art.
Schering relies on Elan Pharmaceuticals, Inc. v Mayo Foundation for Medical Education & Research, 304 F.3d 1221 (Fed. Cir. 2002) for that proposition. This court has since vacated Elan. See 314 F.3d 1299 (Fed. Cir. 2002)Other precedents of this court have held that inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure. E.g.In re Cruciferous Sprout Litig.301 F.3d 1343, 1351 (Fed. Cir. 2002);Mehl/Biophil Int'l Corp.
v Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999)."
9.37 Learned advocate Mr. Khurana Page 539 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined therefore, submitted that the contention of the plaintiffs that all the claims of the Suit Patent need to be considered while adjudicating on validity but the plaintiffs did not give any answer to the question as to what would be the fate of the dependent claims, if the independent Claim No.1 and Claim No. 18 are held to be invalid. Reliance was placed upon the decision in case of Enercon India Ltd vs. Alloys Wobben ORA/43/2009/PT/CH wherein it is held as under:
"49. As per the Act, all the claims in a complete specification will have one inventive step or making them to be having group of inventive features to have a single inventive concept. Since that inventive step in Claim 1 has been shown to be obvious, all the subsidiary claims dependent on the principal Claim 1, which tend to Page 540 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined add only minor variations of features will not impart any inventive step to the dependent claims.
Para 59 (2) As per the Act, all the claims in a complete specification will have one inventive step or making them to be having group of inventive features but to have a single inventive concept. Since that inventive step in Claim 1 has been shown to be obvious, then all the subsidiary claims dependent on the principal Claim 1, which tend to add only minor variations of features will not impart any inventive step to the dependent claims.
(3) Therefore, the subordinate claims which are dependent on the principal Claim 1 would also become invalid as they cannot stand as a separate independent or individual claim as no exclusive technical improvement in the feature could be shown therein."
9.38 Learned advocate therefore submitted that even if the plaintiffs proposed any amendment to their Page 541 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined independent claim so as to evidence Novelty and/or inventive steps in the independent claim, the same could have been taken in response to the counterclaim and which would have mandated the plaintiffs to amend their plaint if their amendments were held acceptable. Reliance was placed in case of AGC Flat Glass Europe SA vs Anand Mahajan and Ors MANU/DE/2940 of the Delhi High Court wherein, it is held that even if for instance, one claim is held to be valid but further claim on which it was dependent is not held to be valid, then no valid claim in the suit patent would remain. The Hon'ble Delhi High Court has held as under:
"14. I have gone through documents filed by both parties Page 542 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as well as their rival submissions. It is settled law that if an amendment is put forward to overcome a possible objection to validity based upon a prior publication it may be relevant to consider whether the amendment propounded meets the objection arising out of such prior publication. If it does not, the amendment should be refused. If the patentee has known of the objection on the prior publication for many years, delay in applying for amendment will itself be ground for refusal. Further, an amendment having the effect of converting a non-essential element into an essential element should not be allowed as held in Windsurfing v Tabur (1985) RPC 59 at 82 (CA). It would not be out of place here to state that previously, tin.
was nowhere mentioned in Claim 1, however in Baker Perkins Ltd's Application (1958) RPC 267 and AMP Incorporated v Hellerman Ltd. (1962) RPC 55 it has been observed that amendments which limit the scope of specification to a sub-combination which was within the original claim would be a disclaimer (which can be allowed)and the absence of an appendant claim in the original Page 543 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined document to such sub-
combitation cannot of itself be a reason for refusing the amendment.
15. It is also settled law that a patentee who had chosen to make his claim in a wide and sweeping form (a covetous. claim),and who has had the advantage of the claim stated in that form for some years, may not be allowed to limit his claim by amendment to make his patent more secure. Further, where a patentee knowing the defect in the specification did not seek to amend his specification but successfully insisted on retaining it in its original form, it may be a ground for not permitting an amendment at a considerably later date when the validity of the patent was attacked by proceedings for revocation I.G.Farbenindustrie A.G.'s Patent (1930) 47 RPC 289. But in chrome - Alloying Co. Ltd. v. Metal Diffusions Ltd. (1962) RPC 33 it was held that where there is no evidence to indicate either that the patentee was aware of the defect in his specification or that he made use of an unjustified wide monopoly resulting from the defect to Page 544 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined seek undue advantage from his competitors,the court may not refuse leave to amend."
9.39 Learned advocate Mr.Khurana further submitted that the claim of the plaintiffs cannot be said to be either Novelty and inventive one as patent application is filed after the Prior Art D1 was patented before 30 years. Reliance was placed on the abstract of patent US7755072 of LSR Inc A Corp OF COLORADO filed on 21.09.2004. It was pointed out that it is not true that before filing of the suit patent, no commercially viable product was available for scanning of inclusions. Reference was made to the following three products which are available in public domain for detection of inclusions:
Page 545 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined S.No. Details of the Products 1 Lexus M-Box Technology 2 Magnus of Sahajanand 3 Helium Rough of Lexus 9.40 Learned advocate Mr. Khurana also referred to answer to question No. 119 put to DW 1 which confirms that there are two to three technologies which are also used for internal inclusion detection in a rough diamond.
9.41 Learned advocate Mr. Khurana submitted that the claim of the plaintiffs that their machine became viable for commercialization is not true and merely because the machine becomes viable for commercialization does not mean that such a machine Page 546 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined fulfills the bar of Novelty and Inventive Steps as regards patentability requirements are concerned. It was submitted that a product may very well be new but may not at all be inventive/non-obvious to a person having ordinary skill in the art and therefore, merely because a machine of the plaintiffs became commercially viable does not ipso facto mean that such a machine or components therein meet the criteria and the threshold required for obtaining a Patent. It was therefore, submitted that the Prior Art D1 pertains to an apparatus for inclusion detection that includes a device for reduction of gas bubbles i.e. ultrasonic transmitter which is shown by the defendants within Page 547 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the specification of the Suit Patent and Special Technical feature as admitted by the plaintiffs during prosecution of the Suit Patent together with years of use of Vacuum Pump for removal of gas bubbles admitted by the experts of the Plaintiffs which forms part of the common general knowledge and as such, the plaintiffs have completely failed to address such issues without showing any differentiation between the Suit Patent and Prior Art D1 without disclosing the elements in the Suit Patent which are not disclosed in Prior Art D1 and not vice versa.
9.42 It was submitted that the plaintiffs heavily relied on Page 548 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined distinguishing features between the Suit Patent and Prior Art D1 with respect to element/features which finds no mention at all in the claims of the Suit Patent. Such features include:
(a) D1 not disclosing Sealed Container
(b) D1 not generating 3D images
(c) D1 not scanning external surface of gemstone
(d) D1 using a different illuminator (Infrared vs. Laser)
(e) D1 doing the scanning in two iterations vs. a single scan in the Suit Patent
(f) D1 not fully illuminating the gemstone.
9.43 It was submitted that fundamental that three dots are 3 dots, one cannot after the grant of a patent Page 549 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claiming 3 dots say that it is line that includes the 3 dots, or a curve, or a rectangle. One has to defend what is claimed and not say that even what is not claimed per se is within the scope merely because it finds some imaginative support from the specification.
9.44 It was submitted that going by the corollary proposed by the plaintiffs for invalidating claims of the Suit Patent, the independent claims are to be interpreted as if they are restricted to such apparatus which includes all of the elements that are disclosed in the patent application. An example was given that container must be sealable container, Illuminator Page 550 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined must be Infrared Illuminator, Inclusion detection must be done in a single iteration, Gemstone being fully submerged, whole of the gemstone being scanned, detector must be a camera, Holder must have the construction as shown in figure 2, Container of the apparatus must have a Port and the Device for reducing the gas bubble must be the Vacuum Pump & Apparatus must include a cleaning device. If the independent claims are to be read/interpreted in the purported manner of reading the complete specification of a patent as suggested by the Plaintiffs, then there is no purpose of drafting claims in a Patent application. It was submitted that in such case, everything can be derived Page 551 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined from the specification itself, and whatever is disclosed in the specification, is given protection over, to the patentee without even drafting any claims.
9.45 It was further submitted that the principle of 'Broadest Reasonable Interpretation (BRI) of Claims which connotes that each of the claimed term is to be given a broadest reasonable interpretation as would be understood by the person skilled in the art and the same interpretation is followed for assessment of infringement as well as for the assessment of validity of Claims of the Patent is under challenge.
Page 552 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.46 It was further submitted that independent claims 1 and 18 of Suit Patent do not, in any manner whatsoever, require any specific type of Illuminator and hence while interpreting the term 'illuminator' it would be improper to import any restriction with regards the type of illuminator from the complete specification. If the intent of the Plaintiffs was to only secure protection for such apparatus that includes infrared based Illuminator but not of any other kind/type, they would have restricted the independent claim by adding a limitation, for e.g., "an illuminator (206) positioned and adapted to illuminate said gemstone (202) wherein the illuminator is an Page 553 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined infrared illuminator, when disposed within the said material...", In the absence of such limitation, apparatus including any illuminator is construed to be within the scope of the Suit Patent for the purpose of both assessment of Infringement as well as assessment of validity of a Patent. If this is not the case and this differentiating feature is to be relied upon, then this feature must also be considered at the time of infringement analysis wherein, if the Defendant is not using an Infrared Illuminator, it would not be held to be infringing on the Suit Patent. It was therefore, submitted that the scope of a Patent cannot vary while assessing the independent claim with respect to Page 554 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Validity and with respect to determination of alleged Infringement. 9.47 It was submitted that the aforesaid principle of Broadest Reasonable Interpretation (BRI) is also admitted by the Plaintiff's Witness who is a registered Patent Agent PW-6 and this aspect can further be appreciated from the broadest possible interpretation given by the expert of the Plaintiffs itself wherein PW-6 has clearly interpreted and has stated on record as to what the broadest reasonable interpretation would be for each of the element of Suit Patent, which clearly indicates that the scope of an Illuminator can be any light source and the scope of detector can be Page 555 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined any detector, and scope of a holder can be any support including a plate as shown in D1 in answer to Q. No. 105. 9.48 It was submitted that PW-6 in his cross examination has admitted and explained the construction of scope of element of the Claimed elements of Independent Claim No. 1 of the Suit Patent in answer to Q.Nos. 102 to 107 as under:
"Q. No. 102: Please confirm the meaning of the term "holder" as it appears in the Claim 1 of the suit patent?
Ans. A support Q.No.103: Would the scope of the term "holder" be interpreted as any holder that can hold/ support a diamond, or would it be limited to the construction shown in Fig. no. 8 of the suit patent?
(The witness referred to the suit patent for reference) Page 556 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Ans. The scope of the term "holder" would be given the broadest possible interpretation in light of the specification including the drawings.
Q.No. 104: Please give the broadest possible interpretation of the term "holder" as per your understanding?
Ans. Any means by which a stone can be stably scanned with minimal interference Q.No.105: Similarly please give the broadest possible interpretation of the terms "container", "illuminator", "detector" and "Controller"?
Ans. It would be impossible for me to in real time give the broadest possible interpretation without thoroughly studying the suit patent however my immediate reading leads me to suggest the following:
1. Container would be a vessel that can contain a holder with a stone in it and another material having a refractive Page 557 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined index different from that of the stone.
2. Illuminator can be any illuminating device.
3. Detector can be any device that detects illumination from the illuminated gemstone and material in which the gemstone is immersed and produces signals responsive thereto.
4. Controller would be a device configured to receive signals and determine a location of the inclusion in the stone based on the received signals.
Q.No.106: So, in answer to Q.No.105, are you saying that you have not thoroughly studied the suit patent as that appears to be the very mandate/ purpose of your affidavit?
Ans. I am saying that to give a definite answer no matter how thorough my understanding of the suit patent is, it will need a careful review that maybe a matter of hours or even days.
Q.No. 107: As, among all the witnesses that have deposed from the Plaintiff's side, you Page 558 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are the only one opining on the Suit Patent in context as regards its construction/ prosecution/ analysis/ controller order/ scope, so please take your time and provide us with a definite answer to the interpretation of the terms mentioned in Q.No.104 and 105 and confirm that the scope is as you have answered in Q. 104 and 105?
Ans.
1 Container would be a vessel adapted to contain a stone and another material having a different refractive index. 2 Illuminator is a light source.
3 A Detector is a light sensitive device and optionally an image detector.
4 Controller would be a device configured to receive signals and determine a location of an inclusion or inclusions based on the received signals."
9.49 It was further submitted that Prior Art D1 discloses a laser-based Page 559 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Illuminator while the Suit Patent uses an infrared based Illuminator. 9.50 It was further submitted that the approach of the Plaintiffs to counter D1 is completely flawed and is based on a product-to-product comparison instead of comparison of Suit Patent with prior art D1. Reliance was placed upon Para No. 35 of Novartis AG.& Ors. Vs. Natco Pharma Limited & Ors. MANU/DE/2921/2021.
9.51 Reliance was also placed on the decision of Division Bench of this Court in case of F. HOFFMANN-LA ROCHE LTD. & ANR. v. CIPL LTD. (supra) wherein the Court was dealing with a patent relating to the product Erlotinib Hydrochloride. The plaintiffs Page 560 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined therein applied for and was granted patent for the product Erlotinib Hydrochloride. The plaintiffs also applied for patent of polymorph B of Erlotinib Hydrochloride in India which was rejected. The main issue was as to whether in view of the rejection of the application of the plaintiffs for the patent of polymorph B, the defendant was entitled to deal with the same product i.e. polymorph B without violating the patent of the plaintiffs. The Division Bench on the issue of interpretation of Claims held as follows:-
"66. Before we apply the aforenoted legal position to the facts of the instant case we need to discuss the legal position concerning construction of claims. In the decision reported as AIR 1969 Page 561 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined BOMBAY 255 FH & B vs. Unichem Laboratories it was held that specifications end with claims, delimiting the monopoly granted by the patent and that the main function of a Court is to construe the claims without reference to the specification;
a reference to the
specification being as an
exception if there was an
ambiguity in the claim. Claims must be read as ordinary English sentences without incorporating into them extracts from body of specification or changing their meaning by reference to the language used in the body of the specification. In a recent decision in FAO (OS) No. 190/2013 Merck v. Glenmark the Division Bench held that claim construction to determine the coverage in the suit patent has to be determined objectively on its own terms with regard to the words used by the inventor and the context of the invention in terms of the knowledge existing in the industry. Abandonment of an application cannot remove what is patented earlier nor can it include something that was excluded earlier and that a patent is construed by the terms used by the inventor and Page 562 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not the inventors subjective intent as to what was meant to be covered. Merely because an inventor applies for a latter patent that is already objectively included in a prior patent but which inventor subjectively feels needs a separate patent application, doesn't mean it is to be taken at face value and therefore neither Section 3(d) or abandonment of subsequent patent application can be used to read into terms of prior application, which has to be construed on its own terms. In the decision reported as 415 F.3d 1303 Edward H. Phillips v. AWH Corporation it was held that claims have to be given their ordinary and general meaning and it would be unjust to the public, as well as would be an evasion of the law, to construe a claim in a manner different from plain import of the terms and thus ordinary and customary meaning of the claim term is the meaning of the term to a Person of Ordinary Skill in the Art as of effective date of filing of the patent application. In case of any doubt as to what a claim means, resort can be had to the specification which will aid in solving or ascertaining the Page 563 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined true intent and meaning of the language employed in the claims and for which the court can consider patent prosecution history in order to understand as to how the inventor or the patent examiner understood the invention. The Court recognized that since prosecution is an ongoing process, it often lacks clarity of the specification and thus is less useful for claim construction. The Court also recognizes that having regard to extrinsic evidence such as inventor testimony, dictionaries and treaties would be permissible but has to be resorted to with caution because essentially extrinsic evidence is always treated as of lesser significance in comparison with intrinsic evidence. In the decision reported as 457 F.3. 1284 (United States) Pfizer v. Ranbaxy the Court held that the statements made during prosecution of foreign applications are irrelevant as they are in response to unique patentability requirements overseas. The Court also held that the statement made in later unrelated applications cannot be used to interpret claims of prior patent. In the decision reported as 1995 RPC Page 564 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 255 (UK) Glaverbel SA v.
British Coal Corp the Court held that a patent is construed objectively, through the eyes of a skilled addressee. The Court also held that the whole document must be read together, the body of specification with the claims. But if claim is clear then monopoly sought by patentee cannot be extended or cut down by reference to the rest of the specification and the subsequent conduct is not available to aid the interpretation of a written document."
9.52 It was further submitted that another fundamental aspect of Patent Law that "what is not claimed" in the claims is "disclaimed" and this principle does not even need any support of the manual of the Patent office. Without such principle being followed precisely, no boundary/scope can be determined/set for the Claims of the Patent, which would lead to gross ambiguity and misrepresentation of the Page 565 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined scope of the patent. The whole purpose of the 'Claims' as a section is to enable an objective boundary to be defined for an invention so that what is desired to be protected or the subject matter over which the protection is granted, is objectified and thus enforceable in clear terms. In view of the same, any element that may have been merely explained/described in the specification but NOT claimed. Reliance was placed on decision in case of Boehringer Ingelheim International GMBH vs. Controller of Patents & Anr. (CA Comm. IPD - Pat 295/2022) more particularly, Para No. 31 of the said judgment passed by the Delhi High Court wherein it is held as under:
"31. Using this understanding of how an invention is Page 566 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ascertained in a patent application, it is clear that under Section 16 of the Act, the "plurality of inventions"
should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application.
Therefore, under Section 16, the question of whether the claims of the complete specification relate to more than invention i.e., a "plurality of inventions" has to be seen from the claims of the parent application.
Obviously, the claims in turn, have to be based on the disclosure in the specification. However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions. If applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., what is not Page 567 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claim is disclaimed'.! Similarly, Section 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible. This is the settled legal position, as also held by this Court in Nippon A&L Inc. v. The Controller of Patents /C.A. (COMM.IMPD-PAT) 11/2022, decided on 5th July, 2022). Thus, the divisional application would be maintainable only when the claims of the parent application disclose "plurality of inventions".
9.53 Referring the above judgments it was submitted that any element that the plaintiffs argue on as not being taught by prior Art D1 while not being a claimed subject matter cannot be looked into during validity analysis failing which, no objective boundary would be defined for the suit Patent in any manner whatsoever.
Page 568 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.54 It was further submitted that if in any manner, such differences, features are admitted being within the scope of the claims of the Patent, such features must be laid out and also considered during the infringement analysis. For instance, if the plaintiffs argue that the Suit Patent (while referring to Para 27 of PW-9 / Exh. 77 - Part 4 of the Court File) undertakes the inclusion detection in a single scan while Prior Art D1 requires at least TWO scans, then such a difference must also be considered as an essential element of the independent claim of the Suit Patent and looked into while determining infringement i.e., if the defendants does its scanning two or more times, it would Page 569 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not infringe on the Suit Patent as it is not undertaking the scanning in single go like is being argued by the Plaintiffs to be within the scope of Independent Claims of the Suit Patent. 9.55 It was submitted that contention of the plaintiffs that the Suit Patent claims illumination of the complete gemstone in the Independent Claims or for that matter even in any dependent claim, while the Prior Art only illuminates at one point, if this unclaimed feature is to be interpreted/considered as being a valid differentiating feature, then this feature should also be looked into while assessing infringement, and the Defendants should be held as non- Page 570 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined infringing if they do not illuminate the complete gemstone.
9.56 With regard to the claim of the plaintiffs that Novelty of Suit Patent lies in a generation of 3-Dimensional Images of the inclusions, it was submitted that generation of 3- Dimensional images is not specifically claimed in any of the Suit Patent claims and therefore, could not have been relied upon and to interpret the claim of the Suit Patent by restricting to generation of 3D images only. It was pointed out that generation of 3D images of inclusion is well known in the Prior Arts which has been admitted by the plaintiffs in the Background Section of the Suit Patent and Prior Page 571 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Art D1 specifically also discloses determination of spatial position (3D) of the inclusions based on which imaging of the inclusion is done. 9.57 Learned advocate Mr. Khurana referred to and relied upon answers to question Nos. 93, 153 and 154 put to PW-5 in his cross-examination to point out that the Detection of Location of Inclusion in 3D were well-known. 9.58 Thereafter, learned advocate Mr. Khurana relied upon the facts submitted by CEO of the plaintiffs to EP Office on 06.07.2007 while describing their own gemstone planning products to demonstrate that generation of 3D images of inclusions was well- Page 572 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined known in the Prior Art.
9.59 Learned advocate Mr. Khurana thereafter, referred to the contention of the plaintiffs that it was the inventors of the Suit Patent that combined the 2D images of the inclusions in the unique way to generate 3D image though 3D images has not been claimed in any of the Independent Claims of the Suit Patent vis-a-vis the fact that the Prior Art D1 clearly indicates determination of the spatial position to generate 3-D model of inclusions.
9.60 Reliance was also placed on the affidavits of DW-7 and DW-15 by which, technical and legal issues associated Page 573 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with the Suit Patent in the relevant domain were addressed as well as the questions put to DW-7 and DW-15 in their cross-examination more particularly, question Nos. 1 to 50 put forth to DW-7 which clearly shows his technical knowledge with respect to deposition made by him and therefore, relevant questions put forth to DW-7 being answer to relevant question Nos. 62,67,69,83,84,85,87,90,91,104,112 to 119 were relied upon to demonstrate that the suit patent is invalid. It was therefore submitted that the contention of the plaintiffs that DW-7 was not an expert is without any basis. 9.61 Reliance was placed on the Techno-Legal Opinion of DW-15 filed Page 574 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined along with his affidavit and answers to question Nos. 8, 19 and 20 in his cross-examination to submit that as per the opinion of DW-15, the doctrine of Pith and Marrow is the test that needs to be used to assess if the particular article or product infringes one or more claims of patent granted in India which can be invoked when the accused product took all the essential integers of the patented invention irrespective of whether or not it omitted, varied or added some inessential feature. It was therefore opined that in accordance with the doctrine of Pith and Marrow in case a granted claim is directed towards apparatus reciting several parts/components of the apparatus and alleged apparatus includes one of the Page 575 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined parts/component recited in granted claim then it needs to be determined if the omitted parts are essential features of the claimed invention or not. Ultimately, it was opined that in case a Prior Art relied upon to contest validity of a claim does not belong to the same technical field, but addresses the same technical problem and provides the same solution as claimed therein, such Prior Art must be construed to be a valid Prior Art for assessment of validity of the claim and in that event, it can be prima facie proved that the inventor had used the Prior Art disclosed solution to solve the same technical problem addressed by the Prior Art in a predictable manner. Page 576 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.62 Learned advocate Mr. Khurana thereafter referred to Prior Art D2 which clearly focused on detection of inclusion in an immersion glass which is a light transmitive substrate and has the same properties of the refraction and reflection as that of gemstone, which has also been admitted by the plaintiffs in the suit patent. It was therefore submitted that the Prior Art D2 cannot be said to be from a different technical domain by distinguishing it scattering of light which cannot be used in gemstone as the scattering of light is fundamental aspect and that when the light is transmitted onto a gemstone, several inclusions scatter light like it would on any internally transitive surface Page 577 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined such as glass that forms part of the D2 reference and therefore D2 is a relevant Prior Art with respect to the Suit Patent. Reference was made to answer to question No. 11 put to DW 7. 9.63 In support of his submissions, reliance was placed on para 12 of the decision in case of AGC Flat Glass Europe SA vs Anand Mahajan and Ors (supra):
"12. In support of the plaintiff's contention as regards the scope of the amended claim, the plaintiff has cited Baker Perkins Ltd's Application (1958) RPC 267 decided by Mr. Justice Lyoyd-Jacob. While deciding whether or not the amendment of the patent ought to be allowed, it was observed as follows (at page 273):
As regards the first point, Mr. Page 578 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Lochner referred to a number of reported cases in which an amendment which imported into a claim a limiting feature from the description was refused on the ground that the amended claim would claim a new combination an invention different from that originally claimed. These cases were decided under the Acts prior to the 1949 Act, when one provision was that an amended claim must not claim an invention substantially larger than or different from that of the original claim, a provision not to be found in section 31 of the 1949 Act The section is clear that an amended claim may not be larger than the original claim it must fall wholly within its scope but so long as it does this, there is no requirement that it shall not be different A very common form of amendment when a claim for a piece of mechanism proves to have been drawn too widely is the addition to the claim of some additional feature of construction so that the scope of the original combination is cut down to that of a sub-combination. For example, amendments which allow Page 579 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined an appendant claim to be combined with the main claim are constantly allowed provided that the sub-combination is, in truth, a narrowing down of the original combination and not the formulation of an entirely different one.......
If limitation to sub-combination properly falling within the scope of the original wider combination discards or eliminates from the invention claimed everything except this sub-combination, I think such amendment must come within the meaning of disclaimer."
9.64 Reliance was placed on section 10(5) read with section 2(1)(ja) of the Patent Act,1970 which provides that complete satisfaction that the claims of a complete satisfaction shall relate to a single invention or to a group of inventions linked so as to form a single inventive concept shall be clear and succinct and shall be fairly based Page 580 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined on the matter disclosed in the specification vis-a-vis the inventive steps as defined in section 2(1)(ja) of the Patent Act so as to submit that the so called inventive steps of the suit patent as admittedly being in the Prior Art D1 and other references relied upon by the defendants. It was submitted that in the originally filed patent application had 113 claims having multiple distinct purported invention which were detected by the plaintiffs resulting into grant of only two independent claims being Claim No. 1 and Claim No. 18 and therefore, all features that claimed in such detected claims cannot be deemed to be protected within the scope of the Suit Patent. In support of his submissions, reliance Page 581 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined was placed on the decision of F. Hoffmann-LA Roche Ltd. and anr vs. Cipla Ltd 2008 SCC Online Del. 382.
"67. For the above conspectus, pithily put, principles of claim construction could be summarized as under:--
"(i) Claims define the
territory or scope of
protection (Section 10(4)(c) of the Patents Act, 1970.
(ii) There is no limit to the number of claims except that after ten claims there is an additional fee per claim (1st Schedule of the Act).
(iii) Claims can be independent or dependent.
(iv) The broad structure of set of claims is an inverted pyramid with the broadest at the top and the narrowest at the bottom (Manual of Patents Office- Practice and procedure).
(v) Patent laws of various countries lay down rules for drafting of claims and these Page 582 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined rules are used by Courts while interpreting claims.
(vi) One rule is that claims are a single sentence defining an invention or an Inventive concept.
(vii) Different claims define different embodiments of same inventive concept.
(viii) The first claim is a parent or mother claim while remaining claims are referred to as subsidiary claims.
(ix) If subsidiary claims
contain an independent
inventive concept different
from the main claim then the Patent office will insist on the filing of a divisional application.
(x) Subject matter of claims can be product, substances, apparatus or articles;
alternatively methods or process for producing said products etc. They may be formulations, mixtures of various substance including recipes. Dosage regimes or in some countries methods of use or treatment may also be claimed.
Page 583 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (xi) Where claims are
'dependent' it incorporates by reference 'everything in the parent claim, and adds some further statement, limitations or restrictions'. (Landis on Mechanics of Patent Claim Drafting).
(xii) Where claims are 'Independent' although relating to the same inventive concept this implies that the independent claim stands alone, includes all its necessary limitations, and is not dependent upon and does not include limitations from any other claim to make it complete.... An independent Claim can be the broadest scope claim. It has fewer limitations than any dependent claim which is dependent upon it. (Landis on Mechanics of Patent Claim Drafting)".
9.65 It was submitted that the test for Novelty is to evaluate if there is any element of independent claim that is not disclosed in the Prior Art individually or otherwise and the test Page 584 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for inventive steps is what has been held by the Hon'ble Supreme Court in case of Biswanath Prasad Radhey Sham vs. Hindustran Metal Industries Manu/SC/0255/1978 in stark contrast to the methodology adopted by the plaintiffs to pick up each Prior Art individually and highlighting some purported difference between apparatus of the Suit Patent and that of Prior Art without showing why a person skilled in the Art could not have arrived at invention as claimed in the suit patent as under:
"Another test of whether a document is a publication which would negative existence of novelty or an "inventive step"
is suggested, as under:
Had the document been placed in the hands of a competent Page 585 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented Invention, would he have said, "this gives me what I want ?"
(Encyclopaedia Britannica; ibid). To put it in another form: "Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned ?"
Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimadalal J.
of Bombay High Court in
Farbwrke Hoechst & B.
Corporation v. Untchan
Laboratories MANU/MH/0064/1969:
AIR 1969 Bom 255.
With the aforesaid prefatory survey, we now turn to the 1911 Act. The Act provides various checks to prevent an Invalid patent being granted which does not involve any inventive step or a manner of new manufacture or Improvement. The procedure Page 586 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for obtaining an exclusive privilege under this Act (before the Amending Act 39 of 1970), may be described as below:
The true and first inventor or his legal representative or assignee submits an application in the prescribed form and manner to the Patent Office. The application must contain a declaration to the effect that the application is in possession of an invention, for which he desires to obtain a patent. Such an application must be accompanied, inter alia, by either a provisional or complete specification. A provisional specification must prescribe the nature of the invention. A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. A specification whether provisional or complete, must commence with the title, and in case of a complete specification must and with a distinct statement of the Invention claimed. (Section
4) The Controller then considers that applications and may Page 587 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined require the applicant to supply suitable drawings and such drawing shall be deemed to form part of the complete specification. If a complete specification is not left with the application, the applicant may leave it at any subsequent time within 9 months from the date of the application. The application is then examined by the Controller of Patents for the patentability of the invention. The Controller then makes a thorough search among his records for novelty. The Controller is bound to refer to an Examiner an application, in respect of which a complete specification has been filed.
The Examiner then, after
careful and elaborate
examination, submits his report to the Controller, inter alia, as to whether or not-
(a) the nature of the invention or the manner in which it is to be performed is particularly described and ascertained in the complete specification;
(b) the application, specification and drawings have been prepared in the prescribed manner;Page 588 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(c) the title of the specification sufficiently indicates the subject matter of the Invention;
(d) the statement of claim sufficiently defines the invention;
(dd) the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification;
(e) the invention as described and claimed is prima facie a manner of new manufacture or improvement;
(f) the specification relates to more than one invention;
(g)... ...
(h) ... ... "
9.66 It was submitted that reliance placed by the plaintiffs on the element such as 'Port', 'Heaters for immersion medium' and a 'Cabin' as part of Figure Page 589 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined No.2 of the suit patent which are not even mentioned in the independent claims of the Suit Patent and therefore, such elements cannot be considered during evaluation of validity of suit patent.
9.67 It was submitted that the contention of the plaintiffs that the Suit Patent discloses complete submersion whereas the Prior Art D1 does not do the same is not correct as the plaintiffs have misinterpreted the arguments of the defendants pertaining to Specific vs. General inasmuch as a bare reading of the claims of the suit patent indicates that claims as generic as regards the construction of the apparatus is concerned and it does not Page 590 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined give detail of the material of construction of the container size, shape and same for the elements such as illuminator, detector among others and therefore, the say of the plaintiffs that the details are mentioned in the specification of the suit patent would not mean that the suit patent is specific.
9.68 It was therefore submitted that merely because the independent claims of the suit patent nowhere mandate that the container must be sealed and therefore, this sealed container cannot be considered as the element for the purpose of differentiation with prior Art D1. Reliance was placed on the answer to Question No. 159 put to PW-5 Page 591 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to demonstrate that it clearly indicates that it would absolutely logical to seal the container for an apparatus having an immersion medium and merely because D1 does not explicitly state that the container is sealed cannot be considered to mean that it is not.
9.69 It was submitted that the attempt on the part of the plaintiffs to compare the keywords to extract from Prior Art and compare them with the suit patent to claim invalidation by the defendants is without any basis as there is no Novelty or inventive steps involved for the suit patent. Reliance was placed on the decision of Bishwanath Prasad Radhey Shyam vs. Page 592 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Hindustan Metal Industries (supra).
9.70 It was further submitted that the defendants have not adopted any hindsight approach as in the facts of the case given is an admitted and direct Prior Art known to all the parties to disclose all the elements claimed in the suit patent.
9.71 It was submitted that the technical problem being solved in the suit patent, being imputed to the person skilled in the art, is to improve the accuracy of imaging by removing the bubbles from the immersion medium, and each of the prior-art documents relied upon by the Defendants clearly provides a solution to the Page 593 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined technical problem at hand i.e. D1 teaches to use ultrasonic transmitter, and D2 teaches to use vacuum pump, making it clear that there is no application of hindsight, rather, use of vacuum pump, ultrasonic transmitter and the likes are logical solutions as taught by the prior-arts to solve the technical problem. In fact, the Plaintiffs have admitted in the specification of the suit patent that any conventional method known for refining the glass can be used, further corroborating the fact that no hindsight is required in the instant matter, rather, the claimed technical solution is the very first most obvious choice that anyone having ordinary skill in the art would choose to remove Page 594 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined bubbles, which is also admitted by multiple witnesses of the Plaintiff."
9.72 It was submitted that the claim of the plaintiffs that the Prior Art D1 pertains to polished gemstones and suit patent pertains to rough gemstones is also not true and correct because such argument was never made and replied to the counter claim and none of the claims required that the gemstone to be a rough gemstone whereas D1 clearly refers to inclusion detection in a precious gemstone that would logically and technically always include a rough gemstone as inclusion detection would not even make sense in a polished i.e. an already cut gemstone.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.73 It was further submitted that claim of the plaintiffs that term 'device' in the independent claim is optional and the system can include any means mentioned in the dependent claims such as introduction of helium gas. The independent claim only says that "system including device wherein, word 'including' as a transitory term means the element (device) must necessary or mandatorily be a part of the system. Reliance was placed to the answer to Question Nos. 107 and 108 put to PW-1 and PW-6 and answer to Question No. 71 put to PW-6 in this respect. 9.74 Learned advocate Mr. Khurana submitted that defendants have demonstrated that prior Art D1 to D8 Page 596 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined contains the element of the suit patent and therefore, independent claims are required to be held to be invalid and all dependent claims are also required to be held to be invalid.
9.75 Referring to the above facts it was submitted that the independent claims are the legs of any claim set and without the independent claims, dependent claims have no meaning or basis to stand and therefore, independent Claims No. 1 and 18 are required to be invalidated, no meaning or meaningful interpretation can be retained by holding one or more dependent claims as valid. Reliance was placed on the decision of Enercon India Ltd vs. Alloys Wobben(supra). Page 597 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 9.76 Learned advocate Mr. Khurana summarized his submissions as under:
1) The only novelty of the invention, if at all, admittedly lies in "said system including, a device for withdrawal of gas bubbles from the said material", which is clearly evident from the prosecution history and the manner in which the claims have been amended in the patentee in the instant matter. Therefore, for evaluating validity of the instant patent application, whether the so-called alleged technical feature is novel and inventive needs to be looked into and nothing beyond it as sooner the amendments by way of disclaimer are made, all other elements which form Page 598 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined part of the claim have been admitted to be in the Prior Art by the Patentee.
2) The Suit Patent lacks novelty in view of Prior Art reference D1 and ultrasonic transmitter clearly maps to "said system including a device for withdrawal of gas bubbles from the said material as it has an inherent property' of reducing/withdrawing gas bubbles which is also supported by the Cross Examination of PW-5 (Q. No. 138) and the plaintiffs itself in the Suit Patent.
3) Vacuum Pump has been widely known in the art for the exact same purpose/function of removing/ withdrawing gas bubbles, and has been used for several years before the Page 599 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined filing of the suit patent as has been categorically admitted not just by PW-5 who claims to be the expert, but also by PW-1. This has also been admitted in the Suit Patent that these are conventional mechanisms of reducing gas bubbles, and therefore no inventive step can lie according to this particular device/system and/or to the manner in which it has been applied as it just a simple application of known technique in an area of application without any modification/non-
obviousness in any manner. It is also to be appreciated that no modification in any manner has been done to these vacuum pumps per se, and they are as-is being used off-the-shelf to solve the purported long-known technical problem Page 600 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of removal of gas bubbles, making the device/system, its application, and the manner of application clearly lacking inventive step.
4) The Suit Patent lacks inventive step at least owing to the teachings of the prior arts D1 to D7, admitted stand of the Plaintiffs in the suit patent, and admissions of self-use of the device/system as the so-called technical solution for several years by the Plaintiff's own witnesses, and that it also discloses the long known and most obvious technical solution to the identified technical problem of Gas Bubble removal to clarify the images being generated.
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5) For the above-mentioned reasons, it is humbly prayed before this Hon'ble Court to revoke the Suit Patent with costs."
X- Reply/submission of plaintiffs for counter claim-revocation of the suit patent 10.1. Learned advocate Mr. Grover for the plaintiffs in reply to the submissions made on behalf of the defendants for revocation of Suit Patent submitted that Suit Patent relates to the determination of the location of inclusion in gemstone. It was submitted that invention of the plaintiffs relates to the device which precisely identifies the location and size of the inclusion in the gemstone. Page 602 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.2 Referring to figure 2(b) of the suit patent at Exh.C page 131, it was submitted that the suit patent is for the entire apparatus which is totally different to the apparatus of the Suit Patent No.876/2008 which is heavily relied upon by the defendants. It was explained in detail as to how the method invented by the plaintiffs for apparatus of suit patent is different from the apparatus described and the method claimed in Suit Patent Application No.876/2008. 10.3 It was explained that Claim no.1 and Claim no.18 of the suit patent are totally different than claim no.1 of the Suit Patent application No.876/2008. It was further submitted that there is no holder cabin, compartment, sealed container, port, Page 603 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined openings in compartment and heaters in Suit Patent No.876/2008 whereas same is included in the Suit Patent. It was submitted that Suit Patent No.876/2008 claims the method for placing the diamond within a material, controlling the temperature of the material to maintain the material and diamond, illuminating the diamond and determining the position whereas suit patent claims the method for providing a material having a second refractive index, taking measures for reducing the presence within said material of any substance other than the inclusions, having a third refractive index, disposing the gemstone on a holder within said material, illuminating the gemstone by an illuminator and detecting illumination of the gemstone within said material by a detector, determining by a Page 604 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined controller, a location of an inclusion based on said detection. It was submitted that Suit Patent No.876/2008 does not teach disposing the gemstone on a holder within said material as disclosed in the suit patent.
10.4 Similarly, Suit Patent No.876/2008 does not teach taking measures for reducing the presence within the said material of any substance other than the inclusions having a third refractive index. 10.5 Similarly, Claim No.19 to 39 of the suit patent is not disclosed in 876/2008.
10.6 Learned advocate Mr. Grover explained each and every part of the Page 605 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined apparatus of the suit patent in detail which is not to distinguish the same from Suit Patent No.876/2008 vis-a-vis each claim made by the plaintiffs so as to distinguish the suit patent as a unique invention made by the plaintiffs for which the patent is registered. It was submitted that Suit Patent No.876/2008 is silent on the system, operative to reduce the presence within the material of any substance other than inclusions, having a third refractive index and system including a device for withdrawal of gas bubbles from the said material.
10.7 Learned advocate Mr. Grover thereafter referring to various charts submitted that different patents have overlapping claims. He referred to Patent Page 606 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined No.335444 under the application bearing No.763/2011 granted to the applicant "ACE TECHNOLOGIES CORPORATION" for the invention titled "TUNABLE FILTER CAPABLE OF CONTROLLING TUNING CHARACTERISTICS". It was submitted that the said application related to a tunable filter which can vary its filter characteristics such as center frequency and band width. It discloses a tunable filter using a sliding system that enables the adjustment of tuning characteristics and that can also be used adaptively in various environments. 10.8 Referring to Patent No.302804 under the application bearing No.806/2011 granted to "ACE TECHNOLOGIES CORPORATION" for the invention titled "TUNABLE FILTER FOR EXPANDING THE TUNING RANGE", it was Page 607 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that the said patent relates to a tunable filter which can vary its filter characteristics such as center frequency and band with, however, it discloses a tunable filter using a sliding system for obtaining a wide tuning range and using a sliding system which by changing the shape of resonators, can obtain a wider tuning range than general disc-shape resonators. It was therefore, submitted that in Patent Application No.763/2011 and 806/2011 for which patents were granted had overlapping claims. It was submitted that in both the suit patents, various components of the apparatus were same except the difference in claim no.1 and additional claim nos.6 and 7 in Patent No.335444. It was therefore, submitted that suit patent can be granted even though the apparatus of Page 608 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prior art has similar components of apparatus. It was submitted that suit patent is granted for invention made by the plaintiffs with regard to device which reduces the gas bubbles and entire apparatus provides for all the inclusions in gemstone.
10.9 Learned advocate Mr. Grover thereafter submitted that heavy reliance placed by the defendants on prior Art D-1 is not tenable by referring the comparison of Figure 2B of the Suit Patent with Figure 1 of Prior Art D1 and pointing out total difference in entire apparatus of the Suit Patent and that of Prior Art D-1. It was submitted that there is no cabin in Prior Art D-1, container is not sealed in Prior Art D1 whereas in suit patent container Page 609 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined includes a holder operative to support a gemstone in the container and in the material and the container contains the material while in Prior Art D-1 there is no holder as such. It was further pointed out that in the suit patent, heater surrounds the container to provide uniform heating of material while in D1, no heaters are present. It was submitted that the container in the suit patent is so enabled to make it possible to allow anyone or all of the features i.e. vacuuming the container, filling the container with inert gas and maintaining an inert gas atmosphere in the container, while in Prior Art D1 such features are absent. It was pointed out that there was no compartment or port in Prior Art D1. It was submitted that in prior art D1 it was disclosed that for Page 610 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined irradiation of immersion liquid, the container needs to be tilted if the immersion medium is to viscous and such feature in Prior Art D1 is totally different than the invention contemplated in the suit patent because in the Suit Patent it is imperative to make sure that immersion medium is not contaminated and not even a single gas bubble is present whereas tilting a thick viscous liquid while it is in an open container would lead to a totally contrary situation. It was submitted that even using an ultrasonic transmitter while the immersion liquid is in the open container will agitate the liquid and create more air/gas bubbles. It was further pointed out that Prior Art D1 does not mention about the type of liquid used whereas in the suit patent molten Page 611 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined selenium is heated at a particular range of temperature and wavelength to form the selenium in gel form and such temperature and wavelength ranges are a result of extensive research to obtain the required consistency of the selenium to bring the refractive index in the range between 0 and 0.5 close to the stone which is not disclosed in Prior Art D1.
10.10 It was submitted that there is no holder in Prior Art D1. It was submitted that Prior Art D1 does not mention about fixing of the stone to the plate and about the movement of the stone which may occur during the agitation or tilting which leads to an error in scanning. It was submitted that Prior Art D1 is illuminating an extremely small portion of gemstone using a Page 612 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined beam of light which has a cross section of the same order of magnitude as the smallest inclusion to be detected, while the suit patent illuminates the entire stone and image the inclusions through a single scan. It was submitted that in a suit patent light source is infra-red light and mirror is absent in the suit patent and therefore, there is no need of feed device in the suit patent.
10.11 It was pointed out that Prior Art D1 is not contemplating a camera but only a photosensitive device to detect the beam of light that emits the signal. It was submitted that photosensitive device is one point detector that captures a beam of light and converts it into electrical signals whereas camera is a multiple point Page 613 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined detector that captures the light and acquires each of the pixels in an image. It was therefore, submitted that detector in the suit patent is a high resolution camera acquiring 1280*1024 pixels or more. It was submitted that in the Prior Art D1, controller is absent whereas in suit patent, the holder is rotated around an axis of tube, the plurality of images of different orientations of stones are taken and sent to the controller to reconstruct the position of inclusions with respect to the coordinates of apparatus. It was pointed out that the controller is used to construct the 3D geometry of the flaws and to construct the 3D geometry of the stone. Whereas in Prior Art D1 laser ray produces a spiral scanning trajectory and the successive spiral being closer than the Page 614 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined cross-section of the beam i.e. 0.02mm. However, how this spiral scanning trajectory is used to determine the position is not disclosed and contrary to Prior Art D1, the suit patent mentions the features required to reconstruct the position of the inclusions in the 3D geometry of the stone.
10.12 It was further submitted that heater is also absent in Prior Art D1 Whereas apparatus of the suit patent comprises a heater for heating the material in solid form to become a liquid having second refractive index before the gemstone is disposed therein and for this, the heater surrounds the container to provide uniform heating of the material and when stone is also heated by heaters before Page 615 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined immersing in the heated medium while passing through the port. It was therefore, submitted that peculiar difference of Prior Art D1 is that it does not disclose the heaters to be used for the liquid nor does it discloses preparing the selenium as a gel by using controlled heating through the heaters as explained in the suit patent to bring the refractive index in the range between 0 and 0.5 close to the stone. It was submitted that Prior Art D1 is silent on the system, operative to reduce the presence within said material of any substance other than inclusions, having a third refractive index and system including a device for withdrawal of gas bubbles from said material. It was submitted that Prior Art D1 only discloses the ultrasonic transmitter which is to displace any dust Page 616 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined on the surface, however this includes agitation of the liquid leading to the creation of the gas bubbles in the liquid whereas in the suit patent apparatus cleaning the gemstone before inserting it inside the apparatus using a washing medium to remove foreign compounds from the surface of the gemstone and thereafter removing the washing medium from the surface of the gemstone using a cleaning liquid is provided and using a sealable container for the material in which gemstone must be immersed, such that contaminants cannot enter the container when it is sealed and by introducing an inert gas such as helium through the container in which the material is stored and maintaining inert gas atmospheric pressure in the sealable container by slow Page 617 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined heating of the material in the container in the solid pellet formed at excess pressure of helium to become a liquid before the stone is inserted in the material and thereafter applying a vacuum to the container in which the material is located before and/or during the heating of the material and inserting the diamond into the container at a slower pace so as to see that stone is fully submerged in the material held in the container, which pace is slow enough to prevent the entrance of any bubble of the inert gas into the material. It was further submitted that thereafter heating the gemstone, while it is in the passage through which it is inserted into the material to a temperature which is approximately that of the immersion material.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.13 Referring to the aforesaid analysis, it was submitted that :
1) D1 is absolutely different and does not teach the method and apparatus as claimed in the suit patent.
2) D1 does not deal with identifying the position and size of the gemstone as claimed in the suit patent.
3) In D1, cabin, port, immersion medium (chalcogenide group, preferably selenium), holder, illuminator (as used in the Suit Patent which is near infra-red), detector (camera), heaters and openings are all absent.Page 619 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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4) In D1, the process of scanning is based on the signals captured through photosensitive device. This device scans the gemstone in a spiral scanning trajectory. On the contrary, in the Suit Patent the signals are captured through a high-resolution camera to acquire images of the gemstone and produce 3D geometry of the gemstone.
5) D1 does not mention if the container is sealed, which shows that D1 does not contemplate using an immersion medium which is volatile. D1 also does not contemplate keeping the immersion medium contaminant free.
6) D1 does not contemplate a camera, which shows that D1 is silent about storing and Page 620 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined using the signals intercepted by the detector in D1.
7) D1 does not disclose about reducing the presence of gas bubbles and removing any contamination without creating the bubbles.
8) One of the objectives of D1 is to detect the position of inclusions which is mentioned under the second scanning operation in lines 6-8 of Column 5 in the description but D1 does not explain how the position is determined.
9) While D1 mentions "the exact spatial position of inclusions detected in a stone by the first scanning operation can be calculated on the basis of the two scannings" (see lines 37-40 column 2), it Page 621 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined fails to explain the basis/principle for carrying out the calculations and therefore, fails that how D1 arrives at the spatial positions of the inclusions in a rough gemstone, as contemplated therein.
10) D1 lacks detailing about the entire process including determining position (as mentioned in lines 6-9 of column 5), detail on how the stone is rotated (as mentioned in lines 37-40 of column 4), how the second scanning is done (as mentioned in lines 6-9 of column 5), and how the size of inclusions is determined (as mentioned in lines 1-5 of column 5) etc.
11) D1 does not even mention about determining the shape of the inclusions and in the absence of the exact shape of the Page 622 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined gemstone, the 3D geometry of the said gemstone cannot be determined. 10.14 With reference to Prior Art D2, it was submitted that the same is not in relation to gemstone in any manner as the Prior Art D2 is related to detecting inclusions in internally transmissive substrates which contemplates that inclusions can also be seen with a naked eye which is not the case in the invention disclosed in the suit patent. It was submitted that Prior Art D2 does not provide any teaching to apply the process and/or apparatus to gemstones. With regard to scanning process as well as the apparatus, it was submitted that difference between the suit patent and the Prior Art D2 is totally different. It was submitted Page 623 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that using the scattering of light to detect inclusion in a gemstone is not contemplated in the suit patent whereas Prior Art D2, bulk glasses or plastic substrates which is scanned has a first surface as well as second surface which is kept inside a vessel which contains an index matching fluid which is stated to be a nontoxic oil having low volatility. It was pointed out that the phenomenon of scattering of light is different from the phenomenon of refraction of light as scattering of light is the phenomenon wherein the light incident on a medium, upon coming in contact with a particle, deviates or diverts to another direction, refraction on the other hand refers to the bending of light at a certain angle (depending on the refractive index of the Page 624 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined medium) when it passes from one medium to another medium. It was therefore, submitted that Prior Art D2 is not relevant to any person skilled in the art. It was pointed out that Prior Art D2 also contemplates using a vessel which has black coated walls, however, suit patent does not even consider coating the container. Pointing out to figure 1 of the Prior Art D2, it was submitted that even a human eye is treated as a detector in the invention disclosed in Prior Art D2 which demonstrates the fact that optical behaviour and nature of bulk glasses and plastic substrates are very different whereas gemstones have highly refractive elements and therefore, Prior Art D2 clearly contemplates more than one scan of the bulk glasses and plastic Page 625 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined substrates which is not possible in case of gemstones.
10.15 It was pointed out that there is no cabin in the Prior Art D2 whereas cabin in the suit patent comprises the compartment, container and port. It was pointed out that container and the vessel are very differently adapted in the suit patent and Prior Art D2 as the vessel is not sealed and is disclosed as being an open one in D2 and some of the walls of the vessel are also coated black whereas in the suit patent, the container is sealable and is not coated black and the container is also adapted using heaters and vacuum devices. It was pointed out that there is no compartment in Prior Art D2 and only a vessel is disclosed in D2. It was submitted Page 626 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that there is no port or holder in Prior Art D2 and with regard to immersion medium, D2 only discloses a refractive index matching fluid but fails to disclose any immersion medium with a specific refractive index. It was therefore, submitted that a person skilled in the art would not rely on D2 to arrive at an immersion medium for the purposes of determining inclusions in rough gemstones. It was submitted that index matching fluid in D2 is a non-toxic oil having low volatility and this fluid is stable when exposed to the air whereas the material in the suit patent is in fact highly volatile and can be used to perform the invention disclosed in the suit patent only under controlled circumstances. Therefore, the material used in Prior Art D2 is stable Page 627 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined upon contact with air whereas the material used in suit patent oxidises upon contact with air.
10.16 It was also submitted that there is a difference in illuminator used by the suit patent and Prior Art D2 by pointing out that Prior Art D2 discloses maintaining a collimated light beam after a light beam enters the incident surface of the bulk glass/plastic substrate. It was therefore, submitted that no skilled person in the art will be motivated to use such disclosure as the surface of a rough gemstone is textured and irregular and therefore, to maintain a collimated light beam after the light beam passed through the gemstone is impractical. It was submitted that illuminator used in Prior Art D2 is different inasmuch as light Page 628 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined emitted from this illuminator is visible to the naked human eye which is not the case in the suit patent.
10.17 With regard to detector and controller it was submitted that the apparatus of suit patent and Prior Art D2 are totally different as no camera of high resolution is used by Prior Art D2 to ensure capturing the smallest inclusions in a gemstone as D2 discloses that the inclusions can be detected by naked human eye or a device such as a camera. It was therefore, submitted that Prior Art D2 clearly contemplates that inclusions in the bulk glass or plastic substrates are visible to the naked eye. However, inclusions within a gemstone cannot be determined accurately by the human eye. Page 629 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Similarly the position of detector in the suit patent is parallel and opposite to the light source whereas in Prior Art D2, the detector is placed at the side of the first surface of the object i.e. usually at the open side of the vessel wherein the light scattered by the inclusions as the vessel sides are black coated.
10.18 Similarly it was also submitted that signal analyser in Prior Art D2 does not contemplate calculating the 3D geometry of the inclusions of the bulk glasses or plastic substrates as it only obtains and registers this information whereas in the suit patent, detection is done by the controller.
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10. 19 It was submitted that there is no heater in Prior Art D2 whereas in suit patent heating the immersion material is crucial in order to adapt it for scanning the rough gemstones. It was submitted that D2 is silent on the system, operative to reduce the presence within the said material of any substance other than inclusions, having a third refractive index and system including a device for withdrawal of gas bubbles from the said material. It was submitted that Prior Art D2 is only concerned with removal of gas bubbles from the bulk glasses and plastic substrates and it does not mention anything regarding the removal of any gas from the fluid used therein. Therefore, Prior Art D2 is different from the invention disclosed in the suit patent to the extent that it Page 631 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined does not disclose anything in relation to removal of bubbles or contaminants from the immersion medium/fluid nor it teaches anything in relation to de-gasing or removal of contaminants from the immersion medium whereas suit patent includes a system for withdrawal of gas bubbles from the immersion medium. It was submitted that Prior Art D2 fails to disclose an apparatus or method which is disclosed in the suit patent.
10.20 With regard to Prior Art D3 to D8, learned advocate Mr. Grover submitted distinguishing features in relation to suit patent as under:
"D3-Some New Immersion melts of high refraction (Page 110 of Counter claim) Page 632 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined DIFFERENCES
1. D3 teaches away from the invention disclosed in the suit patent as D3 does not disclose the use of the immersion materials cited therein. (The same is also cited at page no. 2846 of the written statement to the counter claim).
2. D3 also fails to disclose an apparatus or method such as the one disclosed in the suit patent. [The same is also cited at page no. 2846 of the written statement to the counter claim)
3. D3 itself teaches away against using melts including selenium for the reason that the same are opaque and highly coloured. [The same is also cited at page no. 2846 of the written statement to the counter claim) (See para 2 of D3). Therefore, a person skilled in the art upon reading D3 would not be motivated to use Selenium as an immersion melt
4. D3 also teaches away from the invention disclosed in the suit patent since it discloses melting powders between two object glasses for determination of refractive Page 633 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined indices of these powders with a microscope. [The same is also cited at page no. 2846-47 of the written statement to the counter claim)
5. D3 contemplates using powders of various types by melting them over a low flame.
It is clear that this disclosure has no relevance to the invention wherein a gemstone is immersed inside an immersion medium and therefore a person skilled in the art of detecting Inclusions within a rough gemstone would not be motivated to use selenium as an immersion medium. (The same is also cited at page no. 2847 of the written statement to the counter claim)
6. D3 fails to teach the use of Selenium as an immersion medium to detect the inclusions in the gemstone.
7. D3 does not mention anywhere if any of the compounds can be used conveniently in the gemstone industry. It ought also to be noted that the elements/compounds mentioned in D3 are not part of day-to-day knowledge of a person skilled in the art and therefore, the information disclosed therein Page 634 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined does not tantamount as a prior art for a person skilled in the art of gemstones.
D4- Growth of large single crystals of hexagonal selenium from the melt at high pressures (Page 112 of Counter claim) DIFFERENCES
1. D4 also fails to disclose an apparatus or method such as the one disclosed in the suit patent. [The same is also cited at page no. 2851 of the written statement to the counter claim)
2. In D4, higher pressure is achieved by gasification and thermal expansion of argon whereafter, there is a need of degassing in order to achieve the highest purity of selenium crystals (See para 4 lines 5-6 of D4). It is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as disclosed in the Suit Patent. In the Suit Patent, degassing is done at a controlled temperature and pressure unlike D4 wherein degassing is done at extremely high pressures to achieve concentrated and pure forms of Selenium. D4 does not mention Page 635 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined anything regarding the removal of just gas bubbles from molten Selenium. [The same is also cited at page no. 2851 of the written statement to the counter claim)
3. D4 does not mention anything in relation to the usage of Selenium as an immersion medium. [The same is also cited at page no. 2851 of the written statement to the counter claim)
4. D4 does not mention any details in relation to degassing of molten selenium while it is stored in container. In the suit patent on the other hand, it is imperative to keep the immersion material free of gas bubbles while it is in the container so as to achieve an accurate image of a rough gemstone. [The same is also cited at page no. 2852 of the written statement to the counter claim)
5. D4 itself mentions that the container materials investigated while performing the experiment disclosed in D4 were found to be unsatisfactory. This clearly shows that D4 takes a person skilled in the art away from making any use of molten Page 636 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined selenium due to the problems cited in D4 itself. Therefore, a person skilled in the art is unlikely to use D4 as a prior art.
D5-Temperature dependence under pressure of the kinetics of crystallization of bulk amorphous selenium (Page 113 of Counter claim) Differences
1. D5 also fails to disclose a method such as the one disclosed in the suit patent. (The same is also cited at page no. 2853 of the written statement to the counter claim)
2. D5 also does not mention any details in relation to degassing of molten selenium while it is stored in the container. In the suit patent on the other hand, it is imperative to keep the immersion material free of gas bubbles so as to achieve an accurate image of a rough gemstone. [The same is also cited at page no. 2853 of the written statement to the counter claim).
3. D5 only uses degassing to achieve very high-pressure Page 637 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined environment and obtain granules of selenium from its amorphous physical state. D5 does not disclose in any manner as to how to use molten form of selenium, let alone using it as an immersion medium. [The same is also cited at page no. 2852 of the written statement to the counter claim]
4. D5 also does not disclose how to remove the bubbles from the immersion medium let alone molten selenium. [The same is also cited at page no. 2853 of the written statement to the counter claim]
5. The Suit Patent discloses using specific wavelength and temperature for achieving a favourable environment for scanning the gemstone while it is contained in molten selenium. Therefore, the parameters disclosed in the suit patent are different than D5 *The Defendants did not refer to prior arts D-6 to D-8 specifically, nonetheless the Plaintiffs are pointing out the differences between the prior arts D-6 to D-8 and the suit patent as follows:
Page 638 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined D6-Method and its apparatus for inspecting defects (Page 181 of Counter claim) Differences
1. D6 is a different technology than the suit patent as its objective is to remove resolution of a detection optical system constituting a part of the inspection apparatus by increasing its numerical aperture. D6 is also focussed at reducing the unevenness of the brightness of images obtained by the optical system which occurs due to the thin film interference suppression of it. (The same is also cited at page no. 2870 of the written statement to the counter claim)
2. D6 has nothing to do with the gemstone industry and would therefore be irrelevant for a person skilled in the art. [The same is also cited at page no.
2870 of the written statement to the counter claim)
3. D6 is concerned with removal of those bubbles which are stuck to the films of the semiconductor wafers and from the objective lens in the apparatus. However, the suit Page 639 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent is concerned with removal of bubbles within the immersion medium. [The same is also cited at page no. 2871 of the written statement to the counter claim)
4. D6 discloses that immersion medium is present between the objective lens and a wafer. In the Suit Patent on the other hand the immersion medium contains the gemstone which is to be scanned and not any detector. The same is also cited at page no. 2871 of the written statement to the counter claim) D7-US704966 (Page 238 of Counter claim) DIFFERENCES
1. D7 is a different technology and based on different substrates i.e, wafer. In the Suit patent, the immersion medium does not come in contact with the lens or the detector. [The same is also cited at page no. 2883 to 84 of the written statement to the counter claim]
2. D7 discloses such a method of removal of bubbles, which would result in creation of more bubbles, ie, breaking Page 640 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined large bubbles into smaller bubbles. Thus, defeating the purpose of the system for removal of any substance other than inclusions, as explained in the Suit Patent. [The same is also cited at page no. 2884 of the written statement to the counter claim)
3. In D7 the issue of occurrence of bubbles is dealt with inside the immersion medium whereas in the Suit Patent this issue is dealt by withdrawing the bubbles from the immersion medium. [The same is also cited at page no. 2884 of the written statement to the counter claim] D8-US 2006/0174655 (Page 172 of Counter claim) for claims 8, 9, 10, 22 and 23 DIFFERENCES
1. D8 discloses a different technology than the suit patent. D8 is directed to fining a glass melt and obtaining solid glass of high purity, free of bubbles. D8 discloses a process for removing blisters (large air bubbles) and seeds (small air bubbles) from such glass melt by feeding Helium bubbles with Page 641 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined particular diameter at a prescribed flow rate. [The same is also cited at page no. 2866 to 67 of the written statement to the counter claim]
2. D8 also does not relate to the field of invention or even the gemstone industry.
Therefore, D8 is not a prior art that would motivate a person skilled in the art from using it. [The same is also cited at page no. 2867 of the written statement to the counter claim]
3. D8 does not teach detection of inclusions from the gemstone or removing the bubbles from the immersion medium. [The same is also cited at page no. 2867 of the written statement to the counter claim)
4. The usage of helium in D8 is for removal of gas bubbles. However, in the suit patent helium is not just used for removal of gas bubbles but is also used for creating an inert atmosphere as the immersion medium which is contained in the container is highly volatile at the wavelength and temperature used in the suit patent. [The same is also cited at page no. 2866 to 67 of the Page 642 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined written statement to the counter claim]
5. The apparatus used in D8 creates a different environment for the usage of helium vis a vis the suit patent. [The same is also cited at page no. 288 of the written statement to the counter claim) "In relation to the paper by EW Saker: The Suit Patent itself declares that it had recovered a paper by E W Saker titled as "The Optical Properties of Liquid Selenium" which provided some experimental results including the refractive index of solid and molten selenium.
The Suit Patent furthers mentions that the said paper did not contain any details which were relevant to the problem of determining inclusions in diamonds, which is what a person skilled in the art of detecting inclusions from diamonds would be concerned with. Therefore, this paper cannot be said to be a relevant prior art either". 10.21 With regard to the inventive step of the invention disclosed under the suit Page 643 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent, it was submitted that Section 2 (1)(ja) of the Indian Patents Act, 1970 defines inventive step as "inventive step"
means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
10.22 It was submitted that the provisions mentioned hereinabove pertain to "Inventive step" of an invention in terms of the technical advancement as compared to the existing knowledge and economic significance or both, are disclosed in a granted patent.Page 644 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.23 It was submitted that the Defendant Nos. 4 and 5 have challenged the 'Inventive step' of the Suit Patent on the ground that the Suit Patent lacks inventive step by prior art D1 alone, D2 in combination with D3, D2 in combination with D3 and with D4 or D5, D2 in combination with D6, D2 in combination with D7 and D2 in combination with D3 and D4 or D5 and with D8.
10.24 It was submitted that in order to invalidate the invention disclosed in the Suit Patent on the ground of Inventive step in view of prior art D1 alone and D2 in combination with D3-D8, it is first important to identify the test of Inventive step for the purpose of testing the validity of the patent.Page 645 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.25 It was submitted that in the ultimate analysis of the inventive step, the examiner in the patent office or the Court adjudicating the issue would need to identify the elements in the prior art and compare the same with the claims in question from the point of view of a person skilled in the art and if the same demonstrates a technical advancement over the prior art on the priority date of the application, then the patent would be liable to be granted.
10.26 It was submitted that as is apparent from a bare perusal of the testimonies of the expert witnesses such as PW-5, the Suit Patent embodies an invention which could never be arrived at by any person skilled in the art. Further, the Page 646 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined same expert witness has also testified before this Hon'ble Court that no person skilled in the art could arrive at the subject invention disclosed in the Suit Patent and in fact the inventors of the Suit Patent are not persons skilled in the art but a combination of engineers and persons from the diamond trade.
10.27 It was submitted that in case of Avery Dennison (supra) the High Court of Delhi relying on Judgment of the House of Lords in Windsurfing International Inc. V. Tabur Marine Ltd., [1985] RPC 59, observed that the House of Lords in that case laid down a four-step test to determine whether a patent satisfied the requirement of inventive step and lack of obviousness. The said steps are as under:Page 647 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "1. Identifying the inventive concept embodied in the patent;
2. Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
3. Identifying the differences if any between the matter cited and the alleged invention; and
4. Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps that would have been obvious to the skilled man or whether they required any degree of invention."
10.28 It was submitted that the underlying inventive concept in the subject invention in the Suit Patent pertains to the ability to determine the exact three- dimensional location, position and size of the inclusions (which can be extremely small) within a rough/irregular or polished gemstone, in a single scanning operation. Page 648 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined This inventive concept is achieved by using an apparatus which is specially adapted to render specific functions as claimed in method claims 18 to 39 in the Suit Patent. In fact, each component of the apparatus is adapted in a specific manner and is inventive over any similar component existing in any other prior art. Therefore, the components of the apparatus taken individually or as a whole are inventive over any other prior art taken standalone or in combination, as each and every component of the apparatus of the Suit Patent contributes to achieving the subject invention successfully.
10.29 It was further submitted that the common general knowledge at the contemporaneous period in the diamond Page 649 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined industry was to use conventional methods such as visually examining the diamonds by diamond experts which were subject to human errors and would also delay the outcome in case a parcel of diamonds were required to be scanned.
10.30 It was submitted that the differences between prior art D1 and the Suit Patent are manifest upon a reading of the two inventions disclosed therein. Further, the Novel features of the Suit Patent are already addressed in the Brief Note in relation to the Novelty of the invention disclosed in the Suit Patent. The inventive aspect of the Suit Patent in relation to prior art D1 alone, D2 in combination with D3, D2 in combination with D3 and with D4 or D5, D2 in combination Page 650 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with D6, D2 in combination with D7 and D2 in combination with D3 and D4 or D5 and with D8, is being explained herein. 10.31 It was submitted that the apparatus and method claimed in the Suit Patent were not obvious to a person skilled in the art when compared to the prior art D1 or D2 in combination with D3, D2 in combination with D3 and with D4 or D5, D2 in combination with D6, D2 in combination with D7 and D2 in combination with D3 and D4 or D5 and with D8. The same is evident from the fact that the Defendants have not produced any proof to substantiate that a machine such as the one described as the apparatus in the Suit Patent either existed or was industrially applicable. Page 651 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.32 It was submitted that the Court in case of Bristol-Myers Squibb Holdings (supra) has summarised the principle which can be used to determine whether an invention is obvious or not. The said principle is as under:
"A hindsight reconstruction by using the patent in question as a guide through the maze of prior art references in the right way so as to achieve the result of the claim in the suit, is required to be avoided".
10.33 It was submitted that in light of this decision it is apparent that the hindsight reconstruction/reverse engineering of the invention disclosed in the Suit Patent with the inventions prior arts, as sought to be done by the Defendants ought to be avoided. Page 652 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10.34 It was further submitted that in the judgment in case of Avery Dennison (Supra), the Court mentioned that one of the sure tests in analyzing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the court would tilt in favour of holding that the invention is not obvious.
10.35 With regard to submission made by the defendants as to there is no Novelty of the invention disclosed under the suit patent, it was submitted by learned advocate Mr. Grover for the plaintiffs Page 653 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that Section 2(1)(j) of the Patents Act, 1970 provides that an "invention' means a new product or process involving an inventive step and capable of industrial application. The provision pertains to "Novelty of an invention disclosed in a granted patent or an application for grant of a patent. In so far as the present case is concerned, 'Novelty' of the invention in the Suit Patent has to be ascertained in the background of the challenge to the validity of the Suit Patent by way of the counterclaim.
10.36 It was submitted that Defendant Nos. 4 and 5 have challenged 'novelty' of the Suit Patent on the sole ground that the Suit Patent is anticipated by prior art D1, Page 654 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined however, so as to invalidate the invention disclosed in the Suit Patent on the ground of Novelty in view of prior art D1, it is first important to appreciate the manner of construction of claim for the purposes of testing the validity of the patent as under:
i. Claims can be independent or dependent claims. The independent claim is the broadest claim. Different claims will define different embodiments of the same inventive concept.
ii. For the purposes of invalidating a patent, each claim ought to be separately and independently invalidated.
10.37 It was submitted that the proper Page 655 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined way to a construe specification is not to read the claims first and then see what the full description of the invention is, but first to read the description of the invention and then the claim as also held in the Judgment Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries reported at, MANU/SC/0255/1978 which was also relied upon and produced by the Defendants. It was submitted that the endeavour has to be to give an effective meaning to each of the claims, but the specification and the claims must be looked at and construed together.
10.38 It was submitted that the claims are part of a fully integrated written instrument which also contains the specifications and for this reason the Page 656 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claims must be read in view of the specifications.
10.39 It was submitted that the Claim construction seeks to impute ordinary and customary meaning to claim terms, as they would be understood by a person skilled in the art, while claims standalone provide substantial guidance to the meaning of the particular term, a person of ordinary skill in the art is deemed to read the claim term in context of the entire patent, including the specifications as the specifications are the best guide to the meaning of a disputed term.
10.40 It was submitted that while the aspect of Novelty is often tested on the touchstone of anticipation in a prior art, Page 657 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined it is settled that all the features of the anticipated invention must be disclosed in the same prior art, in order to invalidate a granted patent on the ground of novelty.
10.41 Learned advocate Mr. Grover submitted that the following features of the Suit Patent are novel over Prior Art D1:
a. Container A CONTAINER ADAPTED FOR CONTAINING A MATERIAL HAVING A SECOND REFRACTIVE INDEX;
The Container in the Suit Patent is specially adapted to contain the immersion medium, i.e liquid Selenium which is highly viscous, toxic and volatile. For instance, the container is sealed and has an Page 658 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined opening/provision for allowing pressure of inert gas. The Suit Patent also provides optional materials for the container, such as Pyrex. Importantly, it is not a 'container' which is available "off the shelf/tailor made" (Please see answer to question no. 85 By PW-9 at Exhibit 77 Page 487, the inventor of Suit Patent). D1 on the contrary only states that there is a container and fails to provide any details in relation to the type, material, or provisions in the container to enable the invention disclosed therein. Therefore, the type of container disclosed in the Suit Patent for carrying out the invention therein, is new and has not been disclosed in prior art D1.
[The Container has also been referred in Page 659 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Suit Patent in the method claims nos.
11, 21, 22, 36, 37 and 38] b. Compartment- THE APPARATUS CONTAINS A CABIN WHICH INCLUDES THE COMPARTMENT AND THE CONTAINER;
There is a compartment present in the Suit Patent for restricting the entrance of contaminants/foreign substances on the surface of the stone. D1's apparatus does not contain any compartment and therefore, this aspect is not only incomparable but is also absent in D1. Thus, the compartment disclosed in the Suit Patent does not need to be tested for novelty in relation to any other prior art, and definitely not D1 as none of the prior arts disclose such a compartment for carrying out the invention Page 660 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined disclosed in the Suit Patent.
c. Port- A PORT FOR INTRODUCING THE GEMSTONE INTO THE CONTAINER WHILE KEEPING THE CONTAINER SEALED;
The port regulates the passage into the compartment and the container. This also helps to restrict the entrance of contaminants/ foreign substances into the immersion medium. The port enables heating the stone when the stone is passing through it. Claim 12 of the Suit Patent states that the container comprises a port for introducing the gemstone into the container while keeping the container sealed. D1's apparatus does not contain a port and therefore, this aspect is not only incomparable but is also absent in D1.Page 661 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Thus, the port disclosed in the Suit Patent does not need to be tested for novelty in relation to any other prior art, as none of the prior arts disclose such a port for carrying out the invention disclosed in the Suit Patent.
d. Holder- A HOLDER OPERATIVE TO SUPPORT A GEMSTONE IN THE CONTAINER AND IN THE MATERIAL WHEN THE CONTAINER CONTAINS THE MATERIAL;
The holder disclosed in the suit patent is adapted to be used in an immersion medium and is made of a material (preferably of steel which is resistant to corrosion) which is suitable for the immersion medium.
The Suit Patent discloses that the holder includes four wings which surround the Page 662 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined stone, while ensuring that no part of the stone goes undetected during scanning. The Suit Patent also discloses that the holder contains 'notch' for the purposes of correlation of the position of stone. D1's apparatus does not contain a holder and therefore, this aspect is not only incomparable but is also absent in D1.
Thus, the holder disclosed in the Suit Patent does not need to be tested for novelty in relation to any other prior art, as none of the prior arts disclose a holder for carrying out the invention disclosed in the Suit Patent.
[The holder has also been referred in the Suit Patent in the method claim no.18] e. Illuminator- AN ILLUMINATOR POSITIONED Page 663 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined AND ADAPTED TO ILLUMINATE THE GEMSTONE WHEN THE GEMSTONE IS IN THE IMMERSION MATERIAL The Suit Patent discloses an illuminator which is positioned and adapted to illuminate the gemstone when it is immersed in the immersion material. The Suit Patent also states that the illuminator can comprise a telecentric lens and/or narrow band pass filter, which is filtering the radiated light that transmits through the stone and the medium. D1 on the other hand discloses using a laser light with a very small cross-section but there is no mention in D1 as to what is the lens used by this light. D1 also fails to mention how the base of the stone (which is hidden beneath the stone) is illuminated by the laser light. Thus, the Suit Patent is novel qua Page 664 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined D1 in so far as the light source/ illuminator is concerned as D1 uses a different light source altogether, and there is no other prior art which uses an illuminator such as the one disclosed in the Suit Patent for carrying out the invention disclosed therein.
[The illuminator has also been referred in the Suit Patent in the method claim no. 18] f. Detector- A DETECTOR THAT DETECTS ILLUMINATION FROM THE ILLUMINATED GEMSTONE, AND PRODUCES SIGNALS IN RESPONSE TO THE ILLUMINATION The Suit Patent discloses a detector which can be a high-resolution commercial camera or a digital camera, for e.g., a camera Page 665 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with 1280 x 1024 pixels or more. D1 does not disclose any detector, let alone a camera. In D1 the signals from the light source are received by the photosensitive device which is placed below the base of the container in D1. So, there is no detector in D1 or any other prior art, which is positioned in the same manner as the detector/camera in the Suit Patent or which is adapted in the same manner as the detector/high resolution camera in Suit Patent. Thus, the detector used in the invention disclosed in the Suit Patent is novel in comparison with D1.
[The detector has also been referred in the Suit Patent in the method claim no. 18] g. Immersion medium- A MATERIAL HAVING A Page 666 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined SECOND REFRACTIVE INDEX The immersion medium used in the Suit Patent belongs to the Chalcogenide group of elements. The Suit Patent further discloses that preferably the immersion material can be elemental Selenium (Selenium in its natural form, which is solid pellet form).
The Suit Patent also provides that the said immersion material is also adapted to be used in the invention disclosed in the Suit Patent and for this purpose the immersion material is heated so it become liquid. It is also stated in the Suit Patent that the immersion material can be sensitive to foreign substances present in the air, as when Selenium is exposed to air it combines with air to produce Selenium Dioxide which can optically affect the properties of Page 667 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Selenium. D1 does not provide any detail in relation to the immersion medium.
Therefore, any comparison of the immersion medium disclosed in the Suit Patent with the immersion medium disclosed in D1 is misplaced. Thus, the immersion material disclosed in the suit patent is a novel element even otherwise.
[The immersion medium has also been referred in the Suit Patent in the method claims nos. 18, 19, 20, 21, 22, 26, 27, 28, 29, 31, 32, 35, 36, 37 and 39] h. Controller- A CONTROLLER THAT RECEIVES SIGNALS AND IS OPERATIVE TO DETERMINE A LOCATION OF AN INCLUSION IN THE GEMSTONE BASED ON THE SIGNALS Page 668 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined The controller disclosed in the Suit Patent embodies a method to determine the value of a gemstone with respect to its potential to produce polished gems responsive to the position and size of a flaw and internal stresses of the gemstone. D1 does not provide any details in relation to any controller that processes the signals received from the light source therein.
Thus, in so far as the controller is concerned, it is a novel element of the apparatus in comparison with prior art D1.
[The Controller has also been referred in the Suit Patent in the method claim no. 18] i. A system- A SYSTEM OPERATIVE TO REDUCE THE PRESENCE WITHIN THE IMMERSION MATERIAL OF ANY SUBSTANCE WHICH WOULD HAVE A THIRD Page 669 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined REFRACTIVE INDEX. A SYSTEM WHICH INCLUDES A DEVICE FOR WITHDRAWAL OF GAS BUBBLES FROM THE IMMERSION MATERIAL.
The system disclosed in the Suit Patent is for the purposes of reducing the presence of any other substances in the immersion material, as such a substance would have a third refractive index and will negatively impact the clarity and accuracy of the scan of the gemstone.
This system includes a cleaning device for the purposes of cleaning the external surface of the gemstone before it is inserted in the immersion medium. The cleaning device (which can comprise of a sonification device) and the apparatus are adapted to mount the holder which holds the Page 670 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined gemstone. This cleaning device also includes a cleaning liquid.
The method of cleaning the gemstone comprises, removing the foreign compounds from the surface of the stone, washing the stone with a washing medium (generally purified water) and removing the washing medium from the stone.
Removal of foreign substances from the surface of the stone is done by applying a surface active agent to the gemstone. The surface active agent generally comprises an anionic surfactant which may contain a chelating agent. An additive can also be added to this surface active agent such that the moiety (atomic structure) of the molecule can replicate the hydrophobicity Page 671 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (physical characteristic of repelling water) of a diamond. The removal can also be aided by sonification/ultrasonic treatment with the surface active agent.
Removing the washing medium comprises applying a stream of air or applying a stream of an inert gas on the surface of the gemstone. The removal of washing medium can also be followed by drying the gemstone at elevated temperatures. In addition to the above measures, the system also includes measures for removing bubbles from the immersion material. While controlling the temperature of the immersion medium also the bubbles are removed from the immersion material. During this process, the immersion material is Page 672 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined heated under the pressure of Helium, followed by applying vacuum in the container. The temperature and vacuum is increased, if required to further remove bubbles. In order to prevent contamination of the immersion medium, the container can be vacuumed further or filled with inert gas or by maintaining inert atmosphere in the container.
10.42 It was submitted that D1 on the other hand, contains no system to remove contaminants from the surface of the gemstone. The provisions for displacing contamination from the immersion medium, ie., by applying ultrasonic transmitter are for the purposes of displacing dust from the immersion medium only. This provision is extremely elementary and basic and does Page 673 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not address the contaminants that attach on the surface of the diamond. In D1, there is no mention of any of the steps that are taken in the Suit Patent in the system for the reduction of presence within the immersion material of any substance which would have a third refractive index. Therefore, the system provided in the Suit Patent for reduction of presence within the immersion material of any substance which would have a third refractive index is novel over D1.
10.43 It was submitted that Section 64(1)(e) of the Patents Act, 1970 states that a granted patent may be revoked if the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or Page 674 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13. This provision refers to the ground of 'novelty' for invalidation of a granted patent. However, the same provision also mentions that the aspect of novelty ought to be seen with regard to the prior arts that were publicly known or publicly used in India. Further, 64(1)(h) also states that a granted patent may be revoked if the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete Page 675 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim, protection. This provision further clarifies that the prior art has to be within the average knowledge of a person with average skill in India. 10.44 The Defendants' have also argued that the invention claimed in the Suit Patent is not new in light of D1 as it was a known prior art. However, it must be borne in mind that the ground of prior public knowledge or even, for that matter, Page 676 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prior public use has to be taken keeping in mind the position in India. The Defendants have failed to show that the prior art D1 has been used in India or for that matter anywhere else in the world. In the absence of any conclusive evidence to show that the prior art was ever used in India, the Defendants have clearly failed to discharge their onus of proving the allegation of lack of novelty of the invention in the Suit Patent vis-a-vis prior art D1. Therefore, on this ground itself the counter claim filed by the Defendants ought to be dismissed.
10.45 It was therefore, submitted that the suit patent is not required to be revoked as there is inventive step in novelty therein. None of the prior arts Page 677 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined have any resemblance to even the suit patent as explained in detail on behalf of the plaintiffs.
XI - Analysis of evidence XI-A Preliminary Objections 11.1 Before adverting to the issues framed, it would be necessary to decide the preliminary objections raised by both the sides which goes to the root of the case before deciding on merits as to whether the defendants have committed any infringement of suit patent or not or whether the suit patent is to be revoked or not. XI-A(i) Preliminary objection for applying section 58 of the Evidence Act. 11.2 The plaintiffs have raised objection Page 678 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by referring to the written statement filed by the defendants with regard to applicability of section 58 of the Evidence Act,1872 which pertains to the facts admitted and hence need not be proved. Section 58 of the Evidence Act,1872 reads as under:
"58. Facts admitted need not be proved.
No fact need to be proved in any proceeding which the parties thereto or their agents agree to admit at the hearing, or which, before the hearing, they agree to admit by any writing under their hands, or which by any rule of pleading in force at the time they are deemed to have admitted by their pleadings:
Provided that the Court may, in its discretion, require the facts admitted to be proved otherwise than by such admissions."
11.3 It was argued on behalf of the plaintiffs that the defendants have admitted that machines used by the Page 679 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants for scanning rough diamonds are similar to that of the plaintiffs except the device i.e. vacuum pump used by the plaintiffs to reduce gas bubbles in immersion material for the rough diamonds. According to the plaintiffs, the defendants have also admitted in the written statement that they are also using selenium as immersion material for scanning of rough diamonds which the plaintiffs have tried to prove by evidence of PW-7 and the reports from Jawaharlal Nehru University by further examination and cross examination of Dr. Ruchi Pal of the said university during the course of trial. The plaintiffs relied upon the various decisions in support of such submissions and are not again reiterated for sake of brevity.
11.4 Whereas on the other hand, the Page 680 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants right from filing of the written statement has maintained that suit patent pertains to invention by the plaintiffs only with regard to device i.e. vacuum pump used by the plaintiffs for removal of gas bubbles from the immersion material for scanning of rough diamonds so as to reduce the inclusion therein. It is also submitted that the plaintiffs have not been able to point out from the averments in the written statement or any evidence led on behalf of the defendants of using the same method for scanning of the rough diamonds but on the contrary the defendants have been using software developed by it for the purpose of scanning of rough diamonds. It is also the stand of the defendants that the defendants have never used vacuum pump in machine for scanning the rough diamonds. Page 681 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.5 On considering the oral and documentary evidence led by both the sides and on perusal of the written statement, it cannot be said that the defendants have admitted about the use of the same apparatus which is invented by the plaintiffs. Therefore, merely by applying section 58 of the Evidence Act,1872, the plaintiffs cannot be absolved to prove any infringement of the suit patent by the defendants.
11.6 Reliance placed on the decision in case of Nagindas Ramdas v. Dalpatram Ichharam and others [AIR 1974 SC 471] would not be applicable in the facts of the case as there is no expressed or implied admission made by the defendants in the written statement and therefore, the same would not constitute the waiver of proof. Page 682 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.7 Similarly, reliance is placed on decision in case of Gautam Sarup v. Leela Jetly and others [(2008) 7 SCC 85]. It is true that admissions made by the defendants would be admissible and need not be proved by the plaintiffs. However, the Hon'ble Apex Court has held that it is one thing to say that without resiling from an admission, it would be permissible to explain under what circumstances the same had been made or it was made under a mistaken belief or to clarify one's stand inter-alia in regard to the extent or effect of such admission, but it is another thing to say that a person can be permitted to totally resile therefrom. After relying upon the decision in case of Hiralal [1998 1 SCC 278] and in case of Sangramsinh P. Gaekwad & Ors. V/s. Shantadevi P. Page 683 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Gaekwad(dead) through LRs. & Ors., [2005 11 SCC 314], the Hon'ble Apex Court held that a categorical admission cannot be resiled from but, in a given case, it may be explained or clarified and offering explanation in regard to an admission or explaining away the same, however, would depend upon the nature and character thereof. Therefore, in the facts of the case when the defendants have submitted about the use of apparatus without device i.e. vacuum pump along with software developed by the defendants for the purpose of scanning of rough diamonds, it can be at the best said that such admission is explained or clarified by the defendants as there was no categorical admission that the defendants are using the same technology and apparatus invented by the Page 684 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs.
11.8 Similarly, reliance placed on the decision of Calcutta High Court in case of Kana Dey v. Dipak Dasgupta reported in [(2002) ILR 1 Cal 372], is also of no help to the plaintiffs as the said case was decided on the fact of admission made by the predecessor of the defendants which was treated as an admitted fact and the defendants took a plea that part of the admission was not binding on the ground that the pleadings cannot be dissected and the same is required to be taken into entirety. In the said case, Hon'ble Calcutta High Court held that defendants simultaneously averred two sets of facts, namely, the induction of the sub-tenant subject to the knowledge and approval of Page 685 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the plaintiffs, and therefore, the plaintiffs cannot be permitted to utilise the first part of admission to his advantage and on facts, the Court came to the conclusion that in absence of any evidence that the defendants inducted sub- tenant with the approval of the plaintiffs, decided in favour of the plaintiffs on the basis of admission of the defendants. However, in the facts of the case, there is no such admission by the defendants with regard to usage of the same apparatus with same technology or methodology invented by the plaintiffs for which the suit patent is granted.
11.9 Therefore, preliminary objection raised on behalf of the plaintiffs for applying section 58 of the Evidence Page 686 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Act,1872,is rejected.
XI-A(ii) Preliminary objection for not complying with section 65B of the Evidence Act, 1872 by the plaintiffs 11.10 With regard to the objections raised by the defendants for non compliance of section 65B of the Evidence Act with regard to the print out from electronic record produced by the plaintiffs is concerned, section 65B of the Evidence Act is inserted by the Act of 2000 with effect from 17.10.2000 with regard to admissibility of electronic record and reads as under:
"[65B. Admissibility of
electronic records. (1)
Notwithstanding anything
contained in this Act, any information contained in an electronic record which is Page 687 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer (hereinafter referred to as the computer output) shall be satisfied in relation to the information and computer in question and shall be admissible in any proceedings, without further proof or production of the original, as evidence of any contents of the original or of any fact stated therein of which direct evidence would be admissible. (2) The conditions referred to in sub-section (1) in respect of a computer output shall be the following, namely:
(a) the computer output containing the information was produced by the computer during the period over which the computer was used regularly to store or process information for the purposes of any activities regularly carried on over that period by the person having lawful control over the use of the computer;
(b) during the said period, information of the kind contained in the ( electronic record or of the kind from which the information so Page 688 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined contained is derived was regularly fed into the computer in the ordinary course of the said activities;
c) throughout the material part of the said period, the computer was operating properly or, if not, then in respect of any period in which it was not operating properly or was out of operation during that part of the period, was not such as to affect the electronic record or the accuracy of its contents; and
(d) the information contained in the electronic record reproduces or is derived from such information fed into the computer in the ordinary course of the said activities.
(3) Where over any period, the function of storing or processing information for the purposes of any activities regularly carried on over that period as mentioned in clause
(a) of sub-section (2) was regularly performed by computers,whether-
(a) by a combination of computers operating over that period; or Page 689 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(b) by different computers operating in succession over that period; or
(c) by different combinations of computers operating in succession over that period; or
(d) in any other manner involving the successive operation over that period, in whatever order, of one or more computers and one or more combinations of computers, all the computers used for that purpose during that period shall be treated for the purposes of this section as constituting a single computer; and references in this section to a computer shall be construed accordingly.
(4) In any proceedings where it is desired to give a statement in evidence by virtue of this section, a certificate doing any of the following things, that is to say,
(a) identifying the electronic record containing the statement and describing the manner in which it was produced;
(b) giving such particulars of any device involved in the Page 690 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined production of that electronic record as may be appropriate for the purpose of showing that the electronic record was produced by a computer;
(c) dealing with any of the matters to which the conditions mentioned in sub-section (2) relate, and purporting to be signed by a person occupying a responsible official position in relation to the operation of the relevant device or the management of the relevant activities (whichever is appropriate) shall be evidence of any matter stated in the certificate; and for the purposes of this sub-section it shall be sufficient for a matter to be stated to the best of the knowledge and belief of the person stating it.
(5) For the purposes of this section,
(a) information shall be taken to be supplied to a computer if it is supplied thereto in any appropriate form and whether it is so supplied directly or (with or without human Page 691 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined intervention) by means of any appropriate equipment;
(b) whether in the course of activities carried information is supplied with a view on by any official being stored to its or processed for the purposes of those activities by a computer operated otherwise than in the course of those activities, that information, if duly supplied to that computer, shall be taken to be supplied to it in the course of those activities;
(c) a computer output shall be taken to have been produced by a computer whether it was produced by it directly or (with or without human intervention) by means of any appropriate equipment.
Explanation. For the purposes of this section any reference to information being derived from other information shall be a reference to its being derived therefrom by calculation, comparison or any other process.]"
11.11 Term "electronic record" is Page 692 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defined under section 2(t) of the Information and Technology Act, 2000 wherein it is defined that "electronic record" means data/ record or data generated, image or sound stored, received or sent in an electronic form or micro film or computer generated micro fiche. Section 65B(1) stipulates what constitutes electronic record including the record produced by the computer which is printed on a paper or record produced by the computer which is stored, recorded or copied in optical or magnetic media. Therefore, electronic record means the computer output would be equal to computer output to be deemed as document under section (3) of the Evidence Act by virtue of section 65B(1). As per Page 693 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined reliance placed on the decision in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1] by the plaintiffs, the computer printouts derived from the computer have to satisfy the conditions mentioned in sub-section(2)(a) to (d) of section 65B of the Evidence Act. The defendants have mainly raised objection with regard to the contents of the certificate placed on record by the plaintiffs as provided under section 65B(4) of the Evidence Act. During the course of hearing, the plaintiffs have placed on record the amended certificates on objections being raised by the defendants. Therefore, the question arise as to whether such amended certificates placed on record by the plaintiffs under section 65B(4) Page 694 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined with regard to each of the printouts obtained from the computer is required to be taken on record in compliance of section 65B(4) of the Evidence Act or not. Considering the submissions made by both the sides and the ratio of Hon'ble Apex Court in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1], it is not in dispute that computer printouts placed on record by the plaintiffs are obtained from the computer regularly used to store or process the information for the purpose of activities regularly carried on by the plaintiffs. The plaintiffs have demonstrated with regard to the compliance of the provisions of section 65B vis-a-vis the certificate placed on record. However, the defendants have Page 695 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined raised serious objections with regard to such certificate placed on record by the plaintiffs during the course of hearing. The Hon'ble Supreme Court in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1] answered the reference by stating that the decision of Anvar P.V. v. P.K. Basheer [AIR 2015 SC 180] as clarified by the Court to the effect that certificate under section 65B(4) is unnecessary if the original document itself is produced which can be done by the owner of a laptop computer, computer tablet or even a mobile phone, by stepping into the witness box and proving that the concerned device on which the original information is first stored, is owned and/or operated by him. It was further held that where the Page 696 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined computer happens to be a part of a computer system or computer network, it becomes impossible to physically bring such system or network to the Court, then the only means of providing information contained in such electronic record can be in accordance with Section 65(1), together with the requisite certificate under section 65(4) as primary evidence. Therefore, certificate under section 65B(4) can be placed on record at any stage of the trial, subject to the directions issued by the Supreme Court in para. 62 of the aforesaid decision to be followed which deals with electronic evidence to ensure their preservation and production of certificate at appropriate stage. The Hon'ble Supreme Page 697 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court in case of Anvar P.V. v. P.K. Basheer [AIR 2015 SC 180] had laid down the guidelines for proving the electronic record as a primary evidence which was further explained by the Apex Court in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1] with a modification that such electronic record is to be used as primary evidence without the words under section 62 of the Evidence Act.
Decision of the Calcutta High Court in case of Sanjib Sarkar v. Rajasree Roy [MANU/WB/0764/2021], relied upon by the plaintiffs permitted tendering of certificates under section 65B(4) of the Evidence Act by which it is stated that electronic record relied upon was sourced from Facebook account.Page 698 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.12 In facts of the case, the objections raised by the defendants for placing on record redacted printouts of invoices at Exh.PW-1/1 to PW-1/11 by PW-1 obtained from computer were objected and thereafter plaintiffs placed on record unredacted copies of such invoices at purshis Exh. 205 so as to compare the same with the invoices placed on record by PW-1. Application Exh. 211 for non compliance of section 65B of the Evidence Act filed by the defendants to discard such evidence placed on record in respect of which printouts and scanned image, DVDs etc. by the plaintiffs, on the ground that no certificate under section 65B can be issued at the stage of final hearing of the suit during the final arguments so Page 699 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as to attempt to correct the non compliance of the provisions under the Evidence Act, as such certificates ought to have placed at the time when the evidence was led before the Court, such contention raised on behalf of the defendants by explaining in detail as to how the evidence placed on record is required to be discarded by not accepting the certificates and affidavits filed by the plaintiffs during the course of hearing in compliance of the provisions of section 65B(4) of the Act.
11.13 However, an attempt was also made on behalf of the defendants to analyse the various judgments cited at bar by the plaintiffs to distinguish the same on the facts of each case, Page 700 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which cannot be accepted as provisions of section 65B(4) refers to existence of such electronic evidence in printed form to be placed on record and veracity of the contents thereof is required to be examined on the basis of oral and documentary evidence to be led by the plaintiffs. Therefore, production of such evidence to be treated as primary evidence only on the ground that certificate/ affidavit is placed on record by the plaintiffs during the course of hearing would in effect, preclude the plaintiffs from placing the evidence on record, as contents of such evidence and veracity thereof is a matter of proof and merely because printouts are obtained from the computer, on technical ground of not Page 701 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined filing affidavits/certificates as required under section 65B(4) at the relevant time which later on was rectified by the plaintiffs by placing affidavits/ certificates as per requirement of section 65B(4) of the Act, cannot be discarded in view of the observations made by Hon'ble Apex Court in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1], more particularly, in paragraph no.22 of the said judgment which reads as under:
"22. Section 65B(2) then refers to the conditions that must be satisfied in respect of a computer output, and states that the test for being included in conditions 658(2(a)) to CS(2(d)) is that the computer be regularly used to stare or process information for purposes of activities regularly carried on in the period in question. The conditions mentioned in Sub- sections 2(a) to 2(d) must be Page 702 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined satisfied cumulatively."
11.14 On analysis of the above judgments and provisions of section 65B of the Evidence Act, it is clear that the applicability of sub-section(4) with regard to giving a certificate to place on record the electronic record which is printed on paper to identify the electronic record containing the statement and describing the manner in which it was produced, details of device involved etc. is a mandatory provision. However, as held by the Apex Court in case of Arjun Panditrao Khotkar [(2020) 7 SCC 1], which is followed by various High Courts holding that filing of a certificate under section 65B(4) is a procedural requirement for admissibility of the Page 703 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined electronic record. As the plaintiffs have filed certificates/affidavits under section 65B(4) of the Evidence Act during the course of hearing, the same are required to be accepted and the printouts of the electronic record produced by the witnesses of the plaintiffs are accordingly admitted as primary evidence however subject to proof of the contents thereof. Only because of the fact that the plaintiffs filed certificates as required under section 65B(4) belatedly cannot obliterate existence of such evidence in electronic form which is produced on printed/optical image/media form. However, the contents of the same is subject to proof by the plaintiffs which shall be considered in detail Page 704 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined when such evidence is evaluated as to whether the contents thereof is required to be admitted or not. XI-A(iii) Preliminary Objection to apply Order XI as per Commercial Courts Act, 2015 11.15 Objection was also raised by the defendants with regard to the applicability of Order XI as substituted by the Commercial Courts Act, 2015 which pertains to disclosure, discovery and inspection of the documents. As per section 16 of the Commercial Courts Act, 2015, provisions of the Code of Civil Procedure, 1908 in application to the commercial disputes have been amended. Section 16 of the Commercial Courts Act, 2015 reads as under:
Page 705 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "16. Amendments to the Code of Civil Procedure, 1908 in its application to commercial disputes.-(1) The provisions of the Code of Civil Procedure, 1908 (5 of 1908) shall, in their application to any suit in respect of a commercial dispute of a Specified Value, stand amended in the manner as specified in the Schedule.
(2) The Commercial Division and Commercial Court shall follow the provisions of the Code of Civil Procedure, 1908 (5 of 1908), as amended by this Act, in the trial of a suit in respect of a commercial dispute of a Specified Value.
(3) Where any provision of any rule of the jurisdictional High Court or any amendment to the Code of Civil Procedure, 1908 (5 of 1908), by the State Government is in conflict with the provisions of the Code of Civil Procedure, 1908 (5 of 1908), as amended by this Act, the provisions of the Code of Civil Procedure as amended by this Act shall prevail."
11.16 Order XI as substituted in Page 706 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined schedule to the Commercial Courts Act,2015 reads as under:
"DISCLOSURE, DISCOVERY AND INSPECTION OF DOCUMENTS IN SUITS BEFORE THE COMMERCIAL DIVISION OF A HIGH COURT OR A COMMERCIAL COURT
1. Disclosure and discovery of documents (1) Plaintiff shall file a list of all documents and photocopies of all documents, in its power, possession, control or custody, pertaining to the suit, along with the plaint, including:
(a) documents referred to and relied on by the plaintiff in the plaint;
(b) documents relating to any matter in question in the proceedings, in the power, possession, control or custody of the plaintiff, as on the date of filing the plaint, irrespective of whether the same is in support of or adverse to the plaintiff's case;
(c) nothing in this Rule shall apply to documents produced by plaintiff's and relevant only-Page 707 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(i) for the cross-examination of the defendant's witnesses, or
(ii) in answer to any case set- up by the defendant subsequent to the filing of the plaint, or
(iii) handed over to a witness merely to refresh his memory. (2) The list of documents filed with the plaint shall specify whether the documents in the power, possession, control or custody of the plaintiff are originals, office copies or photocopies and the list shall also set out in brief, details of parties to each document, mode of execution, issuance or receipt and line of custody of each document.
(3) The plaint shall contain a declaration on oath from the plaintiff that all documents in the power, possession, control or custody of the plaintiff, pertaining to the facts and circumstances of the proceedings initiated by him have been disclosed and copies thereof annexed with the plaint, and that the plaintiff does not have any other documents in its power, possession, control or custody. Page 708 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Explanation. A declaration on oath under this sub-rule shall be contained in the Statement of Truth as set out in the Appendix.
(4) In case of urgent filings, the plaintiff may seek leave to rely on additional documents, as part of the above declaration on oath and subject to grant of such leave by Court, the plaintiff shall file such additional documents in Court, within thirty days of filing the suit, along with a declaration on oath that the plaintiff has produced all documents in its power, possession, control or custody, pertaining to the facts and circumstances of the proceedings initiated by the plaintiff and that the plaintiff does not have any other documents, in its power, possession, control or custody. (5) The plaintiff shall not be allowed to rely on documents, which were in the plaintiff's power, possession, control or custody and not disclosed along with plaint or within the extended period set out above, save and except by leave of Page 709 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court and such leave shall be granted only upon the plaintiff establishing reasonable cause for non-disclosure along with the plaint.
(6) The plaint shall set out details of documents, which the plaintiff believes to be in the power, possession, control or custody of the defendant and which the plaintiff wishes to rely upon and seek leave for production thereof by the said defendant.
(7) Defendant shall file a list of all documents and photocopies of all documents, in its power, possession, control or custody, pertaining to the suit, along with the written statement or with its counter-claim if any, including-
(a) the documents referred to and relied on by the defendant in the written statement;
(b) the documents relating to any matter in question in the proceeding in the power, possession, control or custody of the defendant, irrespective of whether the same is in support of or adverse to the defendant's defense;
Page 710 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(c) nothing in this Rule shall apply to documents produced by the defendants and relevant only-
(i) for the cross-examination of the plaintiff's witnesses,
(ii) in answer to any case set- up by the plaintiff subsequent to the filing of the plaint, or
(iii) handed over to a witness merely to refresh his memory. (8) The list of documents filed with the written statement or counter-claim shall specify whether the documents, in the power, possession, control or custody of the defendant, are originals, office copies or photocopies and the list shall also set out in brief, details of parties to each document being produced by the defendant, mode of execution, issuance or receipt and line of custody of each document;
(9) The written statement or counter-claim shall contain a declaration on oath made by the deponent that all documents in the power, possession, control or custody of the defendant, save and except for those set Page 711 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined out in sub-rule 7(c)(iii) pertaining to the facts and circumstances of the proceedings initiated by the plaintiff or in the counter- claim, have been disclosed and copies thereof annexed with the written statement or counter- claim and that the defendant does not have in its power, possession, control or custody, any other documents;
(10) Save and except for sub- rule 7(c)(iii), defendant shall not be allowed to rely on documents, which were in the defendant's power, possession, control or custody and not disclosed along with the written statement or counter claim, save and except by leave of Court and such leave shall be granted only upon the defendant establishing reasonable cause for non-
disclosure along with the written statement or counter- claim;
(11) The written statement or counter-claim shall set out details of documents in the power, possession, control or custody of the plaintiff, which the defendant wishes to rely upon and which have not been disclosed with the plaint, and Page 712 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined call upon the plaintiff to produce the same;
12) Duty to disclose documents, which have come to the notice of a party, shall continue till disposal of the suit.
2. Discovery by Interrogatories (1) In any suit the plaintiff or defendant by leave of the court may deliver interrogatories in writing for the examination of the opposite parties or any one or more of such parties, and such interrogatories when delivered shall have a note at the foot thereof stating which of such interrogatories each of such persons is required to answer:
Provided that no party shall deliver more than one set of interrogatories to the same party without an order for that purpose:
Provided further that interrogatories which do not relate to any matters in question in the suit shall be deemed irrelevant, notwithstanding that they might be admissible on the oral cross-examination of a witness.Page 713 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (2) On an application for leave to deliver interrogatories, the particular interrogatories proposed to be delivered shall be submitted to the court, and that court shall decide within seven days from the day of filing of the said application, in deciding upon such application, the court shall take into account any offer, which may be made by the party sought to be interrogated to deliver particulars, or to make admissions, or to produce documents relating to the matters in question, or any of them, and leave shall be given as to such only of the interrogatories submitted as the court shall consider necessary either for disposing fairly of the suit or for saving costs.
(3) In adjusting the costs of the suit inquiry shall at the instance of any party be made into the propriety of exhibiting such interrogatories, and if it is the opinion of the taxing officer or of the court, either with or without an application for inquiry, that such interrogatories have been exhibited unreasonably, vexatiously, or at improper Page 714 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined length, the costs occasioned by the said interrogatories and the answers thereto shall be paid in any event by the party in fault.
(4) Interrogatories shall be in the form provided in Form No. 2 in Appendix C to the Code of Civil Procedure, 1908 (5 of 1908), with such variations as circumstances may require.
(5) Where any party to a suit is a corporation or a body of persons, whether incorporated or not, empowered by law to sue or be sued, whether in its own name or in the name of any officer of other person, any opposite party may apply for an order allowing him to deliver interrogatories to any member or officer of such corporation or body, and an order may be made accordingly.
(6) Any objection to answering any interrogatory on the ground that it is scandalous or irrelevant or not exhibited bona fide for the purpose of the suit, or that the matters inquired into are not sufficiently material at that stage, or on the ground of privilege or any other ground Page 715 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined may be taken in the affidavit in answer.
(7) Any interrogatories may be set aside on the ground that they have been exhibited unreasonably or vexatiously, or struck out on the ground that they are prolix, oppressive, unnecessary or scandalous and any application for this purpose may be made within seven days after service of the interrogatories.
(8) Interrogatories shall be answered by affidavit to be filed within ten days, or within such other time as the court may allow.
(9) An affidavit in answer to interrogatories shall be in the form provided in Form No. 3 in Appendix C to the Code of Civil Procedure, 1908 (5 of 1908), with such variations as circumstances may require.
(10) No exceptions shall be taken to any affidavit in answer, but the sufficiency or otherwise of any such affidavit objected to as insufficient shall be determined by the court.Page 716 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (11) Where any person interrogated omits to answer, or answers insufficiently, the party interrogating may apply to the court for an order requiring him to answer, or to answer further, as the case may be, and an order may be made requiring him to answer, or to answer further, either affidavit or by viva voce examination, as the court may direct.
3. Inspection. (1) All parties shall complete inspection of all documents disclosed within thirty days of the date of filing of the written statement or written statement to the counter-claim, whichever is later. The Court may extend this time limit upon application at its discretion, but not beyond thirty days in any event.
(2) Any party to the proceedings may seek directions from the Court, at any stage of the proceedings, for inspection or production of documents by the other party, of which inspection has been refused by such party or documents have not been produced despite issuance of a notice to produce..
Page 717 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (3) Order in such application shall be disposed of within thirty days of filing such application, including filing replies and rejoinders (if permitted by Court) and hearing.
(4) If the above application is allowed, inspection and copies thereof shall be furnished to the party seeking it, within five days of such order.
(5) No party shall be permitted to rely on a document, which it had failed to disclose or of which inspection has not been given, save and except with leave of Court (6) The Court may impose exemplary costs against a defaulting party, who willfully or negligently failed to disclose all documents pertaining to a suit or essential for a decision therein and which are in their power, possession, control or custody or where a Court holds that inspection or copies of any documents had been wrongfully or unreasonably withheld or refused.
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4. Admission and denial of documents.-(1) Each party shall submit a statement of admissions or denials of all documents disclosed and of which inspection has been completed, within fifteen days of the completion of inspection or any later date as fixed by the Court.
(2) The statement of admissions and denials shall set out explicitly, whether such party was admitting or denying:
(a) Correctness of contents of a document;
(b) Existence of a document;
(c) Execution of a document:
(d) Issuance or receipt of a document;
(e) Custody of a document.
Explanation-A statement of admission or denial of the existence of a document made in accordance with sub-rule (2)(b) shall include the admission or denial of the contents of a document.
(3) Each party shall set out reasons for denying a document Page 719 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined under any of the above grounds and bare and unsupported denials shall not be deemed to be denials of a document and proof of such documents may then be dispensed with at the discretion of the Court.
(4) Any party may however submit bare denials for third party documents of which the party denying does not have any personal knowledge of, and to which the party denying is not a party to in any manner whatsoever.
(5) An Affidavit in support of the statement of admissions and denials shall be filed confirming the correctness of the contents of the statement. (6) In the event that the Court holds that any party has unduly refused to admit a document under any of the above criteria, costs (including exemplary costs) for deciding on admissibility of a document may be imposed by the Court on such party.
(7) The Court may pass orders with respect to admitted documents including for waiver of further proof thereon or rejection of any documents. Page 720 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
5. Production of documents. (1) Any party to a proceeding may seek or the Court may order, at any time during the pendency of any suit, production by any party or person, of such documents in the possession or power of such party or person, relating to any matter in question in such suit.
(2) Notice to produce such document shall be issued in the Form provided in Form No. 7 in Appendix C to the Code of Civil Procedure, 1908 (5 of 1908). (3) Any party or person to whom such notice to produce is issued shall be given not less than seven days and not more than fifteen days to produce such document or to answer to their inability to produce such document.
(4) The Court may draw an adverse inference against a party refusing to produce such document after issuance of a notice to produce and where sufficient reasons for such non-production are not given and order costs.
6. Electronic Records. (1) In case of disclosures and Page 721 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined inspection of Electronic Records (as defined in the Information Technology Act, 2000) (21 of 2000), furnishing of printouts shall be sufficient compliance of the above provisions.
(2) At the discretion of the parties or where required (when parties wish to rely on audio or video content), copies of electronic records may be furnished in electronic form either in addition to or in lieu of printouts.
(3) Where Electronic Records form part of documents disclosed, the declaration on oath to be filed by a party shall specify-
(a) the parties to such Electronic Record;
(b) the manner in which such electronic record was produced and by whom;
(c) the dates and time of preparation or storage or issuance or receipt of each such electronic record;
d) the source of such electronic record and date and time when the electronic record was printed;
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(e) in case of e-mail ids, details of ownership, custody and access to such e-mail ids;
(f) in case of documents stored on a computer or computer resource (including on external servers or cloud), details of ownership, custody and access to such data on the computer or computer resource;
(g) deponent's knowledge of contents and correctness of contents;
(h) whether the computer or computer resource used for preparing or receiving or storing such document or data was functioning properly or in case of malfunction that such malfunction did not affect the contents of the document stored;
(i) that the printout or copy furnished was taken from the original computer or computer resource.
(4) The parties relying on printouts or copy in electronic form, of any electronic records, shall not be required to give inspection of electronic records, provided a Page 723 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined declaration is made by such party that each such copy, which has been produced, has been made from the original electronic record.
(5) The Court may give directions for admissibility of Electronic Records at any stage of the proceedings.
(6) Any party may seek directions from the Court and the Court may of its motion issue directions for submission of further proof of any electronic record including metadata or logs before admission of such electronic record.
7. Certain provisions of the Code of Civil Procedure, 1908 not to apply. For avoidance of doubt, it is hereby clarified that Order XIII, rule 1, Order VII, rule 14 and Order VIII, rule 1A the Code of Civil Procedure, 1908 (5 of 1908) shall not apply to suits or applications before the Commercial Divisions of High Court or Commercial Courts.". 11.17 Section 15(3) of the Commercial Page 724 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Courts Act provides that the provisions shall apply to those procedures that were not complete at the time of transfer of suit to the Commercial Court. This Civil Suit was instituted as regular suit and not a commercial suit on 6.06.2017 before the District Court, Surat. Thereafter on 4.8.2017 the plaint was amended and the valuation of the suit was increased beyond the specified value as stipulated in the Commercial Courts Act by claiming damage of Rs. 50 crores. Accordingly, the suit was transferred to Commercial Court under section 15(2) of the said Act. Therefore, on perusal of Order XI as applicable to the disputes before the Commercial Court, would apply at the time of the Page 725 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined institution/initiation of the suit. Sub-Rule(3) of Rule 1 of Order XI stipulates that the plaint shall contain a declaration on oath from the plaintiff. Explanation to the said sub- rule provides that the declaration on oath shall be contained in Statement of Truth as set out in the Appendix. Therefore, declaration on oath as referred to in Order XI as amended by the Commercial Courts Act relates to the Statement of Truth that is required to be filed in a commercial suit at the time of institution of the suit. As this suit was filed as regular civil suit and not a commercial suit, obviously no such Statement of Truth as required under Order XI was filed at the relevant point of time. Similarly, Page 726 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Order XI Rule 6 Sub-rule(3), provides for declaration on oath required to be filed also relates to the Statement of Truth that is required to be filed at the time of institution of the commercial suit. Accordingly, even the provisions of Rule 6 of Order XI could not be complied with when the suit was filed as a regular suit. On perusal of Sub-rule (5) and Sub-rule (6) of Rule 6 of Order XI which pertains to the disclosure and inspection of electronic record, it stipulates that Court may give direction for admissibility of the electronic record at any stage of the proceedings and any party may seek directions from the Court and Court may of its own motion, issue directions for submissions of further proof of any Page 727 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined electronic record including metadata or logs before admission of such electronic record.
11.18 Therefore, on perusal of sub- rule(6) of Rule 6 of Order XI, declaration on oath as required by sub- rule(3) of Rule 6 is subject to directions for admissibility of electronic evidence by the Court at any stage of the proceedings. Rule 7 of Order XI as applicable to the Commercial Courts Act clarifies that Order XIII Rule 1, Order VII Rule 14 and Order VIII Rule 1A shall not apply to commercial suits as such provisions would duplicate the procedure which is prescribed by Order XI which is applicable to the Commercial Court as the Order XI applicable to commercial Page 728 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined courts contains pari-materia provisions to Order XIII Rule 1, Order VII Rule 14 and Order VIII Rule 1A.
11.19 Order XIII Rule 1 of the Code is incorporated under Order XI Rule 4 applicable to commercial Courts as both these provisions discuss the procedure for admission and rejection of documents. Order VII Rule 14 and Order XI Rule 1 both lay down a similar procedure for production of documents by the plaintiffs whereas Order VIII Rule 1A and Order XI Rule 1 Sub-rule(7) applicable to Commercial Court stipulates similar procedure for production of documents by the defendants. Therefore, in facts of the case, when this suit was filed as a regular suit, Order XI was not Page 729 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined applicable and only on the ground that Order XI provides for declaration as stipulated in Sub-rule(3) of Rule 1 and Rule 6, it cannot be insisted upon after the suit was transferred to Commercial Court in view of provisions of section 15(3) of the Commercial Courts Act. Therefore, the objections raised by the defendants for noncompliance of Order XI is not considered fatal to the suit as sufficient safeguard is provided under Order XI applicable to commercial Court for the procedure prescribed therein and on such technicalities, suit cannot be said to be non maintainable as commercial suit as order XI would be applicable at the time of initiation or filing of the commercial suit and suit Page 730 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which is already filed before considering the same as Commercial suit, procedure prescribed under Order XI would not be applicable to the pending suits which are transferred to the commercial Court.
XI-B On Merits 11.20 The defendants have raised serious objections with regard to the admissibility of the contents of the documentary evidence produced by the plaintiffs as well as the plaintiffs have also raised objections with regard to documentary evidence placed on record by the defendants during the course of the proceedings. It is therefore, necessary to refer to the evidence of both the sides and decide Page 731 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined whether the contents of the evidence placed on record are required to be considered as admitted or not. 11.21 Considering the submissions made by both the sides each of the documents placed on record by both the sides are analysed hereunder to decide as to whether contents of the same should be considered as admitted or not and final exhibit numbers is to be given accordingly as held by the Apex Court in case of Bipin Shantilal(supra).
Sr. Particulars Exhibit Page nos. No. 1 Print out of 11 PW-1/1 to 78 to 98 invoices to indicate PW-1/11 (of the affidavit the commercial usage of Evidence of PW- of the plaintiff 1 Exh.76) no.1's technology Page 732 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.22 Certificate under section 65B of the Evidence Act is filed. The documents were issued by the plaintiffs and therefore, stands proved in law on admissibility and mode of proof. PW-1 was cross examined on invoices filed by him, more particularly, at question nos. 164 to 166.
11.23 Considering the arguments of both the sides, printouts of invoices which are placed on record to show that machines produced by the plaintiffs were sold in open market.
11.24 Question nos. 111 and 112 of the cross examination of DW-1 Dhaval Dayabhai Diyora reads as under:
"Q.No.111 When did you for the first time learn about the Page 733 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Galaxy machines invented and manufactured by the Plaintiff No.1?
Ans. As far as I remember I heard about Galaxy machines around 2010-11.
Q. No.112 Is it correct that Plaintiff No.1's Galaxy machines were available in the Indian market since 2009?
Ans. I cannot say from 2009, I can say 2010-11."
11.25 When the defendants have already admitted about the existence of Galaxy machines invented and manufactured by plaintiff no.1 since 2010-2011, contents of printouts placed on record showing the sale of such machines by PW-1 are admitted. Sr. Particulars Exhibit Page nos. No. 2 Images of a rough PW-1/12 99 diamond which has been scanned using Plaintiff No.1's Page 734 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Galaxy system 3 Image of the 3D model PW-1/13 100 of a diamond (corresponding to the image of the diamond marked as Exh.PW-
1/12) generated by mapping/planning 4 Image of 3D model PW-1/14 101-103 with a finished ( of the Affidavit of diamond Evidence of PW-1 -
(corresponding to the Exhibit-76-Part-IV) image of the diamond marked as Exh.PW-
1/12) planned therein using the Advisor @software 11.26 Certificate under section 65B of the Evidence Act is considered as a valid certificate. According to the plaintiffs, image relates to the process of scanning of diamond in Plaintiff no.1's Galaxy machine and PW- 1 has stepped into witness box. The said document has been admitted by defendants in the written statement filed on behalf of defendant nos. 1 to Page 735 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 3 and 6 to 11 at para.2 at page nos. 66 to 72 and written statement filed by the defendant nos. 4 and 5 at para 2 at page 1096. It was submitted that image of rough diamonds scanned in the plaintiffs' galaxy machine are part of the plaint as well as the statements admitted by the defendants in written statement as held by this Court in First Appeal No.11028/2006 in case of Gujarat Industrial Development Corporation v. Ishvarlal Patel and others, more particularly, paragraph nos. 35 and 36 thereof wherein it is held that preponderance of probabilities would be required to be considered for admission of contents of documents.
11.27 Therefore, images of the rough Page 736 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined diamonds which has been scanned using machine of plaintiffs no.1 cannot be discarded. Hence the contents of the same is admitted.
Sr. Particulars Exhibit Page nos.
No.
5 i) Print out of PW-1/15 104-166,
the plaintiff
no.1's suit
patent.
6 ii) Print out of PW-1/16 167-168
the Certificate ( of the Affidavit
of registration of Evidence of PW-1
of patent granted - Exhibit-76
in favour of
plaintiff no.1
11.28 As agreed by both the sides
these documents are exhibited. Decision of the Controller of Patent dated 22.10.2016 granting suit patent to plaintiffs is also placed on record by the defendants at page 1050 of the paper book and therefore, the contents Page 737 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the same are admitted.
Sr. No. Particulars Exhibit Page nos.
7 i) Copy of the reports PW-1/17, 169-183( of which indicated no Affidavit of presence of Selenium Evidence of PW- on a batch of 10 1 Exhibit 76) diamonds 8 ii) Copy of the report showing presence of 191-208 ( of selenium traces on the PW-1/25, Affidavit of stones scanned by Evidence of PW- defendant no.1. 1 Exhibit 76) 11.29 Original reports are placed on record at Exhibit CW-1/5, CW-1/6, CW- 1/7 with the testimony of the Court witness Dr. Ruchita Pal who has deposed before the Court as Court witness. Hence the contents of the documents are admitted.
Sr. Particulars Exhibit Page nos.
No. 9 i) Screenshots of PW-1/18 184 step-1 for accessing the data output through defendant no.1's website Page 738 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 10 ii)Screenshots of PW-1/19 185 step-2 for accessing the data output through defendant no.1's website 11 iii) Image of data PW-1/20 186 output for one of the five stones bearing file number AB-PM-1 (CH350863).cap[as obtained from defendant no.1 12 iv) Image of data PW-1/21 187 output for one of the five stones bearing file number AB-PM-1 (CH350864).cap[as obtained from defendant no.1 13 v) Image of data PW-1/22 188 output for one of the five stones bearing file 156 number AB- PM-1 (CH350860).cap[as obtained from defendant no.1 14 vi) Image of data PW-1/23 189 output for one of the five stones bearing file 157 number AB- PM-1 (CH350861).cap[as obtained from defendant no.1 15 vii) Image of data PW-1/24 190 output for one of the five stones bearing file 158 number AB- PM-1 (CH350862).cap[as obtained from defendant no.1 Page 739 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.30 Certificate under Section 65B
of the Evidence Act is filed. Private investigator PW-7 got the diamonds scanned from the defendant no.1 for inclusion scanning and thereafter defendant no.1 returned the diamonds along with the data output for which a username and password was provided to access the reports. In paragraph no.26 of the affidavit of PW-1, user ID is stated as [email protected], and password 123 provided by defendant no.1 to the private investigator. The private investigator gave the username and password to PW-1 who then accessed the website of defendant no.1 using the username and password and took screenshots of the steps and has Page 740 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined accessed the data output and taken the image, has stepped into witness box and therefore, it was submitted that the contents of the documents should be admitted. Whereas on the other hand, it was submitted by the defendants that flash drive is not produced on record inspite of the fact that in the cross examination in answer to question nos. 188, 193 and 194 as well as cross examination of PW-7 private investigator particularly answers to question nos. 33 to 38 shows that flash drive was provided to PW-7 along with username and password to access the report on the website of defendant no.1 which was assessed by PW-1. There is difference in email ID and password in affidavit of PW-1 and answer to Q 41 of Page 741 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-7. Thus there are contradictory statements with regard to the reports obtained with regard to the screenshots of data output through defendant no.1 website which are placed on record by PW-1 and image of data output of stones which were scanned by defendant no.1 provided by PW-7. In view of the fact that contents as obtained from website are not verifiable in absence of flash drive, contents of these documents PW- 1/18 to PW-1/24 are held not admissible.
Sr. Particulars Exhibit Page nos. No. 16 Analysis report PW-1/27 220-270 (of the pertaining to the Affidavit of Evidence ten rough diamonds of PW-1 Exhibit 76) scanned by defendant no.1 11.31 This report is analysis done by PW-1 only and contents thereof cannot be Page 742 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined admitted and cannot be said to be proved. Hence not admitted.
Sr. Particulars Exhibit Page nos.
No.
17 i) Compact disc (CD) PW-1/29 327,
containing the video
recording during the
commission work
showing that the
employees of the
defendants started
leaving the premises.
18 ii) Print out of the PW-1/36 340-345
data output reports ( of the affidavit of
generated for 6 evidence of PW-1
diamonds that were Exhibit 76)
recently scanned by
the defendants
11.32 The plaintiffs did not press this
evidence hence not admitted. Sr. Particulars Exhibit Page nos.
No.
19 Printout of the trade PW-1/37 346-349 (of the
reports available on Affidavit of Evidence
the website of the of PW-1 Exhibit 76)
Hong Kong based
supplier
11.33 Certificate under section 65B of
the Evidence Act is filed. However,
printout of trade reports on the website Page 743 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of Hong Kong is objected by the defendants on the ground that veracity of such report is not proved and reliance placed by the plaintiffs on the admitted facts of import of vacuum pump by DW-1 to question no.305 at pg. 1241, contents of the report obtained from website can be said to be admitted.
11.34 Considering the above objections and in absence of any proof with regard to veracity of the website of Hong Kong based supplier, contents of print out of trade report is not admitted.
Sr. Particulars Exhibit Page nos. No. 20 Image of vacuum pump PW-1/38 350 (of the Affidavit used in plaintiffs of Evidence of PW-1 galaxy machine Exhibit 76) 11.35 Certificate under section 65B of the Evidence Act is filed. However plaintiffs have not placed as to from Page 744 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which source such image of vacuum pump used by galaxy machine of the plaintiffs is obtained. Hence such image is not admitted.
Sr. Particulars Exhibit Page nos. No. 1 Video conference with PW-1/X-5, X- 4323 defendant no.10 and 6, X-7 and X-
11 and one Power 8
Point Presentation
shared by defendant
no.10 with PW-1
2 video clips in a PW-4/X4 4325
pendrive ( of Exhibit 161)
11.36 It is not to be exhibited as
there is no order to take such evidence on record is passed and accordingly such evidence is not part of the record. In such circumstances, such exhibits are discarded as evidence. Sr. Particulars Exhibit Page nos. No. 1 Screenshots (one page DW-2/X3 4356 to 4361 of Exhibit each, total running 161 into 6 pages) of the Page 745 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined scan reports/data output reports generated by the defendant no.1 for one of its customers in May 2019 11.37 As agreed between the parties, the contents of the screenshots at Exh. DW-2/X3 are not required to be admitted.
Sr. Particulars Exhibit Page nos. No. 1 Audio recordings of DW-9/X2 4369 of Exh.161 DW-9 with the private investigator 11.38 As agreed between the parties, the contents of the audio recordings at Exh. DW-9/X2 are not required to be admitted.
11.39 Contents of the following documents placed on record by the plaintiffs and the defendants are admitted as agreed between the parties: Page 746 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Sr. Particulars Exhibit Page nos. No. 1 Print out of the PW-1/26, 209-219( of Affidavit original data output of Evidence of PW-1 of defendant no.1 Exhibit 76) 2 Court Commissioner PW-1/28, 271-326( of Affidavit report dated of Evidence of PW-1 03.07.2017 Exhibit 76) 3 Photographs taken by PW-1/30, 328-330( of Affidavit Court Commissioner of Evidence of PW-1 showing empty power Exhibit 76) socket in the defendants machines, 4 Compact Disc PW-1/31, 331( of Affidavit of containing the video Evidence of PW-1 of the Defendant Exhibit 76) no.10 showing the working of duplicated machine of the defendants taken during the inspection conducted by the Court Commissioner.
5 Screenshot of the PW-1/32, 332-333 ( of Affidavit Defendants website as of Evidence of PW-1 taken by the court Exhibit 76) commissioner showing the stone numbers scanned by them for one of their customers on 16.06.2017.
6 Screenshot of data PW-1/33, 334-335( of Affidavit output of one of the of Evidence of PW-1 scanned stones as Exhibit 76) taken by the court commissioner highlighting the stone number which was scanned on 16.06.2017 showing no presence of air bubbles.Page 747 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 7 Screenshots of the PW-1/34, 336-337( of Affidavit defendants website as of Evidence of PW-1 taken by the court Exhibit 76) commissioner showing the stone numbers scanned by them for one of their customers on 26.06/.2017.
8 Screenshot of data PW-1/35, 338-339( of Affidavit output of one of the of Evidence of PW-1 scanned stones as Exhibit 76) taken by the Court Commissioner highlighting the stone number which was scanned on 26.06.2017 showing no presence of air bubbles.
9 Copy of the report PW-7/1 861-874( of Affidavit dated 17.05.2017 (Already of Evidence of PW-7 obtained from the exhibited as Exhibit 83) Jawahar Lal Nehru PW-1/17), University showing no presence of selenium on each rough diamond.
10 Copy of the report PW-7/2 876-892( of Affidavit
dated 27.05.2017 (Already of Evidence of PW-7
obtained from the exhibited as Exhibit 83)
Jawahar Lal Nehru PW-1/25),
University showing
the presence of
selenium on each
round diamond.
11 US Patent No. 6020954 DW-2/X1, 4328-4351( of Exhibit
granted to Imagem 161)
Inc.
12 Print out of the DW-2/X2, 4352-4355 ( of Exhibit
description of a 161)
Diode-pumped solid-
state laser as
downloaded from the
website
https://en.wikipedia.
org
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undefined
13 Printout of Article DW-7/X1, 4362(of Exhibit 161)
on the website
https://ipco.com/prod
ucts/purging-device/
14 Print out of the DW-7/X2, 4363(of Exhibit 161)
definition of valve
as downloaded from
the website
https://en.wikipedia.
org/wiki/Valve.
15 Print out of the DW-7/X3, 4364(of Exhibit 161)
definition of valve
as downloaded from
the website
https://dictionary.ca
mbridge.org
16 Print out of the DW-7/X4, 4365(of Exhibit 161)
definition of valve
as defined in
Dictionary of
Mechanical
Engineering by Oxford
downloaded from the
website
https://www.oxfordref
erence.com
17 Print out of the DW-7/X5, 4366(of Exhibit 161)
definition of valve
as defined in
Dictionary of
chemical engineering
by Oxford downloaded
from the website
https://www.oxfordref
erence.com
18 Print out of the DW-7/X7, 4367-4368(of Exhibit
extract from the 161)
registry of European
patent office with
respect to EP
21154436.
19 Print out from the DW-13/X1, 4370-4371(of Exhibit
website of Ministry 161)
of corporate affairs
Page 749 of 1093
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undefined
(https://www.mca.gov.in ) to show the status of defendant no.12 Sr. Particulars Exhibit Page nos.
No.
1 i) DVD containing the PW-2/1 693(of the Affidavit of
video Evidence of PW-2
Exhibit 80)
2 ii) DVD containing PW-4/1 786 (of the Affidavit
video obtained by of Evidence of PW-4
Desraj Exhibit 82)
3 iii) Original camera PW-4/X1, 806 of Exhibit 82
enabled spectacles
along with the data
cable.
4 iv) Original camera PW-4/X2, 808 of Exhibit 82
enabled shirt along
with chip/memory card
11.40 During the course of hearing,
camera enabled spectacles at Exhibit PW- 4/X1 and camera enabled shirt at Exhibit PW-4/X2 were tried to be played with the aid of video player software of the computer inside the court room for the purpose of accessing contents of the original camera enabled spectacles and camera enabled shirt by playing videos Page 750 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined directly from the cameras in the spectacles and shirt. As the videos from the spectacles and shirt could not be played directly, the videos were downloaded and saved with the help of technical person from the IT department of the High Court and thereafter, same were played on the screen in presence of the respective counsels present in the Court. By order dated 11.11.2022 soft copy of such videos were shared with the learned advocates for both the sides. 11.41 Thereafter, learned Senior Advocate Mr. Oza made submissions on the contents of the said videos vis-a-vis the DVD placed on record at Exh.PW-2/1 and video annexed as Annexure-E to the Court Commissioner's report at Exh. 27 as under:
"1. Video annexed as Annexure E to the Court Commissioner's report dated 03.07.2017 Page 751 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (Exhibit-27).
This video is in relation to the Defendants' infringing machines, wherein DW-2 can be seen explaining the similarities between the Defendants' machines and the Plaintiffs' machines. DW-2, in this video, states that the difference between the Plaintiff No.1's machines and those of the Defendants is that the Defendants machines has no provision for bubble prevention.
The video is bearing no VID 20170628 133018897 and is of total 00:01:50 duration.
2. Videos contained in the DVD marked as Exhibit PW-2/1 tendered along with the affidavit of evidence of PW-2 which is marked as Exhibit -
80. In relation to the security guards/checks i. Video recording no. RECO 0001 at part I of the DVD:
relevant parts of the video can be seen at the following timestamps:
20:18:37 Page 752 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 20:20:04 20:20:41 In relation to the vacuum pump ii. Video recording no. RECO 0005 at part II of the DVD: relevant part of the video can be seen at 21:05:37 iii. Video recording no. RECO 0008 at part II of the DVD: relevant parts of the video can be seen at the following timestamps:
21:32:26 21:32:39 21:36:02 iv. Video recording no. RECO 0009 at part III of the DVD: 21:43:15
3. Videos contained in the DVD marked as Exhibit PW-4/1 tendered along with the affidavit of evidence of PW-4 which is marked as Exhibit -
82.
In relation to the bubbles that occur while scanning rough diamonds Page 753 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined i. Video recording no. MOVI0002 (06) in the DVD: relevant part of the video can be seen between 18:33:59 to 18:34:22 ii. Video recording no.
MOVI0001 (05) in the DVD:
relevant part of the video can be seen between 18:43:20 to 18:43:30 In relation to the vacuum pump iii . Video recording no. MOVI0002 (06) in the DVD:
relevant part of the video can be seen at the following timestamps:
18:33:55 to 18:34:41 (audio relating to the conversation regarding applying vacuum while scanning the diamond, between the Defendants' employees and PW-3) 18:40:06 (showing presence of bubbles in the immersion medium and bubbles being vacuumed out) Page 8 and 9 of PW-4's Affidavit of Evidence (Exhibit-
82) may kindly be seen together with the excerpt of this video between time stamps 18:34:07 to 18:34:18.Page 754 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined iv. Video recording no.
MOV10001 (05) pump, in the DVD:
relevant part of the video can be seen at the following timestamps:
18:43:22 to 18:43:34 (audio relating to the conversation regarding applying vacuum while scanning the diamond, between the Defendants' employees and PW-3) 18:44:21 (appearance of bubbles in the immersion medium while scanning the rough diamond) 18:47:17 and 18:47:39 (disappearance of bubbles when green light of the vacuum pump is glowing indicating that it is being used) v. Video recording no.
MOVI0000(10) in the DVD: relevant part of the video can be seen at 18:35:37 (audio relating to the conversation regarding vacuum pumps between the Defendants' employees and PW-3)"
11.42 It was submitted by learned Senior Advocate Mr. Oza that on perusal of the contents of the videos it is proved that Page 755 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the defendants were using the methodology of vacuum for removal of gas bubbles from the immersion material while scanning the rough diamonds.
11.43 It was therefore, submitted that the defendants are using the apparatus and the methodology for scanning the diamonds which is patented by the suit patent.
Hence, there is clear infringement of the suit patent proved by the plaintiffs on the basis of such videos which shows in no uncertain terms the use of vacuum technology by the defendants in the machines installed in their premises. 11.44 Learned Senior Advocate Mr. Soparkar raised objections with regard to evidence filed by the plaintiffs on the Page 756 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ground that contents of Exh. PW-4/X1 is not exact copy of the DVD filed at Exh.PW-4/1 and similarly the contents of Exh. PW-4/X2 is also not exact copy of DVD filed at Exhibit PW-2/1 by the plaintiffs. It was submitted that the photos and videos contained the following files:
MOVI0000.avi MOVI0001.avi PIC000.jpg MOVI0000.avi MOVI0001.avi MOVI0002.avi MOVI0003.avi MOVI0004.avi MOVI0005.avi MOVI0006.avi Page 757 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.45 Contents of Exh. PW-4/1 which PW-4 states to be the copy of contents of Exh.
PW-4/X1 are as under:
MOVI0000(10).avi MOVI0001(05)Pump.avi MOVI0002(06).avi MOVI0005(09)Pump.avi 11.46 It was therefore, submitted that on perusal of the above discrepancies, it clearly show that the plaintiffs have been filing evidence which has no sanctity whatsoever as the exact replica of the contents of Exh. PW-4/X1 was not filed at Exh. PW-4/1 through PW-4 who is not even the author of the said videos. It was therefore, submitted that in view of this ground alone both Exhibit Nos. PW-4/1 and Page 758 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-4/X1 are required to be rejected since same is clearly tampered in nature by the plaintiffs. It was further pointed out by learned Senior Advocate Mr. Soparkar that camera enabled spectacles when connected to the computer system of the court "Date of Modification" as shown in the folder containing the purported videos was of the date 11.09.2018. It was therefore, pointed out that this further destroys the credibility of PW-3 and his testimony that recording was carried out on 13.09.2018 as if the date of recording according to PW-3 himself was 13.09.2018 and therefore, it cannot be the date of modification as shown in camera enabled spectacles as 11.09.2018.
It was therefore, submitted that both PW-3 and PW-4 in connivance with the plaintiffs have tendered false evidence before this Page 759 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court and therefore, the videos presented before the Court cannot be relied upon. It was further submitted that four videos which were shared by the plaintiffs claimed to be in Exh. PW-4/X1 with the defendants having different file names of the videos which were shown before this Court downloaded directly from camera enabled spectacles which is indicative of tampering by the plaintiffs as the file names do not match in the videos provided to the defendants in comparison to the videos which were present in the Camera Enabled Spectacles. It was therefore, submitted that such electronic evidence fails the test of Section 65B of the Evidence Act as there is not even a 65B affidavit from PW-3 and that the defendants have duly objected to the same in application Exh. 211. Page 760 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.47 It was also pointed out that the plaintiffs have only shared 4 videos as claimed to be forming part of Exh. PW-4/X1 with the defendants, through PW-4 who is not even the author of the said purported videos and other videos claimed to be forming part of Exh. PW-4/X1 were not shared by the plaintiffs till date. It was pointed out that in re-examination at Q.6, PW-4 suo-moto, without even a question being asked to him on such aspect, at his sole convenience, placed on record 6 video clips forming part of the Camera Enabled Spectacles as Exh. PW-4/X4 in a pen drive having make of 'ScanDisk' of 16GB having serial number at the box being 1965912974 which was never shared with the defendants at the relevant time. It was further submitted that PW-4 had claimed that there Page 761 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are 6 video clips in total, however upon opening the contents in Exh. PW-4/X1 for the purpose of compliance of Order dated 11.11.2022 passed by this Court, it was observed that there are in fact 7 video clips in total, without taking into consideration the 2 videos that form part of the photo folder. It was therefore, submitted that such facts create a severe doubt on the veracity of the evidence placed on record by PW-4, who is not even the author of the purported videos which were purportedly recorded via Exh. PW-4/X1. It was pointed out that there is clear contradiction in answer to Q. No. 138 of the cross examination of PW-4 wherein he stated that 6 clips were recorded on 13.09.2018.
Page 762 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.48 Reference was made to Q No.6 in re- examination of PW-4 and objections raised by the defendants pertaining to pen-drive placed on record by PW-4 as Exhibit PW-4/X4 as the same was not ordered to be taken on record by the Court. It was submitted that when the contents of Exh. PW-4/X1 was accessed by the Court on 11.11.2022 following discrepancies were observed with respect to 7 video clips forming part of Exh. PW-4/X1 in the folder tiled "VIDEO":
"(i) MOVI0000 - The said video clip was blank and could not be opened and thus, was completely corrupt.
(ii) MOVI0001- The said video clip was blank and could not be opened and thus, was completely corrupt.
(iii) MOV10002- The said video clip could be opened, however, the videos could not be played properly and therefore, the same was partially corrupt and no meaningful content can be taken note of from the video/images being partially shown.Page 763 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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(iv) MOVI0003- The said video clip was blank and could not be opened and thus, was completely corrupt.
(v) MOVI0004-The said video clip could be opened, however, the videos could not be played properly and therefore, the same was partially corrupt.
(vi) MOV10005-The said video clip could be opened, however, the videos could not be played properly and therefore, the same was partially corrupt.
(vii) MOV10006 - The said video clip was blank and could not be opened and thus, was completely corrupt."
11.49 It was pointed out that videos MOVI0000.avi and MOVI0001.avi in the folder titled "PHOTO" in Exh. PW-4/X1 were also corrupt and could not be opened. It was pointed out that photograph titled PIC000.jpg forming part of Exh.PW-4/X1 was never filed by the plaintiffs before this Court. However, said photograph was also Page 764 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not opened. It was therefore, submitted that original camera enabled spectacles produced by the plaintiffs and videos contained therein are not admissible in evidence as the contents of the said files could not be opened before the Court. Reliance was also placed upon the objections filed by the defendants at application Exh. 211 pertaining to the admissibility against the documents/ evidence placed on record by the plaintiffs before this Court.
11.50 Learned Senior Advocate Mr. Soparkar submitted that reliance placed by the plaintiffs upon the videos annexed as Annexure-E to the Court Commissioner's report cannot be relied upon in view of order dated 14.06.2017 in Special Civil Page 765 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Application No.11240 of 2017 passed by this Court wherein Court Commissioner was directed to carry out inventory of the machines/devices at the premises of the defendant nos.1 and 12. However, Court Commissioner proceeded beyond the scope of the order passed by this Court and recorded the videos and not only that even interrogated DW-2 on the working of the machines for which the Court Commissioner was not authorised to do so. It was therefore, submitted that videos as taken by the Court Commissioner is inadmissible in nature owing to the utter disregard by the Court Commissioner to the order passed by this Court as well as manner in which the Court Commissioner has interrogated DW- 2 during the local commission and objection was also raised in Q No.231 of the cross Page 766 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined examination of DW-2 with regard to the videos relied upon by the plaintiffs. 11.51 It was submitted that reliance placed by the plaintiffs upon the blue pipes which were used for supplying helium gas as oxygen pipe is baseless. Reference was also made to the videos relied upon by the plaintiffs wherein DW-2 can be clearly heard as saying at 1:42 minutes that "the difference I have to say that there is no bubble prevention" and the said video ends abruptly at 1:50 minutes and the complete sentence said by DW-2 was not even recorded or made part of the submitted recording. It was therefore, submitted that the stand of the defendants that no bubble prevention device is used is categorically recorded in the report submitted by the Court Page 767 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Commissioner. It was also pointed out that videos which are subject to objections pertaining to admissibility as the same were produced after the institution of the suit by the plaintiffs and the same is required to be discarded as prayed for by the defendants vide application Exh.225. 11.52 Learned Senior Advocate Mr. Soparkar in relation to video recording no. RECO 0001 at part I of the DVD in relation to security guard checks submitted that said video is required to be rejected in view of Audio conversation Exh. DW-9/X1 at Mark 162/17 placed on record by DW-1 at the instance of the plaintiffs, which clearly showed the conversation between Mr.Aarnav Sharma and DW-9, wherein in Audio File titled as 04.11.2018, Aarnav Sharma had Page 768 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined offered Rs.8.5 lakhs to DW-9 and the same was also recorded in the police complaint filed by DW-9 before the Police Station, Surat.
11.53 Relying upon such conversation it was submitted that Mr. Aarnav Sharma very well knew that phone/mobile device can be taken inside the defendants' premises, and was thus talking about recording in the phone which is contrary to the arguments of the plaintiffs pertaining to security layer put forth. It was therefore, submitted that all the claims made by the plaintiffs that the defendant's premises were uncompromised is not correct. It was submitted that Mr.Aarnav Sharma who is a self-proclaimed Private Investigator, engaged by the plaintiffs to record the working of the Page 769 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined machines of the defendants was categorically hired by the plaintiffs to breach the security of the defendants. It was therefore, submitted that the sanctity of the purported videos relied upon by the plaintiffs from a security enforcement standpoint is required to be rejected as the sole objective of Mr.Aarnav Sharma was to somehow breach the security and place the vacuum pump inside to get the recordings done.
11.54 Learned Senior Advocate Mr. Soparkar therefore, submitted that the videos placed on record by PW-2 and PW-3 through PW-4 are clearly fabricated, fraudulent and therefore, inadmissible, and unreliable and not of the premises of the defendants. It was submitted that as per Page 770 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the admission made by PW-9, screenshots of the videos purportedly recorded by PW-3 and placed on record by PW-4 were actually recordings of machines of the plaintiffs which are in Israel. Reliance was placed on answer to Q.126 of the cross examination of PW-9 in support of such submission. 11.55 Reliance was placed on answer to Q. 88 in the cross examination of PW-2 to the effect that the security guard had also left the company and was also compromised and therefore, the defendants do believe that the security ought to have been compromised owing to which such vacuum pump could have been placed or attempted to have been placed in the scanning machines of the defendants as the intent was clearly demonstratable from the actions of Page 771 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Mr.Aarnav Sharma, his statements made before the Police and the conduct of the plaintiffs for hiring such private investigator after the institution of suit. Reference was also made to answer to Question nos. 146 and 147 of the cross examination of PW-2 as well as answer to question nos. 3 to 7 and Q no.99 to point out that PW-2 had studied only till Class 10 and cannot even speak Hindi and he had no understanding of the working of the machines of the defendants and inspite of that in the affidavit he has stated about working of the machine which is tutored in nature and hence this evidence placed on record suffers from serious anomalies and is not liable to be considered. Page 772 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.56 Learned Senior counsel Mr. Soparkar in relation to video recordings pertaining to vacuum pump in part II and III of DVD submitted that no questions were asked by the plaintiffs to the Defendant's witnesses DW-1 and 2 during the cross- examination on alleged use of the vacuum pump and therefore, the plaintiffs cannot rely on this aspect when they had the full opportunity to confront this portion of the video to the witnesses of the defendants and seek clarity/confirmation on what is being shown in the videos.
11.57 It was submitted that reference to RECO0005 video file at timestamp 21:05:37 by the plaintiffs indicate that a vacuum pump was purportedly visible is nothing but a self-serving interpretation and misconceived assessment of the plaintiffs Page 773 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as it was argued by the defendants at several instances that the videos are grossly fraudulent, fabricated, and not reliable due to various reasons such as mode/manner/time/location in/at which such videos have been produced/obtained by the plaintiffs and intent of the plaintiffs through Me Aarnav Sharma, to place/deploy vacuum pumps in the machines of the defendants and then record videos of the machine of the defendants and chain of custody of the so-called purported original devices, and not complying with the mandatory provisions of the Evidence Act makes such videos inadmissible in evidence. 11.58 Learned Senior Advocate Mr. Soparkar thereafter referred to answers to Q.106 to 108 put forth to PW-2 to submit Page 774 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the lower chamber of the machines which is admittedly always closed and opened only if and when repair is required by the supervisor for maintenance, it was found open during the complete recording submitted by PW-2 though no maintenance work was going on. It was therefore, submitted that it is extremely suspicious as to why the lower chamber was kept open and recording thereof was done, and a device was placed to create an incorrect and misleading impression that it is a vacuum pump. It was submitted that the videos give no clarity and objectivity as to the nature of device/object/article being pointed to and whether it is actually a physical/ tangible object/ article i.e. functioning/ working /operational or is merely placed as an item or if it is a Page 775 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined simple box having a sticker and owing to such non clarity, reliance placed by the plaintiffs on such videos would be merely assumption that would justify the case of the plaintiffs and therefore, such videos should be rejected. It was further submitted that the argument of the plaintiffs that the vacuum pump was connected to the blue pipes would suggest that such arguments is flawed as helium gas is inserted through a completely different gas infusion device which has nothing to do with a vacuum pump whose function is completely different. It was therefore, submitted that all the video recordings placed on record are not reliable and required to be rejected.
11.59 With regard to the video recording MOVI0002(06) in DVD and MOVI0001(05) in the Page 776 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined DVD in relation to the bubbles that occur while scanning rough diamonds in vacuum pump and video recording MOVI0002(06) in DVD, MOVI0001(05) pump in DVD and MOVI0000(10)in DVD recorded by PW-3, it was submitted that major anomalies clearly indicate that such videos are inadmissible as there are contradictory versions appearing in oral and documentary evidence on evaluation of evidence of PW-3 and PW-9 and such videos do not show vacuum pump but in fact show red light instead and there was no vacuum pump visible in videos placed on record by PW-3.
11.60 Learned Senior Advocate Mr. Soparkar summarised anomalies in the video recording as under:
"a) PW-9 claims that the videos were recorded in Israel of the Page 777 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined machines of the Plaintiff whereas PW-3 states that the screenshots were from the video purportedly recorded from the premises of Defendant No.1
b) All videos are indicating that recording took placed on 10.09.2018 whereas, PW-3/4 claims the said video being purportedly recorded on 13.09.2018
c) All videos were stated to be recorded at 8:30PM whereas the videos show time of 6:30 PM onwards
d) 3 videos (MOVT0000 (10) & MOVT0002(06) & MOV10005 (09) start at the same time (18:31:05) and out of these 3 videos, MOV10000 (10) and MOV10002(06) stop at the same time (18:41:18)
e) All videos run faster than the actual duration of the video as seen in the time stamp within the video
f) The videos also show processing of diamonds having an inward date of 15" September 2018 which is practically impossible if the same was purportedly recorded on 13 September 2018
g) Camera enabled spectacle seem to be without any prescription number whereas PW-3 had admitted he had Page 778 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined poor eyesight in his affidavit as well as in his cross-examination
h) The Vacuum Pump claimed to be located on the right hand bottom side in the affidavit of PW-3 whereas in videos points out that red light belong to vacuum pump which in contradiction since it is on the left side of the bottom portion in the video
i) Various other contradictions between PW-3 and PW-4 and their fraudulent intent to place the vacuum pump in premises of Defendant No. 1 becomes apparent from the submissions made in the present compendium
j) The evidence is not proved in accordance with Section 65B of Evidence Act or Order 11 Rule 6 of CPC 1908
k) How could have PW-4 brought the camera enabled spectacles from Delhi without knowing about the size of the target when at that time it was not known as to who would agree to be a spy.
l) Whether PW-4 met PW-3 first time on 05.09.2018 or on 06.09.2018
m) PW-3 tried the spectacles before 06.09.2018 for 1 day or for 4-5 days or at all Page 779 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
n) It is the case of the Plaintiffs that PW-4 brought these spectacles from Delhi. At that time who would wear them was not even known.
Obviously, he would not carry spectacles with numbered glasses. If so, these spectacles are useless for PW-3
o) The screenshots relied upon are in Hebrew language
p) Spectacles from the custody of wrong person i.e, PW-4
q) PW-4 could not have produced them in Cross-Examination - Not in the List of Documents. Not offered in Chief.
Not asked in cross-examination"
11.61 It was submitted that none of the videos referred to and relied upon by the plaintiffs which are placed on record clearly show the existence of vacuum pump and evidence of PW-2 and PW-4 relied upon by the plaintiffs suffers from various discrepancies.Page 780 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.62 It was submitted that none of the purported videos show any so-called vacuum pump, and that the presence of vacuum pump in the premises of the Defendants is nothing but a figment of imagination of the plaintiffs that is being reiterated repeatedly by them out of desperation of not getting any other argument to make.
11.63 It was further submitted that the location/premises being shown in the recording is not of the Defendants, and such location/premises/machines are being highly disputed by the defendants while some resemblances to the entry points of the Defendant Premises have been maneuvered and doctored by the plaintiffs to misrepresent before this Court. It was Page 781 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that the so-called authors' (PW-
2's) deployment by the plaintiffs through Mr. Aarnav Sharma is also highly objected as the defendants do not have a record of any salary being paid to PW-2.
11.64 Learned Senior Advocate Mr. Soparkar submitted that the defendants have been provided the soft copy of videos in Exh. PW-4/X1 camera enabled spectacles and Exh. PW-4/X2 camera enabled shirt as per order dated 11.11.2022 and on receipt of the respective copies of the purported videos, it was found that there are major discrepancies in such videos which would lead to inadmissibility of such videos in evidence.Page 782 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.65 Learned Senior Advocate Mr. Soparkar submitted that the main objection in view of which the said evidence at Exh.
PW-2/1 and Exh. PW-4/X2 filed by the plaintiffs should be rejected, is that the contents of Exh. PW-4/X2 is not an exact copy of the DVD's filed at Exh. PW-2/1 before this Court, and therefore the same is inadmissible in evidence.
11.66 Reliance was placed on the contents of Exh. PW-4/X2 as was received from the Court's copy vide Order dated 11.11.2022 which contains 5.txt text files and 1 WriteTime.exe file, System Volume Information Folder and DCIM Folder.
11.67 Learned Senior Counsel submitted that in pursuance to order dated Page 783 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.11.2022, upon opening of Exh. PW-4/X2 i.e., Original Camera Enabled shirt by the Court Master for the purpose of transferring the data from the same, it was found that the Micro SD card that was said to have formed part of the Camera Device in the Shirt, was in fact placed separately in a transparent plastic envelope with a slip note having details of the purported Micro SD Card, and that it was not positioned inside the memory card slot of the camera device on the Shirt itself which was also confirmed by the defendants from the Court Master who then stated that the said Micro SD Card was kept separately outside the camera device in the Shirt, and not within the camera device itself. It was submitted that all this while, it was claimed by the plaintiffs Page 784 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the Micro SD Card was part of the camera enabled shirt itself, however, upon opening sealed envelope having Exh.
PW-4/X2, it was found that the Micro SD card was not inside the Memory Card Slot of the camera, instead, was submitted physically separate/isolated from the Camera in a transparent plastic envelope.
It was submitted that keeping the SD memory card physically separate puts a question mark on the association/use of the SD memory card with this very camera in the first place and it is plausible that the purported video was recorded on a different medium, and then copied to the said SD memory card which was then kept on the shirt to portray that the SD memory card was actually used with the camera embedded in the shirt itself, which is purely an Page 785 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined assumption without any reliable/credible evidence.
11.68 It was submitted that nowhere did the Plaintiffs/PW-4, either in Evidence Affidavit or recently filed 65B Certificate state that the said Micro SD Card was kept physically separately in the sealed envelope, and since the defendants were never allowed to inspect the contents of Exh.PW-4/X2 previously at the time of cross-examination, the defendants could not put forth relevant questions pertaining to the credibility of the purported Micro SD Card of which there is no sanctity as to whether the lame was even forming part of the Camera Enabled Shirt.Page 786 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.69 Learned Senior Advocate Mr. Soparkar submitted that camera enabled device has a USB 2.0 outlet and comes with a USB cable as well and that in Exh.PW-4/X2, there was no cable provided by plaintiffs despite there being a USB outlet on the camera device.
11.70 Learned Senior Advocate Mr. Soparkar therefore, submitted that multiple time/date setting files showing different timestamps therein with different modified dates are clearly indicative of deliberate tampering of the SD memory card before/during/after the capturing of the purported videos so that the time of convenience is mentioned in the videos more so, when the time.txt file is showing a time of 20th March 2019, how can the videos Page 787 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined show date of 22nd March 2019. It was submitted that all of these raise extremely serious questions on the tampering of the purported original device.
11.71 It was submitted that the fact that there are multiple ".txt" files, clearly portrays that the timings have been edited multiple times by the plaintiffs to their own whims and fancies and that no credibility ought to be given to such spy camera content which were illegal in the first place. It was submitted that there was no need to set multiple time & date .txt files as is evident from various spycamera user guide as shown online, the time and date has to be set only once and thereafter, there is no need to set it again and again. It was submitted that it Page 788 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined creates suspicion as to the purpose of all these multiple time/date setting files when the videos online clearly indicate that no such Write TimeHD.exe application is even required, and the time can simply be set by setting the time in time.txt file.
11.72 It was submitted that the plaintiffs have definitely changed the date and tampered with the so-called videos to come up with such misleading and misrepresented videos and that there is no sanctity to the said videos.
11.73 It was submitted that the plaintiffs deliberately did not share the entire contents of Exh.PW-4/X2 knowing very well that the defendants would have put forth questions pertaining to "Who set the Page 789 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined date and time on the said spy camera", "At which place was the said time and date set"
which is extremely crucial to the present case owing to the fact that the date and time can be easily changed on such spy devices since the same does not come with inbuilt time and date already set by the manufacturer itself.
11.74 It was submitted that the said act by the plaintiffs of deliberately suppressing this relevant fact, led to constraining the rights of the defendants to put forth numerous questions to PW-4 which in effect would have further brought to light further falsities done by PW-4 in connivance with the plaintiffs before this Court. It was therefore requested to allow re-examination of PW-4 on this aspect for Page 790 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which a separate application shall be moved by the defendants.
11.75 Learned Senior Advocate Mr. Soparkar submitted that in Para No. 11 of recently filed 65B Certificate of PW-4, it was stated "...I was provided with the camera enabled shirt with memory card at Exh. PW-4/X2 by my boss Mr. Aarnav Sharma on 20.03.2019/21.03.2019". It was submitted that there is no clarity as to who accessed the spy camera for setting the date and time and that the plaintiffs deliberately suppressed the fact that the said time and date can be easily changed at their end itself. It was submitted that there exists serious fallacies to the manner in which the whole private investigation has been carried out by Aarnav Sharma (a self Page 791 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined proclaimed private investigator) at the instance of the plaintiffs that too after the filing of the suit.
11.76 It was submitted that a Fresh Memory Card purchased from the market, upon being accessed by connecting it to a computer, it is completely blank and has no files found in it. The screenshots of contents of such a new Micro SD Card, purchased by the Defendants for the purpose of the demonstration that the said Micro SD Card is completely blank is produced before the Court.
11.77 Referring to the videos at Exh.PW- 2/1 placed on record by PW-2 before this Court, it was submitted that nowhere in the purported videos, PW-2 can be seen himself and the defendants vehemently question the Page 792 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined veracity of such an electronic record and further question that the said purported video was even recorded by PW-2 as claimed. It was therefore, submitted that the said video is clearly fabricated that has been fraudulently placed on record by the plaintiffs before this Court. 11.78 Thereafter reference was made to Para No. 5 of the Evidence by way of Affidavit of PW-2, wherein it is stated by him that "the machines comprised of various parts, including a vacuum pump located at the right bottom corner, which was used to apply vacuum and remove air bubbles while the rough diamonds were scanned." It was submitted that the claim itself is wrong and incorrect since the alleged device that is being claimed as a vacuum pump is Page 793 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined actually positioned and pointed/shown Bottom left corner of the lower chamber and therefore the argument of the plaintiff is clearly contradictory to the Affidavit of PW-2. It was submitted that the defendant's machines do not use Vacuum Pump in any manner whatsoever and highly object to this being Defendant's premises and/or machines as was also evident from the videos claimed to have been recorded by PW- 3 where PW-9 admitted the videos to be of the Plaintiff's machines. It was submitted that either the said device, being pointed to, has been placed deliberately by PW-2 himself or has been positioned in collusion with one or more people which is evident when none of the purported videos are able to clearly indicate whether or not the device being pointed out to is actually a Page 794 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined vacuum pump or some other device having a sticker on it or any other device portrayed to be a vacuum pump, especially in view of the fact that PW-2's machines lower chamber is the only chamber that is surprisingly open amongst all other machines, which he himself claims is always locked and only opened by the Supervisor for maintenance. Moreover, the said purported pump was planted by PW-2 for the purpose of taking a picture and filing false and fabricated evidence before this Court. It was submitted that on perusing DW-9's audio recording at Exh.DW9/X1, i.e. the conversation between DW-9 and Aarnav Sharma, it was established that phones were allowed inside the premises and that the testimony of PW-2 is subject to scrutiny since he has been clearly lying on oath in Page 795 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined collusion with the plaintiffs before this Court.
11.79 It was submitted by learned Senior Advocate Mr. Soparkar that the physical Vacuum Pump shown by the plaintiffs during the course of arguments is not even a part of the court records and any reference thereto including arguments made with respect to the so-called vacuum pump should not be taken into consideration. It was also submitted that plaintiffs have tried to misrepresent before the Court by stating that ex-employees would be made witnesses and filed a list of witnesses on 5.03.2019 including PW-2 though he was working on the relevant date. It was submitted that none of the video recordings relied upon by the plaintiffs justify the Page 796 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined existence of vacuum pump considering the cross examination of PW-2 and PW-3 vis-a- vis the averments made on oath in the affidavit filed by them.
11.80 Thereafter learned Senior Advocate Mr. Soparkar referring to cross examination of PW-2 PW-3 and PW-4 highlighted the contradictions that exist with regard to the background as to their inter-se relations. It was submitted that PW-2 is cousin of PW-3 as per question no.16 put to PW-2 and PW-3 introduced PW-2 to PW-4 over telephone as per answer to Q no.77 of the cross examination of PW-2. It was therefore, submitted that on one hand PW-2 states that he met PW-4 for the first time in the first week of February, 2019 as per answer to Q No.76 and on the other hand, Page 797 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined PW-2 in answer to Q no.79 states that he talked to PW-4 for the first time on telephone on 18th February, 2019. Thereafter it was pointed out that in the cross examination of PW-4 he stated that he met PW-2 in the first week of February, 2019. It was therefore, submitted that PW-2 was clearly tutored as it is manifested from his cross examination where he contradicts his own answers.
11.81 Thereafter reference was made to Q no.40 put to PW-2 where he answers that he came to Nepal with Desraj along with a team of 12 people who were introduced to Mr. Dinesh Shukla(PW-4) whereas in answers to Q 121 to 128 putforth to PW-4, he has denied that he had made any introduction. It was therefore, submitted that relation between PW-2 and PW-4 is doubtful.
Page 798 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.82 Reference was also made to answers to Q Nos.41,45,46,47,83 and 84 of the cross examination of PW-2 wherein he states that he got all the money from home and the amount was deposited in the account of "sir" whose name/details he claimed to be unaware of whereas in answer to Q No.128 putforth to PW-4, he has stated that all expenses were borne by Mr. Aarnav Sharma, the self claimed Private Investigator under whom PW-4 had recruited PW-2 and PW-3. Thereafter reference was made to answers to Q No.172-177 putforth to PW-4 in his cross examination wherein he has detailed with regard to handling of the purported camera enabled shirt and camera enabled spectacles wherein he has confused the entire narration of fact. Reference was also made Page 799 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to the response of the plaintiffs' counsel to the suggestion putforth by the counsel for the defendants during cross examination with regard to the answer given by PW-4. It was pointed out by the plaintiffs' counsel that reason for getting confused was natural during the cross examination of a witness if anxiety and ill health combine. It was therefore, submitted that the cross examination of the answers given by PW-4 with regard to handling of camera enabled shirt does not inspire confidence. 11.83 Learned Senior Advocate Mr.Soparkar thereafter referred to Q nos.71 and 72 of the cross examination of PW-2 wherein he has answered that he was trained at BRTS, Hirabagh, Surat which is in contradiction to Q Nos.197 to 201 of the cross Page 800 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined examination of PW-4 wherein PW-4 has stated that in answer to Q No.199 that he did not give any training to PW-2.
11.84 Learned Senior Advocate Mr. Soparkar thereafter referred to irregularities in the evidence by way of affidavit filed by PW-2 by pointing out that in paragraph no.18 of the affidavit of PW-2 it was stated that contents of his evidence by way of affidavit were read out to him in vernacular. However, in answer to Q No.5 and 6 of the cross examination it was stated that affidavit was not even made by PW-2 and he was simply read out the contents. It was further submitted that in paragraph no.2 of the affidavit, PW-2 has stated about his recruitment and training and premises where he purportedly worked at. However, in answer to Q No.28 putforth Page 801 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to him it was stated by him that he had no knowledge about as to which defendants were working on the A-2 floor of the defendant no.1 where PW-2 claimed to be working at. 11.85 Reference was also made to answers to Q Nos. 73,135,134 151, 152, 153 pertaining to employment in premises where PW-2 claimed to be working to demonstrate the discrepancies with respect to involvement of the security guard being Q Nos. 86 to 88.
11.86 It was thereafter submitted that in paragraph no.4 of the affidavit, PW-2 falsified by stating on hearsay basis that the machines used at the alleged premises of defendant no.1 were known as Galaxy machines which is contrary to the answer Page 802 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined given to question no.65 wherein he admits that he does not know whether they are galaxy machines or not and machines that have DBC were written on them. 11.87 Reference was made to answers to Q Nos.61 to 64 and 73 of the cross examination of PW-2 to point out contradictions made in the statement in paragraph no.2 of the affidavit of PW-2 to submit that he does not even know about the main activities of the diamond scanning process by sticking to the averments made in affidavit.
11.88 Learned Senior Advocate Mr. Soparkar thereafter summarized the contradictions between PW-2 and PW-4 and Page 803 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined misrepresentation made by PW-2 before the Court as under:
i) PW-2 in answer to Q No.79 stated that he met PW-4 for the first time on 18.02.2019 whereas PW-4 in answer to Q No.69 stated that he met PW-2 in the first week of February, 2019.
ii) PW-2 stated in paragraph no.5 of the affidavit that vacuum pump was located on right bottom corner whereas in paragraph no.11 he states that it is located on bottom right corner.
iii) In answer to Q No.40 PW-2 stated that 12 people who came were introduced by PW-4 and in answer to Q No.47, PW-2 stated that PW-4 introduced to Sir as well and in Page 804 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined answer to Q No.41, PW-2 stated that expenses were borne by the family. Whereas PW-4 in answer to Q No.120 has stated that he is not aware about details of Nepal. In answer to Q no.122, PW-4 has stated that he does not know the team leader and in answer to Q NO.123, PW-4 has stated that he did not introduce 12-13 people to PW-2 and in answer to Q No.128-129, PW-4 stated that expenses were borne by Mr. Arnav Sharma.
iv) PW-2 in answer to Q No.71 stated that he was trained by PW-4 at BRTS whereas in answer to Q NO.197-199 PW-4 stated that he did not give training to PW-2.
v) Referring to Q No.24, it was submitted that PW-2 at 21:12:06 in the video RECO0006, stated that he has completed 22 Page 805 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined days, whereas in Q No. 24, he stated that he joined on 19th February 2019 and left on 23rd March.
vi) Referring to Q Nos.65, 66 to 68 and 70, it was submitted that in Para No 4 of the Affidavit, he falsified by stating (that too hearsay) that the machines used at the alleged premises of defendant No. 1 were known as Galaxy Machines. However, in clear contradiction to the said statement, in Q. No. 65 he stated that he does not know whether they are galaxy machines or not and that the Machines have DBC written on them.
vii) Referring to Q No.90 to 95, it was submitted that in Q. 93, PW-2 was put forth with a question that he made a call immediately before handing over the mobile Page 806 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to Mr. Suraj and that he conveyed to him to tell Desraj that he has reached the company. PW-2/answered the same stating that it is wrong to suggest the same. PW-2 was then confronted with the video showing the instance as mentioned in Q. 93 and in Q. 94, PW-2 confirmed that it was his voice and that he went wrong.
viii) Referring to Q NO.136 to 145, it was submitted that PW-2 in his video had stated that he was drunk (RECO0004.mov at 20-55-
53) and when asked if he was drunk before entering the premises of defendant he said that he did not drink and further admitted in Q. 137 that he was lying. Thereafter, he further answered in Q. 144-145 stating the process of diamond cleaning which was completely tutored in nature. It was Page 807 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that in RECO0006 - 21:11:56 onwards, PW-2 comes back to his colleagues, and he refers that he talked to the supervisor that he is not going to work from tomorrow and to clear his dues.
However, in the purported video, there is absolutely no such instance of this communication with the so-called supervisor which clearly demonstrates the falsity of the Witness and of the Affidavit including the so-called evidence placed on record.
ix) Referring to Q 146 to 147, read with Q No.106, 107 and 108, it was submitted that PW-2 had refuted in earlier questions that there is no provision for locking device whereas later he stated that lock is at the lower part of the machine. This shows the veracity of PW-2 who has been doing nothing Page 808 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined but lying on oath time and again.
x) Referring to answer to Q. 152 to 153, it was submitted that PW-2 admitted that the statements made to his colleagues in the video regarding the job of operating embroidery machine was wrong/false. This shows the entire video is nothing but based on falsities and lies.
11.89 Learned Senior Advocate Mr. Soparkar thereafter referred to answer to Q No.33 and 35 of the memo of the plaint, to submit that stand of plaintiffs that private investigator PW-7 was engaged for adducing the presence of selenium by testing the diamonds scanned by the defendants and the analysis report from Jawaharlal Nehru University was placed on Page 809 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record. It was however submitted that the plaintiffs have failed to prove that the diamonds were procured/scanned through the defendants and did not place on record any invoices/receipts to that effect which clearly indicates the malafide intent and manner in which the evidence was procured and tampered by the plaintiffs. 11.90 Reference was made to the evidence of of PW-7 along with two reports filed by him at Exh.PW-7/1 and Exh.PW-7/2 which were issued by Advanced Instrumentation Research Facility of Jawaharlal Nehru University, Delhi vis-a-vis evidence of Court Witness CW-1 Dr. Ruchita Pal who was extensively questioned on such reports bringing out anomalies in the evidence led by the plaintiffs. Reference was made to answers to Q No.9 read with Q no. 12 and Q No.13 of Page 810 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the cross examination of PW-7 vis-a-vis Q No.19 to 28 as answers to Q No. 19 to 28 are in contradiction to Q No.11 and Q No.86 put to Dr. Ruchita Pal during her cross examination. Referring to such questions, it was submitted that PW-7 stated that he does not remember how much money was paid by him for getting report from Jawaharlal Nehru University with regard to 10 diamonds whereas Court Witness No.1 Dr. Ruchita Pal stated that receipts were generated by the office for submitting the diamonds and no amount was directly paid by PW-7 to her. 11.91 With regard to submission of diamond to defendant no.1 for inclusion scanning as stated in paragraph no.4 of the affidavit by PW-7. Reference was made to answer to question no. 30 to 36 of his cross examination to point out that Page 811 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined diamonds were not given to defendant no.1 as no receipt was given and Kachha copy referred to in answer to Q No.30 i.e. sheet of paper was returned to defendant no.1. He also in answer to Q No.36 that PW-7 has also stated that he does not remember the amount paid to defendant no.1 for scanning the diamond. Reference was also made to answer to question no.38 to 48 to point out falsity of the averments made in affidavit filed by PW-7. Thereafter reference was made to Q No.51 to 64 pertaining to the report obtained from Jawaharlal Nehru University. Referring to deposition of PW-7 it was submitted that defendants have filed an application under section 340 of the Code, 1973 against PW-7 which is required to be adjudicated. On the basis of answers given to Q Nos. 19 to 21 by Court Witness Page 812 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Dr. Ruchita Pal of Jawaharlal Nehru University whereby she has stated that she cannot confirm the date on which even the samples were analysed and did not answer the suggestion that report does not show presence of selenium on diamond. In answer to Q No.27, it was stated by her that there is no signature of persons/authority on the report but approval numbers on all the forms and receipt numbers is signed by the office members who issued the receipts. In answer to Q no.33, it was stated that receipt of CW-1/1 to 1/4 cannot be confirmed with regard to reports that form part of Exh.PW-7/1 and PW-7/2. In answer to Q No.37, it was stated by the Court Witness that institution and research based samples are taken by University for examination however, this is some exceptional analysis Page 813 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined which was required by PW-7 on urgent basis. 11.92 Reference was made to Q Nos. 41, 45, 42, 46 and 48 to highlight the contradictions of PW-7. Reference was also made to Q Nos. 50 to 58 of cross examination to highlight that only 10 diamonds were submitted whereas 20 should have come from PW-7. In answer to Q No.70 with regard to differences between two sets of reports being Exh.PW-7/1 and PW-7/2 it was stated that exactly the difference cannot be made as an expert as she was not part of the project and she simply analysed and handed over the reports on paid basis by the department.
11.93 Learned Senior Advocate Mr. Soparkar thereafter referred to Q nos. 72 to 81 of the cross examination of Court Page 814 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Witness Dr. Ruchita Pal to bring out the false case put forth by the plaintiffs through PW-7 with regard to submission of 10 diamonds whereas report refers to 20 diamonds submitted for analysis. 11.94 Learned Senior Advocate Mr. Soparkar thereafter referred to answer to Q nos.83 to 85 and Q No.90 to point out that report at Exh.PW-7/1 and PW-7/2 are of different sets altogether as it was stated by the Court Witness Dr. Ruchita Pal that both the reports are of 17th and 26th May, 2017 and in answer to Q No.84 the suggestion that which of the reports at Exh.PW-7/1 and Exh.PW-7/2 were compiled on 17th and which on 26th May, 2017, the said suggestion was answered in negative. Reference was also made to answer to Q nos. Page 815 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 91 to 99 pertaining to technical anomalies in the report at Exh.PW-7/1 and Exh.PW-7/2 and reference was made to Q No.106 of cross examination of Dr. Ruchita Pal to submit that no dipping in selenium/chemical was done or detected to demonstrate the misrepresentation done by PW-7. 11.95 Referring to cross examination of PW-7 and Court Witness Ruchita Pal, it was submitted that choice of selenium was not even the focus of the suit patent rather the same was the focus of 876 application which the plaintiffs filed around 1 and half years before the filing of the present suit and as of today, such application stands rejected thereby putting a rest to the entire concocted story with respect to the use of selenium being a ground for alleged infringement by the defendants of Page 816 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the suit patent. It was therefore, submitted that only element that Patent Examiner found to be having inventive step altogether incorrect, inventive step is the system including a device for withdrawal of gas bubbles from said material and therefore, plaintiffs' misrepresented the suit and never even explained in the plaint and intended to obtain an injunction based on proving that the defendants use selenium. It was therefore, submitted that the story putforth by PW-7 is not beleivable and results into abuse of process of law.
11.96 Learned Senior Advocate Mr. Soparkar thereafter submitted his arguments pertaining to Image Processing Software used by the defendants. Referring to Q No.260 of cross examination of DW-1 it was Page 817 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined submitted that DW-1 had stated that the impact of bubbles can be also nullified through image procession software that the Defendants use and for doing so, defendants use single and multiple scans of rough diamond and from the result of these multiple scans, the impact of bubbles can be reduced through the Image Processing Software. Thereafter, reference was made to answers to Qs.261-272, 276-279, 320-321, 400, 410-411 pertaining to the Image Processing Software Issue. It was submitted that the defendants vide Order dated 24.06 2022, placed on record Exh.DWI/X7 and Exh.DW1/X8 which is the image processing software & hasp key respectively (the permission of which was sought in lieu of Q. 400 of DW-1) before this court. The said pursis was made in context of Exh. 180 Page 818 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined filed by the defendants before this Court under Section 75(e) read with Order XXVI Rule 10A of the Code of Civil Procedure 1908.
11.97 Learned Senior Advocate thereafter made arguments pertaining to misrepresentations done by plaintiffs pertaining to video conference between PW-1 and DW-2 at Exh.PW-1/X5 to Exh.PW-1/X8. 11.98 It was submitted that the plaintiffs during their arguments before this Court were harping upon the Video Conference discussion between DW-2 and PW-1 (PW-1/X5 to XB) and had misrepresented before this Court that the defendants have allegedly admitted infringement. It was submitted that even otherwise, the said Page 819 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined purported evidence have not been pressed for and relied upon by the plaintiffs and therefore, same may be rejected by this Court.
11.99 It was submitted that no discussion on the infringement of patent took place in the said video at all, let alone any admission of any infringement and the discussion was initiated only by the plaintiffs and was always supposed to be without prejudice and hence such evidence should not be admitted by the Court. 11.100 It was further submitted that in the said video at Exh.PW-1/X5 at time stamp 24:36 minutes, DW-2 clearly stated that the presentation and the information shared with PW-1 is not to be misused in any Page 820 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined manner whatsoever and therefore, on account of the same, the said documents may not be admitted.
11.101 Learned Senior counsel thereafter made submissions with regard to the pleadings made by the defendants in the written statement at Exh.54 and submitted that it is not for the first time that the plaintiffs have attempted to initiate such false proceedings with a sole intent to harass the defendants herein and as back as 2009, the plaintiff filed a copyright infringement criminal complaint against the defendant No. 1 herein, however the same was dismissed and even upheld in Criminal Appeal No. 73 of 2012, by Surat District Court.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.102 Reference was thereafter made to Panchnama dated 31.07.2015 (CID) & 22.07.2016 (Customs)-te., (Mark 40/2-@Pg. 467 to 475 of Part 1) & (Mark 40/3 - @Pg. 476 to 479 of Part 1) and was submitted that it clearly outlines that the Plaintiffs have been making false allegations way before the filing of the suit and that no infringement was found by CID/Customs. The screenshots of the same were also produced before this Court. 11.103 Learned Senior Advocate thereafter referred to evidence led by Defendants' witnesses.
1) In support of his contention about non infringement and invalidity of suit patent, learned Senior Counsel referred to Para Page 822 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined No.10 to 14 and 17 of the evidence by way of affidavit of DW-1 and answers to Question Nos. 258 to 260, Q No.369, Q Nos.398 to 399, Q No.417, Q No.422, Q Nos.431 to 436 and Q No.444 of cross examination of DW-1.
2) Thereafter reference was made to para No.6 to 16, 19, 22 to 25 of the evidence by way of affidavit of DW-2 and answers to Question Nos. 180 to 182, Q Nos. 219 to 249, Q Nos.261 to 262 and Q No.266 of cross examination of DW-2.
3) Thereafter reference was made to para No.6 to 8 of the evidence by way of affidavit of DW-3 and answers to Question Nos. 124, 141, 146 to 150 of cross examination of DW-3.
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4) Thereafter reference was made to para No.7 to 13, 15 to 22 of the evidence by way of affidavit of DW-7 and answers to Question Nos.35, 36, 44 to 46, 81 to 85, 87, 90 to 92, 96 and 102 to 116 of cross examination of DW-7.
5) Reference was made to para No.3 of the evidence by way of affidavit of DW-15 and answers to Question Nos. 27 to 29,30 to 34, QR1 and QR2 of cross examination of DW-15.
6) In support of his contention about prior attempts made by the plaintiffs by initiating false proceedings against the defendants, learned Senior Counsel referred to para no.25 of the evidence by way of affidavit of DW-1 and answers to Q No.288 to 290 of the cross examination of DW-1. Page 824 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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7) Reference was made to para no.2 of the evidence by way of affidavit of DW-2 and answer to Q No.260 of the cross examination of DW-2.
8) Reference was made to answers to Q No.135 and 136 of the cross examination of DW-4.
9) Reference was made to answers to Q No.304 to 317 of the cross examination of DW-1.
10) Reference was made to para no.3 and 4 of the evidence by way of affidavit of DW-10 and answer to Q No.37 of the cross examination of DW-10.
11.104 Learned Senior Advocate Mr. Soparkar thereafter referred to evidence led by the Page 825 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants pertaining to Image Processing Software.
11.105 Learned Senior Advocate Mr. Soparkar thereafter made his arguments pertaining to authority letter issue raised by the plaintiffs. It was submitted that the contention of the plaintiffs is that there is no authority in favor of Mr. Dhaval Diyora (Defendant No. 11) to represent all the defendants in the present suit and that on the basis of the same, it is the stand of the plaintiffs that the Written Statement should be allegedly rejected since there is allegedly no authority letter in favor of Mr. Dhaval Diyora to verify the Written Statement/Pleadings on behalf of all the Defendants.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.106 To counter such an argument, reliance was placed on the following documents insofar as Defendant No. 1-10 are concerned:
(i) "Authorization Letter' dated 08.09.2017 by Defendant Nos. 1 to 10 in favor of Dhaval Diyora (Mark 66/3-Pg. 1827 to 1828 of Part 2)
(ii) Board Resolution by Bhanderi Trendz India Pvt. Ltd. (Defendant No. 4) in favour of Nilesh Kothiya (Mark 66/1-Pg. 1825 of Part 2)
(iii) Board Resolution of Diyora Diamond Pvt Ltd (Defendant No. 5) in favor of Dhaval Diyora dated 03.07.2017 (Mark 66/2-
Pg. 1826 of Part 2) Page 827 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(iv) Defendant No. 13 & 14 (Alpeshbhai Donga & Rakesh Pansuriya in person entered the Witness Box as Directors of Defendant No. 12) 11.107 Referring to above documents it was submitted that the defendants have duly placed on record the Authority Letter on behalf of Defendant No. 1 to 10 in favor of Defendant No. 11.
11.108 It was submitted that the plaintiffs in the present suit pending before this Court has taken a hyper technical objection that Defendant Nos. 1 to 10 ought to have signed an independent authority letter on their respective company/proprietorship Letter Head and that Page 828 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the Authority Letter dated 08.09.2017 should be allegedly discarded by this Court, based on which the Written Statement too, should be allegedly rejected by this Court. It was submitted that such an objection raised by the plaintiffs is nothing but an abuse of law and as such, the said objections are nothing, but hyper technical procedural objections solely made with an intent to prejudice the Defendants herein who have exhaustively led evidence on oath before this Court.
11.109 Referring to the list of Defendants in Memo of Parties who filed their Evidence by of Affidavit on 26.03.2019, it was submitted that all the witnesses who are made party to the present suit have entered the witness box and as such the question Page 829 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pertaining to Authority Letter/ Authorization to file the Written Statement does not arise. It was submitted that this shows the manner in which the plaintiffs are trying to mislead this Court at this final stage of the proceedings by raising such hyper technical objections knowing very well that the same does not stand on legible grounds. It was therefore, submitted that the said objections pertaining to the Authority Letter be rejected by this Court 11.110 In support of submission on the Authority issue, reliance was placed on the decision in case of Grafitek International vs. K.K. Kaura & Ors. reported in 96 (2002) DLT 385. Reliance was also placed on decision in case of Uday Shankar Triyar Page 830 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined vs. Ram Kalewar Prasad Singh & Anr. reported in (2006) 1 SCC 75. Reliance was also placed on decision in case of United Bank of India vs. Naresh Kumar & Ors. reported in (1996) 6 SCC 660. Rejoinder on behalf of the plaintiffs in relation to documents sought to be relied upon by the defendants:
11.111 Learned Senior Advocate Mr. Oza for the plaintiffs submitted that the admissibility, mode, custody and correctness, relevancy, evidentiary value etc. of all the documents which were produced by the defendants at the time of filing the written statement on behalf of defendant Nos. 1 to 3 & 6 to 11 and the written statement filed on behalf of the defendants Nos. 4 & 5 along with the Page 831 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavits of evidence, were objected to by the plaintiffs in the affidavit of admission and denial dated 22.01.2019 as well as during the cross-examination of DW-
1 on 13.05.2019 at at Exhibit 85. It was submitted that the plaintiffs reserved the right to submit all the issues with regard to admissibility of evidence of the documents sought to be relied upon by the defendants and accordingly the same are argued during the course of final hearing of the suit. It was submitted that the documents listed under section 65B Certificates of the Evidence Act of defendant nos. 1,2,7 and 9 are concerned, same is not as per the requirements prescribed under section 65B of the Evidence Act and therefore, none of the documents filed on behalf of the defendants Page 832 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined have been proved in accordance with law and as such, no reliance can be placed by the defendants on any of the said documents.
11.112 Learned Senior Advocate Mr. Oza thereafter while referring to the documents placed on record by DW-1 along with the written statement and affidavit in lieu of examination.
11.113 With regard to Board Resolution of Diyora Diamonds Pvt. Ltd., it was submitted that the said document authorises DW-1 on behalf of defendant no.5 to appear in the proceedings is not a valid document as the same does not bear the signature of a Company Secretary nor it has been submitted on the letter head of the company.Page 833 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.114 With regard to authorisation letter by defendant nos. 1 to 10 to appoint DW-1 as authorised representative was also objected as none of the defendants produced a valid board resolution or authority letter on their letter head and or under the signature of appropriate person. It was therefore, submitted that the authorisation letter is required to be ignored as it also contains incorrect information about the age of DW-1. 11.115 With regard to partnership agreement at Mark 53/1 placed on record, it was objected with reference to genuineness of the said document by referring to Q No.68 in cross examination of DW-1 in which he has deposed that defendant no.1 was incorporated in late 2013 or beginning of 2014 whereas partnership agreement referred Page 834 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to date of incorporation in August 2014. It was therefore, submitted that the partnership deed is forged and fabricated and should not be considered by the Court. 11.116 With regard to Certificate of incorporation of defendant no.5, it was submitted that though the said document is purported to be in the public domain, defendants have failed to produce any certified copy as per sections 76 and 77 of the Evidence Act and as a result of the same no presumption of genuineness of the said document or its contents can be considered by the Court.
11.117 Objection was also raised with regard to invoice for purchasing the assembly parts purchased by defendant no.3 produced at mark 53/4 as there is no Page 835 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined account statement, proof of payment, proof of import, custom report etc. placed on record to substantiate that said document was generated by purported entity called Optic Focus on the defendants towards payment for procuring any parts as alleged as per affidavit of DW-1. Reference was also made to Q nos. 353 to 357 in the cross examination of DW-1 which demonstrate that answers given by DW-1 were fabricated and he was deposing falsely.
11.118 With regard to invoice raised by the defendant no.1 for rendering services to customers placed at Mark 53/5, it was submitted that though in written statement it was submitted that invoices was raised by defendant No. 3 to its customers for rendering such services, however, in the list of documents the defendants have Page 836 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined stated that the invoice was raised by defendant No. 1 and therefore, the invoice is forged and fabricated.
11.119 It was also submitted that the document at Mark 53/5 is not proved as same is only mentioned in the affidavit of DW-1 inspite of the fact that with regard to the genuineness of the said document, admissibility, mode, custody and correctness of the contents were objected by the plaintiffs in the affidavit of admission and denial dated 22.01.2019 and also before commencement of the cross- examination of DW-1 on 13.05.2019. 11.120 It was further pointed out that the document at Mark 53/5 is not proved as per section 65B of the Evidence Act as no Page 837 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined details or particulars of who generated the said invoice are provided. It was pointed out that particulars stated in certificate of DW-1 under section 65B of the Evidence Act provides false information with regard to the printer as well as Apple MacBook Air and model number as available on the website.
11.121 With regard to Patent Application No. 876/CHENT/2008 at Mark 53/14, it was submitted that same was objected by the plaintiffs as DW-1 in answer to Q No. 434 in his cross examination could not explain any aspect in relation to said document. It was submitted that Patent Application No.876 is with respect to method adopted by the Patent in using Selenium as an immersion medium and revolves around the Page 838 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined usage of Selenium and such application is not relevant to this proceeding as the proceedings pertains to the infringement of the Suit Patent which contains an apparatus and a method which are not restricted to the use of Selenium at all and in fact pertain to an entirely different and novel invention.
11.122 With regard to US Patent No. 4,152, 069 at Mark 85/1, it was submitted that the objections were raised before commencement of cross examination of DW-1 as the said document is in relation to Patent granted in US which is not relevant in India. It was submitted that while the said document is in public domain, defendants have failed to produce any certified copy as per Page 839 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined sections 76 and 77 of the Evidence Act,1872.
11.123 Similarly for US Patent No. 4,049,350 at Mark 85/2 , similar objections were raised for User Guide and Declaration of Sarine Technologies Ltd at Mark 85/3 were also objected as certificates under section 65B was filed at very belated stage on 29.07.2022 by DW-1 and said document is in relation to patent granted in Europe which has no relevance in India. 11.124 The opinion of Anand and Anand given to defendant No.3 at Mark 53/9 and Prior Art Search Report at Mark 85/4 are also objected as neither person who has authored the document at Mark 53/9 entered into witness box nor any corroborative Page 840 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined evidence led by the defendants. It was submitted that Prior Art Search Report at Mark 85/4 is prepared by law firm who are counsel of the defendants in this proceeding and therefore, such opinion should not be admissible. The objections were raised with regard to Covering Page of the Revocation Petition filed by Defendant No. 3 at Mark Mark 53/6 and Prior Arts cited in the Revocation Petition filed by the defendant No. 3 at Mark 53/7 as no certified copies were produced on record. Thereafter, objections were raised against Panchnama Report dated 31.07.2015 at Mark 40/2 and Panchanama Report dated 22.07.2016 at Mark 40/3 on the ground that defendants failed to place the said documents even at the time of submitting affidavit of the evidence and the said documents were filed Page 841 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the defendants along with the written statement to the application filed by the plaintiffs under Order VI Rule 17 of the Code of Civil Procedure, 1908 and therefore, cannot be considered as part of the pleadings or evidence led by the defendants.
11.125 With regard to copy of invoices for rendering services for diamond scanning machines at Mark 140/2 and invoices purportedly for sale of vacuum pumps by the defendants to third parties at Mark 140/3, it was submitted that false statements were made by the defendants that they do not use vacuum pumps, though they were sold to various customers and the plaintiffs also filed an application under section 340 of the Code, 1973 at Exh.139. It was Page 842 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pointed out that DW-1 in the cross examination in answer to Q no. 316 admitted that there is a mistake in para 25 as he treated defendant No. 5 and M/s Diyora Diamond, one and the same entity and therefore, such document is required to be discarded as the said partnership firm is not a party in this proceeding. It was therefore, submitted that DW-1 tried to mislead and misrepresent before this Court. 11.126 Objection was also raised with regard to certificate 65B of the Evidence Act without disclosing the correct fact of printer and computer used for scanning of the document.
11.127 With regard to certificate of Dilip Paresh & Co., Chartered Accountants for Page 843 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined verification of purchase and physical sale at defendants premises at Mark 140/4, it was submitted that the said certificate is forged and fabricated and a self-created document with an attempt to corroborate the stand of the defendants that defendant No.5 provides repair and maintenance services whereas in the cross examination of DW-1, it is stated that defendant No. 5 does not provide repair and maintenance services. It was submitted that said certificate in relation to vacuum pump sold by defendant no.5 does not contain details of entity to whom vacuum pump were sold or the date on which this sale occurred and cost at which vacuum pumps were sold by defendant no.5. 11.128 With regard to affidavit of Mr. Jayrajbhai Jodhani at Mark 143/1 and Page 844 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavit of Sanjay Dongam at Mark 143/2, it was submitted that Jayraj stepped into the witness box as one of the witnesses on behalf of the DW-10 and he failed to establish the statements made by him in affidavit dated 20.09.2018 at Mar. 143/1 as he has deposed in answer to Q No.25 to 29 that affidavit was sent to him by DW-1 and he signed such affidavit on the basis of trust as he cannot read, write or understand English and such affidavit was prepared by lawyer and he has no personal knowledge of the same. Similarly in affidavit of Sanjay Dongam at Mark 143/2, it was submitted that same is not corroborated by deposition of deponent of the said affidavit as he was not called as witness by the defendants. Page 845 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.129 With regard to purported copy of an e-mail communication at Mark 143/3, it was submitted that email dated e-mail dated 15.09.2018 sent by one person named Mr. Kevin Gonsalvez to Mr. Tarun Khurana who is the counsel for the defendants is irrelevant and inconsequential to this proceedings as the contents thereof were not proved by the defendants as the same is not corroborated with any other evidence nor sender of the email has stepped into witness box.
11.130 With regard to affidavit of N M Diam LLP at Mark 143/4 it was objected that same is also not corroborated by deposition of deponent Mr. Mithun S Shah. It was submitted that the defendants filed this affidavit just to show that the prior Page 846 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined affidavit dated 16.07.2018 of M/s N M Diam LLP filed by the plaintiffs in Civil Application No. 1 of 2018. It was submitted that the prior affidavit was filed by the plaintiffs to demonstrate that defendant No. 5 never provided any services to N M Diam LLP, and therefore, subsequent affidavit of N M Diam LLP dated 30.08.2018 stating that defendant no.5 did provide them the services and the prior affidavit was false. However, it was submitted by DW- 1 in his cross-examination that he made a mistake in briefing his advocate about the services provided by DW-5 instead of M/s Diyora Diamond a partnership firm. 11.131 Objection was also raised with regard to certificate under Section 65B of the Evidence Act of Mr. Tarun Khurana at Page 847 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Mark 143/5 on the ground that particulars mentioned therein are not true and correct and same is not proved.
11.132 With regard to police report obtained by defendants under the Right to Information Act, 2005 at Mark 85/6 it was submitted that application filed by the defendants at Exh.166 before this court summoning Mr. B. M. Karamata, Police Sub- Inspector, Kapodra Police Station, Surat has been rejected vide order dated 04.10.2021 and therefore, this document ought not to be considered. 11.133 With regard to the documents produced by the defendants at DW1/X1, DW1/X2, DWI/X3, DW1/X4 and DW1/X5, which were produced at the instance of the Page 848 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiffs by the defendants, same are also disputed as such documents are contrary to the provision of section 65B of the Evidence Act and defendants did not provide pen drive containing image processing software to the plaintiffs and have also failed to prove the same independently. It was therefore, submitted that in absence of any pleadings such documents are required to be rejected as it would amount to back door attempt by the defendants to achieve indirectly which they are prevented from achieving directly.
11.134 Learned Senior Advocate Mr. Oza thereafter referred to the documents placed on record by DW-3 along with the written statement and affidavit in lieu of examination.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.135 With regard to copy of invoices from Deep Engravers at Mark 86/1, it was submitted that DW-3 has produced the said document to corroborate the statement that defendant no.3 acquired the technology/machines developed by defendant no.10 and made some improvements/ refinements in the said machines. However, DW-3 has taken a contrary stand during the cross examination as in answer to Q No.54 a statement is made that the final machines were ready for use right from 2014 onwards and thereafter further refinements were done but in answer to Q No.127, it was stated that from 2013, defendant no.3 put the purported diamond scanning machines developed by defendant no.10 to commercial use. It was therefore, submitted that stand Page 850 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the defendants in relation to diamond scanning machines is false and fabricated. The Objections were also raised with regard to Board Resolution dated 3.07.2017 of defendant no.4 at Mark 66/1, partnership agreement for defendant no.2 at Mark 53/2 and Certificate of Incorporation of defendant no.4 at Mark 56/1 produced on record by the DW-5 on the ground that these documents are not valid documents and not relate to this proceeding. 11.136 Considering the above submissions made by both the sides and considering the videos played during the course of hearing, the camera enabled shirt and camera enabled spectacles placed on record do not contain the videos purportedly recorded at the relevant date by PW-2 and PW-3. As such Page 851 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined videos suffer from various discrepancies pointed out by the defendants for which there is no answer on explanation given by the plaintiffs. The objections raised by the defendants are sustained as discrepancies pointed out by learned advocate for the defendants has remained uncontroverted and the same is not again repeated. Therefore, the objections raised by the defendants with regard to the veracity of the videos recorded through camera enabled shirt and camera enabled spectacles are not trustworthy and therefore, the contents of the same are not admitted.
11.137 In view of above, the documentary evidence placed on record by the defendants along with their oral evidence and objected Page 852 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by the plaintiffs as stated here in above, is not discussed in detail as the same would be an academic exercise. Analysis of Evidence for counter claim 11.138 The defendants have filed counter claim for revocation of the suit patent under section 64 (1)(e) and (f) of the Patent Act to contend that the invention so far claimed by the plaintiffs in any claim of the complete specification is obvious and does not involve any inventive steps having regard to what was publicly known or publicly used in India before the priority date of the claim. It was contended that there was no novelty in the invention so far, as claimed by the plaintiffs. Page 853 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.139 Learned Advocate Mr. Khurana exhaustively referred to Prior Art D1 to D8 and compared the suit patent with each of the Prior Art which is narrated exhaustively in Part-IX of this order. Reliance in this regard was also placed upon the evidences of PW-5, PW-6 and PW-9. 11.140 Reference was made to evidence of PW-5 Prof. Oded Navon at Exh.78 who has filed affidavit in relation to analysis of the suit patent, PW-6 Shashank Bhatia Exh.79 who has filed his affidavit to provide his opinion and testify on behalf of the plaintiffs in relation to analysis of the suit patent granted in India in respect of plaintiffs' invention pertaining to determination of the location of inclusion in gemstones and PW-9 Ran Ziskind Exh.77 who was General Manager with Page 854 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined plaintiff no.1 company who was one of the inventors of Galaxy family of machines for which patent was granted to plaintiff no.1. These witnesses are cross examined at length by the defendants. Whereas learned advocate Mr. Grover for the plaintiffs referred to each part of the apparatus contending that each part of the apparatus is part of the suit patent and the suit patent is given to the apparatus and not to the device mentioned in the suit patent for the purpose of removing the gas bubbles form the immersion material. It was demonstrated by learned advocates of both the sides by contending that on one hand the suit patent only pertains to invention of using the device for removing gas bubbles by vacuum which is obvious and there is no inventive steps involved Page 855 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined therein whereas on the other hand the plaintiffs contended that the design of entire apparatus is patented which includes the vacuum pump as device to remove the gas bubbles from the immersion material. It was contended by the plaintiffs that claim nos.1 and 18 are independent claims and both the claims pertain to the apparatus invented by plaintiff no.1 to which the suit patent is granted world wide. 11.141 Both the learned advocates exhaustively dealt with each part of the suit patent either to distinguish it from the Prior Arts or to compare it and finding no difference with the Prior Arts in order to canvas for revocation of the suit patent by the defendants and on plaintiffs' side to submit that the suit patent is granted on the basis of invention of the apparatus Page 856 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for evolution of the methodology for scanning the rough diamond. 11.142 Submissions of both the learned advocates are dealt with exhaustively in Part IX and X of this order and therefore, the same are not repeated herein for sake of brevity and only analysis of contentions are summarized as under:
11.143 Contentions of the defendants for revocation of the suit patent are as under:
1) Reference was made to Patent Application No.876/2008 to demonstrate that each and every single imitation of the claim of the suit patent were already admittedly disclosed by the plaintiffs in the said application which was filed about one and half years prior to filing of the Page 857 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined suit patent. Therefore, there is lack of novelty in the suit patent.
2) Comparing the apparatus described in Application No.876/2008 and the suit patent, it was contended that the suit patent cannot be granted for the same invention which is already disclosed as per section 46 of the Act.
3) It was contended that the suit patent cannot be an invention in view of disclosure already made of the same apparatus because features of taking measures for reducing the presence within the emergent material of any substance other than the inclusions having third refractive index is not disclosed nor is obvious in view of the cited Prior Arts, is Page 858 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not true in view of Patent Application No.876/2008.
4) Reference was made to the Patent Application where only special technical feature was reduction of presence of any substance different from the gemstone and inclusion in the material in which gemstone is disposed. It was therefore, contended that as per PCT Rule 13.2, such special feature has to be the then other than the Prior Arts.
5) It was contended that as per the query raised by the Controller of Patent and Design, the Suit Patent was modified to include "system including a device for withdrawal of gas bubbles from the said material". Therefore, there is no novelty apart from this element in the suit patent.Page 859 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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6) Comparison of the apparatus of the suit patent with that of Prior Art D1 was made to demonstrate that except the system or device to remove the gas bubbles, all other claim elements are admittedly disclosed in Prior Art D1.
7) It was submitted that ultrasonic transmitter in Prior Art D1 is capable of removing the gas bubbles and therefore, there is no inventive steps involved in the suit patent. Reference was made to page-33 of the Suit Patent application by using similar method to remove the bubbles.
8) On detail mapping of the comparison of suit patent with respect to Prior Art D1, it was contended that except the device to remove the gas bubbles, all the functions Page 860 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the suit patent are already being done by Prior Art D1 and therefore, there is no inventive step taken by the plaintiffs.
9) Reference was also made to Prior Art D2 to D8 to point out that all the elements of the suit patent are present in one or other form in these Prior Arts by describing all the Prior Arts from D2 to D8 exhaustively. It was therefore, submitted that there is no independent claim so as to evidence novelty and/or inventive steps in the suit patent.
10) With regard to the claim of the plaintiffs that no Patent Application was being filed after Prior Art D1 was patented before 30 years, it was contended that there are two to three technologies which Page 861 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined are used for internal inclusion detection in a rough diamond.
11) The claim of the plaintiffs that apparatus became viable for commercialisation was also challenged as such apparatus does not fulfill the bar of novelty and inventive step as regard patentability requirements are concerned.
12) It was contended that the suit patent does not meet the criteria of the test of obviousness as using the vacuum pump for removal of gas bubbles is an obvious knowledge and therefore, suit patent cannot be said to be an invention which is not obvious to the person skilled in the art. Reference was made to the deposition of PW- 6 to contend that PW-6 admitted and explained the construction of scope of Page 862 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined element of claim element of independent claim no.1 in answer to question nos. 102 to 107 of his cross examination.
13) It was contended that what is not claimed cannot be disclaimed with reference to the contention of the plaintiffs in relation to Prior Art D1 in which the subject matter which is not claimed cannot be looked into during the validity analysis of the suit patent as no objective boundary would be defined for the suit patent in any manner whatsoever.
14) It was contended that differences pointed out by the plaintiffs between the suit patent and Prior Art D1 features are admitted being within the scope of the claims of the patent then such features Page 863 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined must be laid out and also considered during the infringement analysis.
15) It was contended that the differences pointed out by the plaintiffs between the suit patent and Prior Art D1 should also be considered while assessing infringement and the defendants should be held as non infringing if the apparatus used by the defendants do not have such differentiating element as pointed out by the plaintiffs in the suit patent like illuminating at two points whereas Prior Art D1 illuminates at one point etc.
16) Similarly, it was contended that claim of the plaintiffs that novelty of suit patent lies in generation of three dimensional image of inclusion, it was contended that such claim is not made in Page 864 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the suit patent claim and therefore, it could not have been relied upon.
17) It was contended that CEO of the plaintiffs in fact submitted to EP Office on 06.07.2007 while describing their own gemstone planning products have demonstrated that generation of 3D images of inclusions was well-known in the Prior Art. It was therefore, submitted that inclusion generation of 3D image is not a novelty or an inventive step. Reliance was placed on affidavit of DW-7 and DW-15 to demonstrate that the suit patent is invalid in view of lack of novelty and inventive steps as compared to Prior Arts D1 to D8.
18) It was contended that the doctrine of pith and marrow is required to be invoked vis-a-vis the Prior Art which Page 865 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined addresses the same technical problem for removal of inclusion from the gemstone providing the same solution as claimed therein and therefore, the suit patent is required to be revoked.
19) It was contended that elements such as 'Port', 'Heaters for immersion medium' and a 'Cabin' as part of Figure No.2 of the suit patent are not even mentioned in the independent claims and therefore, such elements cannot be considered during evaluation of validity of suit patent as contended by the plaintiffs. The plaintiffs therefore, could not have referred to such elements which are not part of the independent claim nos.1 and 18 of the suit patent.
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20) It was contended the elements of suit patent are present in Prior Art D1 to D8 in one form or another, therefore, there is no specific inventive steps involved in the apparatus of the plaintiffs. It was submitted that the efforts made by the plaintiffs to differentiate different parts of apparatus of the suit patent with that of other Prior Art is an exercise in futility as the ultimate objective of the Prior Arts and the suit patent is to remove the inclusions in the gemstone.
21) It was contended that the distinction between Prior Arts and suit patent on the ground that Prior Art D1 was for the polished diamond and the suit patent is for rough diamond is also not true and correct because Prior Art D1 clearly refers to detection of inclusion in Page 867 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined gemstone that would also include rough gemstone. It was therefore, contended that independent claim nos. 1 and 18 are required to be invalidated as no meaning or meaningful interpretation can be retained by holding one or more independent claims as valid.
11.144 Contentions of the plaintiffs for non revocation of the suit patent are as under:
1) Referring to Figure of the apparatus of the suit patent, it was contended that entire apparatus is totally different to the apparatus of the suit patent 876 which is heavily relied upon by the defendants.
2) It was explained that Claim no. 1 and Claim no. 18 of the suit patent are also Page 868 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined totally different than claim no.1 of the Suit Patent Application No. 876/2008.
3) It was demonstrated that holder cabin, compartment, sealed container, port, opening in compartment and heaters are absent in Suit Patent No.876/2008.
4) It was contended that Suit Patent No.876/2008 is having different methodology for determining the inclusions in rough gemstone and it does not teach taking measures for reducing presence within emergent material of any substance other than inclusions having a third refractive index.
5) It was contended that Claim Nos. 19 to 39 of the suit patent are also not disclosed in Patent Application Page 869 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined No.876/2008. It was therefore, submitted that the suit patent is totally a novelty as an apparatus as a whole for evolution of methodology of removal of inclusions in rough gemstones and it is an unique invention for which the patent is registered.
6) It was also contended that different patents have overlapping claims however, the suit patent is having altogether different methodology invented by plaintiff no.1 than earlier Suit Patent No. 876 as the suit patent is granted for invention made by the plaintiffs with regard to device which reduces the gas bubbles and the entire apparatus provides for detection of all the inclusions in gemstone. Page 870 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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7) Comparison with Prior Art D1 and suit patent was made exhaustively and it was demonstrated that Prior Art D1 is not having the components of apparatus of the suit patent which are present in the apparatus of the suit patent. It was contended that suit patent is not granted only to the system or device to remove the gas bubbles in the immersion material but it is granted to the entire apparatus.
8) Comparison of each part of Prior Art D1 with that of the suit patent was made to contend that the suit patent is for the apparatus invented by the plaintiffs and components of apparatus are absent in Prior Art D1 so as to reduce the presence of any inclusion within the material or any substance other than the inclusion for which Prior Art D1 is silent on the system. Page 871 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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9) It was contended that the entire apparatus of the suit patent is different than that of Prior Art D1 which does not teach the method and apparatus as claimed in the suit patent nor does it identify the position and size of gemstones as claimed in the suit patent.
10) It was contended that in Prior Art D1, various parts of the suit patent like cabin, port, immersion medium, holder, illuminator, detector (camera), heaters are absent.
11) It was contended that Prior Art D1 depends upon the process of scanning by the signals captured through photosensitive device whereas in suit patent, the signals are captured through a high-resolution Page 872 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined camera to acquire images of the gemstone and produce 3D geometry of the gemstone.
12) It was contended that Prior Art D1 does not include immersion material which is volatile as its container is not sealed. Prior Art D1 is silent about storing and using the signals intercepted by the detector, nor does it disclose about reducing the presence of gas bubbles and removing any contamination without creating the bubbles. It was therefore, contended that Prior Art D1 is totally different than the apparatus invented by plaintiff no.1 for which the suit patent is granted.
13) Similarly with other Prior Art D2 to D8, it was demonstrated that the suit patent granted to the apparatus involves novelty and inventive steps and cannot be Page 873 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined said to be obvious to the person skilled in art by any manner whatsoever.
14) It was contended that examiner in patent office has identified the elements in the Prior Art and compared the same with the claims of the suit patent from the point of view of person skilled in the art and on the basis of technical advancement over the Prior art on the priority date of application granted the suit patent. It was therefore, contended that the suit patent is not required to be revoked in view of novelty and inventive steps demonstrated by the difference between the suit patent and Prior Arts D1 to D8 relied upon by the defendants.
15) It was contended that inventive steps in the suit patent pertains to the Page 874 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ability to determine the exact three dimensional location, position and size of the inclusion which can be extremely small within the rough/irregular or polished gemstone in a single scanning operation.
16) It was contended that each component of the apparatus is novel in nature as compared to Prior Arts D1 to D8 including the immersion material.
11.145 Considering the above rival contentions, it would be germane to refer to the observations of the Controller of Patent who has granted the patent to the plaintiffs after considering the objections which are raised by the defendants during the course of patent proceedings:
"ANALYSIS:Page 875 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined In view of the discussions/ submissions above I opine that the opponent could not establish any of the issues on Patentability rather during hearing opponent acknowledged the patentability of the instant application, further opponent main concern was regarding over exposure of selenium in claims 39-42 which applicant has amended by giving safe use of selenium as limitations in claims along with a disclaimer for safe use of selenium. Further on objections raised in hearing notice dated 24/07/2015 I opine that prior art does not disclose "Apparatus which takes measures for reducing the presence within its immersion material of any substance other than the inclusions, having a third refractive index, said measures including withdrawal of gas bubbles from said material and determining the position of the inclusions in gemstone in all 3 coordinates by illuminating and imaging the entire gemstone"
DECISION: All issues as stated above, the opponent could not establish any of the issues and therefore I dismiss the instant Page 876 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined pregnant opposition with no cost and further objections raised vide hearing notice dated 24/07/2015 has been met and I therefore order to grant the Patent application No.1606/MUMNP/2009 with the amended claims 1-39 filed on 01/09/2015 annexed in schedule I and further processing of the action of grant is to be taken immediately."
11.146 On perusal of the above analysis of Controller of Patent and Design while granting the suit patent, it is clear that the suit patent is granted to the apparatus invented by the plaintiff no.1 and is distinguished than the Prior Art mainly D1 US Patent on the ground that the apparatus invented by the plaintiff no.1 for evolution of methodology for detecting the inclusions in the rough gemstone takes measure for reducing the presence Page 877 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined within its immersion material of any substance other than the inclusion having a third refractive index, and such measures including system or device for withdrawal of gas bubbles from the said material so as to determine the position of inclusions in gemstone in all three coordinates by illuminating and imaging the entire gemstone. From the above contentions of the defendants for revocation and plaintiffs for non revocation of the suit patent, it is clear that analysis done by the Controller of Patent and Design while granting the suit patent, the opinion rendered for distinguishing the suit patent from the prior arts is justified as none of the prior arts include a system or device to remove Page 878 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the gas bubble from the immersion material. Learned advocate for the defendants tried to point out that ultrasonic light used in prior art D1- US patent is equivalent to device used to remove gas bubble. It was also contended that using vacuum pump is obvious for removing the gas bubbles from the immersion material as all other aspects of the apparatus invented by the plaintiffs are matching with prior art D1 to D8 in one manner or another and therefore, there is no inventive step or novelty so as to grant the suit patent to the apparatus invented by the plaintiff no.1. 11.147 However, as per section 2(1) (ja) of the Act "inventive steps" means Page 879 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a feature of an invention that involve technical advance as compared to the existing knowledge and/or having economic significance or both and that makes invention not obvious to a person skilled in the art, as the examiner of the patent office has identified the element in the prior art and has compared the same with the claim in question from the point of a view of a person skilled in the art. Both the learned advocates have demonstrated each feature of the apparatus as compared to the prior arts to drive home their respective claim of revocation vis a vis non revocation of the suit patent. Comparing both the suit patent with the prior arts as demonstrated by learned advocates and Page 880 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as per the analysis of the Controller of Patent and Design, it cannot be said that the apparatus invented by the plaintiff no.1 does not demonstrate technical advancement over the prior arts on the priority date of application. Considering the testimony of expert witnesses examined by the plaintiffs, the apparatus for which the suit patent is granted clearly identifies the inventive concept embodied therein, identifying the differences between the prior arts and the apparatus invented to which a normally skilled and unimaginative in the art at the priority date would not constitute steps that would have been obvious to skilled man without any knowledge of the alleged invention. Page 881 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined From the analysis done by the both the learned advocates, it is clear that underline inventive concept in the apparatus for which the suit patent is granted, pertains to the ability to determine the exact three dimensional location, position and size of the inclusions within a rough gemstone in a single scanning operation. Independent Claim nos. 1 and 18 of the suit patent achieves the inventive steps using the apparatus invented so as to render specific functions as claimed in method claims no.18 to 39 in the suit patent. Therefore, each component of the apparatus is inventive over similar component existing in any other prior arts.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 11.148 The efforts made on the side of the defendants to compare the component of the apparatus taken individually with that of the prior arts cannot be accepted to be taken on standalone as each and every component of apparatus of the suit patent contributes to achieve the invention of the plaintiff no.1 to determine the exact three dimensional location etc. of inclusions in the rough gemstone.
11.149 Similarly the novel features of the suit patent have been elaborately explained by the plaintiffs in their submissions to the effect that none of the prior arts has novel feature of using vacuum methodology which would meet the provision of section 2(1)(ja) Page 883 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the Act which provides that invention means a new product or the process involving an inventive step capable of industrial application. 11.150 As held by the decision of Biswanath Prasad Radhey Sham vs. Hindustran Metal Industries Manu/SC/0255/1978 relied upon by the defendants to give an effective meaning of each claim, however the specification and the claims must be looked and construed together as done by the Controller of Patent and Design so as to grant the suit patent to the apparatus and not granting patent to the claims or device used by the plaintiffs in the apparatus which distinguishes the entire methodology Page 884 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined used by the apparatus from other prior arts for the purpose of determining the three dimensional inclusions in the rough gemstone.
11.151 Therefore, considering the suit patent granted to the apparatus on independent claim nos. 1 and 18 which distinguishes the apparatus from prior arts as an invention to determine the three dimensional inclusions in the rough gemstone and as such, it cannot be said that there is no novelty for invalidation of a granted patent. But on analysis of both the patented apparatus with the prior arts and comparing with the prior arts, the aspect of novelty of the apparatus cannot be said to be publicly known or Page 885 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined publicly used in India as no such apparatus was in existence or referred to by the defendants inasmuch as the complete specification of the apparatus describes sufficiently and fairly, the invention and the method for evolution of inclusions in the rough gemstone and it would not be sufficient to enable a person in India possessing average skill in knowledge of the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing in, which was known to the applicant for the patent and for which he was entitled to claim protection. The main contention of the defendants that the invention claimed in the suit patent is not new in light of prior art D1-US Patent Page 886 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined however, considering the documents placed on record by both the sides, prior public knowledge or prior public use has to be taken into consideration from the perspective of position in India. The defendants have failed to show that prior art D1 has been used in India and for that matter anywhere else in the world and therefore, the defendants have failed to discharge the onus of proving the allegation of lack of novelty of the invention in the suit patent vis-a-vis Prior Art D1. XII Conclusion to Issue No.1- infringement of suit patent:
Issue No.1 - Whether the plaintiff proves that the defendants are infringing the suit Page 887 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent, as alleged in the plaint?
12.1 On perusal of the submissions made by both the sides issue no.1 to be decided is whether the plaintiffs prove that the defendants are infringing the suit patent as alleged in the plaint or not. 12.2 Considering the submissions made on behalf of the plaintiffs and the defendants with regard to the oral and documentary evidence on record, it would be germane to refer to reasons assigned in the earlier part of this order for issue raised by the defendants of non compliance of section 65B of the Evidence Act and various preliminary objections raised by the plaintiffs as well as defendants in order to analyse the oral and documentary evidence to decide the issue no.1 with Page 888 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined regard to infringement of the suit patent by the defendants as alleged in the plaint. 12.3 It would be necessary to revisit the facts which are not in dispute and can be summarized as under:
12.4 The plaintiffs are granted Patent No.271425 by the Controller General of Patent, Design and Trademarks, Government of India on 22.02.2016 for an invention entitled as "Method for the Evolution of a Gemstone" as per the application made by the plaintiffs on 22.02.2008 for 20 years in accordance with the provisions of the patent Act, 1970.
12.5 It is the allegation of the plaintiffs in the plaint for infringement Page 889 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the suit patent by the defendants by infringing the machines sold and offered for sale and/or used as well as services provided.
12.6 The plaintiffs in order to substantiate such allegations has placed on record various documentary and oral evidence after filing of the suit.
12.7 The plaintiffs also hired a private investigating agency to collect the evidence to substantiate the allegations of infringement and produced evidence of PW-2 to PW-4 along with evidence produced by PW-
1 containing various documents, images, opinion of experts, DVDs containing videos taken by the Camera Enabled Shirt, Camera Enabled Spectacles and original spectacles with camera. Such evidence of plaintiffs Page 890 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined nos. 1 to 4 is available along with the cross examination of the witnesses in detail by the defendants.
12.8 The witnesses of the defendants have also submitted oral and documentary evidence and such witnesses were also cross examined by the plaintiffs.
12.9 Therefore, whether such evidence is admissible or not is already considered in the reasons assigned for preliminary objection raised by the defendants with regard to admissibility of such evidence.
Therefore, now it is time to consider the effect of the evidence which is held to be admissible in earlier part of this order to come to conclusion as to whether there is any infringement of the suit patent by the Page 891 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined defendants or not. Additional issues raised by the plaintiffs depend upon the answer of issue no.1 and therefore, subject to outcome of answer to issue no.1, additional issues sought to be framed would be covered as such issues are consequential. It would therefore, be necessary to list the evidence which is found to be admissible in this order on both the sides.
Sr. Witnesses Nature of evidence Content admissible
No. or not para nos
1 PW-1/1 to PW- Print out of 11 Admissible
1/11 invoices to indicate
the commercial usage of 78 to 98 the plaintiff no.1's (of the affidavit technology of Evidence of PW-1 Exh.76) 2 PW-1/12 Images of a rough Admissible diamond which has been scanned using Plaintiff 99 No.1's Galaxy system PW-1/13 Image of the 3D model 100 of a diamond (corresponding to the image of the diamond marked as Exh.PW-1/12) generated by mapping/planning PW-1/14 Image of 3D model with 101-103 Page 892 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined a finished diamond (of the Affidavit (corresponding to the of Evidence of PW-1 image of the diamond - Exhibit-76-Part- marked as Exh.PW-1/12) IV) planned therein using the Advisor @software 3 PW-1/15 i) Print out of the Admissible plaintiff no.1's suit 104-166, patent.
PW-1/16 ii) Print out of the 167-168 Certificate of ( of the Affidavit registration of patent of Evidence of PW-1 granted in favour of - Exhibit-76 plaintiff no.1 4 PW-1/17, i) Copy of the reports Admissible which indicated no 169-183( of presence of Selenium on Affidavit of a batch of 10 diamonds Evidence of PW-1 Exhibit 76) PW-1/25, ii) Copy of the report 191-208 ( of showing presence of Affidavit of selenium traces on the Evidence of PW-1 stones scanned by Exhibit 76) defendant no.1.
PW-1/26, iii) Print out of the 209-219( of original data output of Affidavit of defendant no.1 Evidence of PW-1 Exhibit 76) PW-1/28, iv) Court Commissioner 271-326( of report dated 03.07.2017 Affidavit of Evidence of PW-1 Exhibit 76) PW-1/30, v) Photographs taken by 328-330( of Court Commissioner Affidavit of showing empty power Evidence of PW-1 socket in the Exhibit 76) defendants machines, PW-1/31, vi) Compact Disc 331( of Affidavit containing the video of Evidence of PW-1 of the Defendant no.10 Exhibit 76) showing the working of Page 893 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined duplicated machine of the defendants taken during the inspection conducted by the Court Commissioner.
PW-1/32, vii) Screenshot of the 332-333 ( of Defendants website as Affidavit of taken by the court Evidence of PW-1 commissioner showing Exhibit 76) the stone numbers scanned by them for one of their customers on 16.06.2017.
PW-1/33, viii) Screenshot of 334-335( of data output of one of Affidavit of the scanned stones as Evidence of PW-1 taken by the court Exhibit 76) commissioner highlighting the stone number which was scanned on 16.06.2017 showing no presence of air bubbles.
PW-1/34, ix) Screenshots of the 336-337( of defendants website as Affidavit of taken by the court Evidence of PW-1 commissioner showing Exhibit 76) the stone numbers scanned by them for one of their customers on 26.06/.2017.
PW-1/35, x) Screenshot of data 338-339( of output of one of the Affidavit of scanned stones as taken Evidence of PW-1 by the Court Exhibit 76) Commissioner highlighting the stone number which was scanned on 26.06.2017 showing no presence of air bubbles.
PW-7/1 xi) Copy of the report 861-874( of Page 894 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (Already dated 17.05.2017 Affidavit of exhibited as obtained from the Evidence of PW-7 PW-1/17), Jawahar Lal Nehru Exhibit 83) University showing no presence of selenium on each rough diamond.
PW-7/2 xii) Copy of the report 876-892( of (Already dated 27.05.2017 Affidavit of exhibited as obtained from the Evidence of PW-7 PW-1/25), Jawahar Lal Nehru Exhibit 83) University showing the presence of selenium on each round diamond.
DW-2/X1, xiii) US Patent No. 4328-4351( of 6020954 granted to Exhibit 161) Imagem Inc. DW-2/X2, xiv)Print out of the 4352-4355 ( of description of a Diode- Exhibit 161) pumped solid-state laser as downloaded from the website https://en.wikipedia.org
xv) Printout of Article DW-7/X1, 4362(of Exhibit on the website
161) https://ipco.com/produc ts/purging-device/ xvi) Print out of the DW-7/X2, 4363(of Exhibit definition of valve as
161) downloaded from the website https://en.wikipedia.or g/wiki/Valve.
xvii) Print out of the
DW-7/X3, 4364(of Exhibit
definition of valve as
161)
downloaded from the
website
https://dictionary.camb ridge.org xviii) Print out of the DW-7/X4, 4365(of Exhibit definition of valve as
161) defined in Dictionary of Mechanical Engineering by Oxford downloaded from the Page 895 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined website https://www.oxfordrefer ence.com DW-7/X5, xix) Print out of the 4366(of Exhibit definition of valve as 161) defined in Dictionary of chemical engineering by Oxford downloaded from the website https://www.oxfordrefer ence.com DW-7/X7, xx) Print out of the 4367-4368(of extract from the Exhibit 161) registry of European patent office with respect to EP 21154436.
DW-13/X1, xxi) print out from the 4370-4371(of website of Ministry of Exhibit 161) corporate affairs (https://www.mca.gov.in ) to show the status of defendant no.12 5 PW-2/1 i) DVD containing the Admissible video 693(of the Affidavit of Evidence of PW-2 Exhibit 80) PW-4/1 ii) DVD containing 786 (of the video obtained by Affidavit of Desraj Evidence of PW-4 Exhibit 82) PW-4/X1, iii) Original camera 806 of Exhibit 82 enabled spectacles along with the data cable.
PW-4/X2, iv) Original camera 808 of Exhibit 82
enabled shirt along
with chip/memory card
12.10 In view of above discussion of
oral and documentary evidence, the print
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undefined
out of invoices Exh.PW-1/1 to PW-1/11 to indicate the commercial usage of machines manufactured by the plaintiffs is proved and accordingly, these documents are admitted as per the affidavit of Evidence of PW-1 Exh.76.
12.11 Similarly images of rough diamonds which has been scanned using the Galaxy system of Plaintiff no.1 produced at Exh. PW-1/12 to PW-1/14 are also admissible along with the contents thereof. It is held that the certificate issued by the plaintiffs as required under section 65B of the Evidence Act is to be accepted in view of the decisions of Apex Court and Delhi High Court referred hereinabove, wherein it is held that issuance of such certificate by the plaintiffs to comply with the Page 897 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined provisions of section 65B of the Evidence Act can be admitted at any stage during the course of trial.
12.12 With regard to the contents of the certificate under section 65B of the Evidence Act is concerned, same are met with as the last certificate filed by the plaintiffs under section 65B of the Evidence Act contains all the requisite details as provided under section 65B of the Evidence Act. It is required to be noted that the invoices and the images produced on record by the plaintiff witness no.1 demonstrate the existence of the Galaxy system of the plaintiffs. In such circumstances, discarding such evidence only on technical ground of non-filing of certificate as required under section 65B of the Evidence Act would frustrate the Page 898 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined very purpose of permitting the printouts of the electronic evidence in the course of trial.
12.13 As held by the Apex Court in case of Arjun Panditrao Khotkar (supra), certificate under section 65B filed by the plaintiffs are accepted to be in accordance with the provisions without raising any hyper-technical defect therein. Therefore, PW-1/1 to PW-1/14 are held to be admissible in evidence and as the content thereof is proved by the plaintiffs by leading oral and documentary evidence, same are also held to be admitted and proved. 12.14 Exh.PW-1/15 to PW-1/16 is the print out of Plaintiff No.1's suit patent and same being available in public domain, same is admitted and proved. Page 899 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.15 With regard to Exh.PW-1/17 and PW-1/25 same are copies of reports indicating no presence of selenium on a batch of 10 diamonds as well as the report showing presence of selenium traces on the stones scanned by defendant no.1 as per the report of Dr. Ruchita Pal who has been cross examined by the defendants as the Court Witness. Hence both the documents are held to be admissible vis-a-vis the contents thereof also.
12.16 Exhibit PW-1/26, PW-1/28, PW-1/30, PW-1/31, PW-1/32, PW-1/33, PW-1/34 and PW- 1/35 are the reports of the Court Commissioner and hence same are held to be admissible as per the agreement between the parties.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.17 PW-1/27 - Analysis report pertaining to 10 rough diamonds scanned by defendant no.1 and PW-1/29 - Compact Disc (CD) containing the video recording during the commission work showing that the employees of the defendants started leaving the premises are not to be exhibited and therefore, same are de-exhibited from the evidence.
12.18 Similarly, Exhibit PW-1/36 - print out of the data output reports generated for 6 diamonds scanned by the defendants is also not to be exhibited and accordingly it is de-exhibited.
12.19 Exhibit PW-1/37 - print outs taken from website pertaining to trade reports of Hong Kong based supplier is also not to be Page 901 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined exhibited and accordingly such documents are held to be inadmissible. 12.20 Exhibit PW-1/38 - image of the vacuum pump used in the plaintiff's galaxy machine has no link with the controversy in question and therefore same is held to be not admissible.
12.21 PW-2/1 is the DVD containing the video, PW-4/1 is the DVD containing video obtained by PW-3 -Desraj, PW-4/X1 is the original camera enabled spectacles along with data cable and PW-4/X2 is the original camera enabled shirt along with chip/memory card. These documents are held to be admissible vis-a-vis the contents thereof also.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.22 PW-7/1 is the copy of report dated 17.05.2017 obtained from the Jawahar Lal Nehru University showing no presence of selenium on each rough diamond and PW-7/2 is the copy of report dated 27.05.2017 also obtained from Jawahar Lal Nehru University showing presence of selenium on each rough diamond. The author of the report Dr. Ruchita Pal has deposed before the Court as Court Witness No.1. Hence both the documents are held to be admissible vis-a- vis the contents thereof also. 12.23 PW-1/X5, X-6, X-7 and X-8 and PW-4/X4 are the video conferences with defendant nos. 10 and 11 and one Power Point presentation shared by defendant no.10 with PW-1 as well as video clips in a pendrive. No orders to take such evidence on record are passed and accordingly such Page 903 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined evidence is not part of the record. Therefore, such documents are inadmissible. 12.24 Exhibit DW-2/X1 is the US Patent No.6020954 granted to Imagem Inc. and Exhibit DW-2/X2 is the print out of the description of a Diode-pumped solid state laser as downloaded from the website https://en.wikipedia.org. Same being available in public domain, same are admitted and held to be proved. 12.25 Exhibit DW-2/X3 are the 6 screenshots of the scan reports/data output reports generated by the defendant no.1 for one of its customers in May 2019. They are inadmissible and hence not exhibited.
12.26 Exhibit DW7/X1 is the print out of article on the website Page 904 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined https://ipco.com/products/ purging-device/, Exhibit DW7/X2 is the print out of
definition of Valve as downloaded from the website https://en/wikipedia.org/wiki/ Valve, Exhibit DW7/X3 is the print out of definition of valve as downloaded from the website https://dictionary.cambridge.org, DW7/X4 is the print out of definition of valve as defined in Dictionary of Mechanical Engineering by Oxford downloaded from the website https://www.oxfordreference.com, DW7/X5 is the print out of the definition of valve as defined in Dictionary of chemical engineering by Oxford downloaded from the website https://www.oxfordreference.com and Exhibit DW7/X7 is the print out of the extract from the registry of European patent office with respect to EP 2115436. Page 905 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Same being available in public domain, same are admitted and held to be proved. 12.27 Exhibit DW9/X2 is the audio recordings of DW-9 with the private investigator. It being inadmissible and hence not exhibited.
12.28 Exhibit DW 13/X1 is the print out from the website of Ministry of corporate affairs to show the status of defendant no.12. Same being available in public domain, same is admitted and held to be proved.
12.29 From the above admissible evidence which is held to be admissible it would be necessary to analyse the same to come to the conclusion as to whether the plaintiffs have been able to prove that there is Page 906 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined infringement of the suit patent by the defendants or not.
12.30 The plaintiffs have tried to prove the infringement of the suit patent by placing on record the documents of the machines sold by the plaintiffs together with investigation entrusted to PW-2 to PW- 4 by the plaintiffs by use of camera enabled shirt and camera enabled spectacle so as to prove that the defendants was using the same machine as produced by the plaintiffs including the vacuum pump which is the unique feature of the invention for removal of the bubble from the immersion material used for scanning of diamonds. As analysed in detail here-in-above, the plaintiffs have failed to prove about the usage of vacuum pump by the defendants in the machine as per the evidence led by PW-2 Page 907 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to PW-4 who have failed to prove that video footage from the camera enabled shirt and camera enabled spectacles placed on record as the same does not inspire any confidence. PW-2 to PW-4 placed on record DVD containing videos obtained by Deshraj along with original camera enabled spectacles and camera enabled shirt and when the videos were obtained from the storage of the camera enabled shirt and camera enabled spectacles, the said videos are totally different at Exh.80 and the relevant time slot also does not match, as the contents of Exh.PW-4/X1 is not the exact copy of DVD filed at Exh.PW-4/X1 and there are discrepancies which clearly demonstrates that evidence placed on record by the witness of the plaintiffs does not inspire confidence. When camera enabled Page 908 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined spectacles were connected with the computer system of the Court, it shows the date of modification in the folder containing purported videos as 11.09.2018 which clearly destroys the credibility of PW-3 and his story that the recording was carried out on 13.09.2018. Therefore, it cannot be the date of modification as shown in camera enabled spectacles as 11.09.2018 which leads to inference that both PW-3 and PW-4 are in connivance with the plaintiffs who have falsified the evidence before this Court and videos presented before the Court are not reliable evidence. 12.31 Videos which are shared by the plaintiffs at Exh. PW-4/X1 with the defendants are having different file names. Even some of the videos could not be opened during the course of demonstration in the Page 909 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Court. Thus there are two versions of videos, one which is provided by the plaintiffs at Exh.PW-4/X1 and those which are directly seen from camera enabled shirt and camera enabled spectacles and both the videos are different and do not match. Therefore, electronic evidence which is placed on record to demonstrate that there is infringement of the suit patent have failed, as same cannot be relied upon to come to the conclusion that the defendants have infringed the suit patent. Moreover, PW-4 is not even the author of the videos placed on record at Exh.PW-4/X1 and it was placed on record in answer to question no.6 in reexamination voluntarily by PW-4 in pen-drive. However, same was never shared with the defendants at the relevant time and the same was provided pursuant to the Page 910 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined directions of the Court. Out of six video clips in total, pen-drive contained seven video clips and two photograph folders which creates doubt on the veracity of evidence placed on record by PW-4. In reply to question no. 138 of the cross examination of PW-4 he has categorically stated that six video clips are recorded on 13.09.2018. When the contents of Exh.PW-4/X1 was shown in the Court on 11.11.2022, out of seven video clips, three video clips were blank. One could not be opened and remaining three video clips MOV10002, MOV10004 and MOV10005 could not be played properly as such clips were partially corrupt. Thus the contents of the evidence placed on record by the plaintiffs is not proved as it does not contain the Page 911 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined same contents as stated in the affidavit and cross examination by PW-3 and PW-4. 12.32 Plaintiffs have heavily relied upon the report of the Court Commissioner. However, Court Commissioner has proceeded beyond the scope of the order passed by this Court and recorded the videos and conducted interrogation of DW-2 on the working of the machines for which he was not authorised to do so. The Court Commissioner was only directed to carry out inventory assessment of the machines on the premises of defendant no.1 and defendant no.12. Therefore, the videography done by the Court Commissioner is not admissible in nature contrary to the order passed by this Court in Special Civil Application No.11240/2017.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.33 It is difficult for this Court to appreciate the submissions of the plaintiffs with regard to the analysis of videography placed on record, as such video clips are not proved by the plaintiffs as the plaintiffs have not been able to demonstrate before this Court that the same videos were available in camera enabled shirt and camera enabled spectacles. Therefore, the allegations made by the plaintiffs that the defendants are using bubble removal device in their machines which is invented by the plaintiffs is without any basis. Moreover, reliance upon the videos place on record are produced after institution of the suit by the plaintiffs. The defendants have also tried to create doubt about the veracity of video RECO 0001 at part-I of the DVD in relation Page 913 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to security guards/checks in view of the fact that DW-1 has placed on record audio conversation between Mr. Arnav Sharma and DW-9 on 4.11.2018 wherein Mr.Arnav Sharma had offered Rs. 8.5 lakhs to DW-9 before the police complaint was filed for demanding such amount. It therefore, creates doubt about the contention raised on behalf of the plaintiffs with regard to deposit of mobile phone while entering into factory premises of the defendants. It is also pertinent to note that the plaintiffs have not thought it fit to examine Mr. Arnav Sharma a private investigator who was engaged to record the working of the machines of the defendants. In such circumstances, sanctity of the contents of video clips relied upon by the plaintiffs cannot be said to be proved and contents of Page 914 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined such video clips placed on record by PW-2 and PW-3 through PW-4 cannot be said to be genuine and contents thereof are said to be inadmissible and unreliable. 12.34 Learned Senior Advocate Mr. Y.N. Oza had heavily emphasised upon the recording of the video clips in the premises of the defendants. It is also true that the defendants have not controverted the submissions with regard to machine and premises shown in the video clips. However, it is also emerging from the oral and documentary evidence that screenshots of videos recorded by PW-3 and placed on record by PW-4 were actually recording of the machines of the plaintiffs which are in Israel.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.35 Similarly the allegations made by the defendants that the plaintiffs brought the vacuum pumps and got it fitted in the machines of the defendants is also not believable as the defendants have not been able to prove by leading cogent evidence that the plaintiffs have brought vacuum pumps from outside without knowledge of the defendants and got it installed in the machines of the defendants as there is no cogent evidence led by either sides in relation to such allegations and counter allegations. Both the plaintiffs and the defendants are aware about the functioning of the diamond scanning machines as both are running their business since years. The plaintiffs tried their best to prove that the defendants have committed infringement of suit patent by using a device to remove Page 916 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the bubble from the immersion material so as to find out the inclusion in rough diamond but at the same time they have not been able to prove such infringement by any reliable cogent evidence. 12.36 It is also pertinent to note that the plaintiffs have not asked any question to DW-1 during his cross examination in relation to video recording pertaining to vacuum pumps in Part-II and Part-III of the DVD with regard to the alleged recording of existence of vacuum pump. Apparently, the plaintiffs have failed to consider this aspect by leading any oral and documentary evidence to prove that defendants have infringed the suit patent by utilising the vacuum pumps in diamond scanning machines. Page 917 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.37 The contention is raised on behalf of the plaintiffs that the suit patent is qua the entire machine and not only qua the device for removal of gas bubbles in the suit patent. However on perusal of claim no.1 and claim no.18 which is granted to the plaintiffs coupled with the fact that suit patent was amended by the plaintiffs after being pointed out by the authority about the existence of the prior art. The plaintiffs thereafter filed revised application by demonstrating that the plaintiffs' machine and the claim placed by the plaintiffs are totally different as the plaintiffs have used the device for removal of gas bubbles from the immersion material. Considering such aspects, the suit patent was granted inspite of existence of prior art. Therefore, onus is on the plaintiffs Page 918 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to show that machines used by the defendants for diamond scanning are same as that of the plaintiffs by using the device for removal of gas bubbles from immersion material.
12.38 On perusal of the plaint, only grievance raised by the plaintiffs was on use of selenium as immersion material by the defendants and there was no further details available in memo of the plaint with regard to infringement of suit patent by using a device for removing the bubbles from the immersion material for scanning the diamond. It is pertinent to note that defendant DW-1 and DW-2 during cross examination on alleged recording of use of vacuum pump have not been put in any question though the plaintiffs had full opportunity to confront the portion of the Page 919 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined videos to witnesses of the defendants seeking clarification/confirmation of what has been shown in videos. Reliance placed by the plaintiffs on the video at timestamp 21:05:37 of video clip REC 00005 is also not tenable as genuineness of the contents of the video clips is not proved by the plaintiffs.
12.39 In view of facts emerging from the record along with oral and documentary evidence, the plaintiffs have not been able to prove the infringement of the suit patent by the defendants on any count. There is no direct evidence worth the name produced on record and proved by the plaintiffs to demonstrate remotely that there was infringement of the suit patent by the defendants.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.40 Reliance placed by the plaintiffs upon order of vacuum pumps given by the defendants to suggest that the defendants have imported vacuum pumps to be utilised in the diamond scanning machine by the defendants cannot be made the basis for coming to the conclusion that there is infringement of the suit patent. Merely because vacuum pumps are imported by the defendants, logical conclusion would be only on the basis of documentary and oral evidence led before this Court. 12.41 On analysis of evidence on record, it cannot be said that the sister concern of the defendants have imported vacuum pumps to be utilised in the diamond scanning machines. It has also come on Page 921 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined record that the defendants are also repairing various diamond scanning machines produced by the plaintiffs through buyers and as such, the defendants have explained that vacuum pumps were imported for the purpose of repair which cannot be doubted. 12.42 Moreover there are major anomalies in the video clips being MOVI 0002 which is at Sr. no. 6 in DVD, MOVI 0001 which is at serial no.5 in DVD in relation to bubbles that occur while scanning the rough diamonds in vacuum pump and video recording MOVI 0002(6) in DVD and MOVI 0001(5) showing the pump in the DVD and MOVI0000 (10) in DVD recorded by DW-3, there is major anomaly which clearly indicates that such videos are inadmissible as there are contradictory versions appearing in the Page 922 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined oral and documentary evidence led before this Court.
12.43 Learned advocate for the plaintiffs has merely demonstrated the suit patent claim vis-a-vis the nature of device as a whole instead of harping upon as to how the infringement of suit patent is done by the defendants in absence of any oral and documentary evidence. It appears that there are contradictory versions in oral and documentary evidence on considering the cross examination of PW-3, more particularly, answer to question no.107 which clearly demonstrates that video clips do not show vacuum pumps but in fact show the red light.
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NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.44 Therefore, considering the evidence led by the plaintiffs to prove the infringement of the suit patent by the defendants no.1, the same has failed. There is no proof to show that there is infringement of the suit patent by the defendants. Merely because vacuum pump is found in the premises of defendants, same cannot be presumed and assumed that the defendants are using such vacuum pumps inspite of oral and documentary evidence placed by the witnesses of the defendants to the effect that the defendants are using image software for identifying the inclusions on the images which are captured in diamond scanning machines used by the defendants. The defendants have also raised doubt about the location of the premises in which witnesses of the plaintiffs recorded Page 924 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the machinery of defendant no.1 through camera enabled shirt and camera enabled spectacles. However, attempts made by the plaintiffs have failed more particularly, there are many contradictions in the evidence led by PW-2 to PW-4 which would go against the plaintiffs to prove about the infringement of the suit patent. 12.45 Considering the submissions of both the sides, this Court is of the view that there is no infringement of the suit patent by the defendant and therefore, so far as issue no.1 is concerned, same is answered in negative. As answer to issue no.1 is in negative, additional issue raised by the plaintiffs are not considered with regard to the damages to be paid as compensation for infringement etc. Page 925 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Conclusion to Issue no. 2 and 3 (counter claim) Issue No.2- Whether the suit patent is liable to be revoked on any of the grounds stated in the counterclaim filed by the defendant Nos.4 and 5?
Issue No.3- Whether the defendants prove that they have got prior arts which will impinge upon the validity of the suit patent?"
12.46 On considering the submissions made by both the sides, to decide the issue as to whether the suit patent is required to be revoked as pleaded by the defendants, the criteria for revocation of the suit patent granted under the provisions of the Patent Act would have to be tested as to whether the Page 926 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined same meets with the criteria of invention, innovative steps, novelty as claimed by the plaintiffs which was considered by the Controller of Patent and Design to grant the suit patent with regard to one of the invention pertaining to determination of location of inclusion in gems as per claim nos. 1 and 18 out of 39 claims made by the plaintiffs.
12.47 For the said purpose, it would be germane to refer to sections 64(1)(e) and 64(1)(f) relied upon by the defendants which reads as under:
64. Revocation of patents.--(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may,[be revoked on a petition of any person interested or of the Central Government or on a counter-
claim in a suit for infringement of the patent by the High Court] on any of the following grounds, that is to Page 927 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined say,--
e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;
(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;"
12.48 On perusal of the above provisions, the patent can be revoked on the ground that
i) complete specification is not new,
ii) what was published in India or elsewhere in any document referred to in section Page 928 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 13 or
iii) the invention is obvious to a person skilled in the art or
iv) does not involve inventory steps having regard to what was publicly known or publicly used in India before the priority date of the claim or 12.49 Therefore, as per the provisions of section 2(1)(j) and 2(1)(ja) read with section 64(1)(e) and (f) of the Patent Act whether the suit patent is liable to be revoked or not is to be considered as per the evidence led on record. The very purpose of apparatus for which the suit patent is granted is to determine the location of inclusion in rough gemstone.
The Suit Patent is granted to the apparatus containing different components like holder, cabin, compartment, sealed Page 929 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined container, port, opening in compartment and heater which are totally different than that of any of the Prior Arts or in Suit Patent Application No.876/2008. 12.50 Suit patent claims the method for providing material having a second refractive index, taking measures for reducing the presence within the said material of any substance other than the inclusions having a third refractive index, disposing then gemstone on a holder within the said material, illuminating the gemstone by an illuminator and detecting illumination of the gemstone within the said material by a detector, determining by a Controller, location of inclusion based on said detection. None of the Prior Arts D1 to D8 teach disposing the gemstone on a Page 930 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined holder within the immersion material as disclosed in the suit patent. 12.51 The plaintiffs submitted revise set of claims consisting of independent claim no.1 and 18 which reads as under :
"1. An apparatus (200) for determining location of at least one inclusion in a gemstone (202) having a first refractive index,comprising:
a container (222) adapted for containing a material (220) having a second refractive index;
a holder (204) operative to support a gemstone (202) in the container (222) and in the material (220) when the container (222) contains the material (220);
an illuminator (206) positioned and adapted to illuminate said gemstone (202) when disposed within said material (220) in said container (222), with illumination at which said gemstone (202) and said Page 931 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined material (220) have their respective first and second index of refraction;
a detector (212) that detects illumination from the illuminated gemstone (202) and said material (220) and produces signals responsive thereto;
a controller (230) that receives the signals and is operative to determine a location of an inclusion in the gemstone (202) based on the signals; and a system, operative to reduce the presence within said material (220) of any substance other than inclusions, having a third refractive index, said system including a device for withdrawal of gas bubbles from said material (220).
xxx
18. A method for determining the position of inclusions in a gemstone (202) having a first refractive index, said method comprising:
providing a material (220) having a second refractive index;Page 932 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined taking measures for reducing the presence within said material (220) of any substance other than the inclusions, having a third refractive index, said measures including withdrawing, by a device, gas bubbles from said material (220);
disposing the gemstone-(202) on a holder (204) within said material (220);
illuminating the gemstone (202) by an illuminator (206) and detecting illumination of the gemstone (202) within said material (220), by a detector (212); and determining, by a controller (230), a location of an inclusion based on said detection."
12.52 Following aspects are required to be considered in light of the above as to whether is there any invention, inventive steps, novelty or obviousness in the suit patent or not so as to revoke the same as per the Page 933 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined settled legal position vis-a-vis the facts of the case :
A) Construction of claim of the complete specification was new having regard to Prior Arts.
B) Inventive steps C) Presence of Skill Art and Obviousness D) Technical advancement as compared to existing knowledge and having economic significance A) Construction of claim of the complete specification was new having regard to Prior Arts.
12.53 On perusal of the claims which are independent claim granted in the suit patent, all other claims which are dependent claims are in support of the suit patent and as such, construction of claim cannot be said to be in Page 934 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined any manner contrary to the settled legal position as under :
1) Reliance placed by the defendants on the decision of Delhi High Court in case of Hoffmann-La Roche Ltd. and ors.
v. Cipla Ltd. reported in
MANU/DE/3672/2015, would not be
applicable in facts of the case. The Delhi High Court has held as under:
"66. Before we apply the aforenoted legal position to the facts of the instant case we need to discuss the legal position concerning construction of claims. In the decision reported as AIR 1969 Bombay 255 FH & B Vs. Unichem Laboratories it was held that specifications end with claims, delimiting the monopoly granted by the patent and that the main function of a Court is to construe the claims without reference to the specification;
a reference to the
specification being as an
exception if there was an
ambiguity in the claim. Claims Page 935 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined must be read as ordinary English sentences without incorporating into them extracts from body of specification or changing their meaning by reference to the language used in the body of the specification. In a recent decision in FAO (OS) No.190/2013 Merck Vs. Glenmark the Division Bench held that claim construction to determine the coverage in the suit patent has to be determined objectively on its own terms with regard to the words used by the inventor and the context of the invention in terms of the knowledge existing in the industry. Abandonment of an application cannot remove what is patented earlier nor can it include something that was excluded earlier and that a patent is construed by the terms used by the inventor and not the inventors subjective intent as to what was meant to be covered. Merely because an inventor applies for a latter patent that is already objectively included in a prior patent, but which inventor subjectively feels needs a separate patent application, doesn't mean it is to be taken at face value and therefore neither Section 3(d) or Page 936 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined abandonment of subsequent patent application can be used to read into terms of prior application, which has to be construed on its own terms. In the decision reported as 415 F. 3d 1303 Edward H.Phillips Vs. AWH Corporation it was held that claims have to be given their ordinary and general meaning and it would be unjust to the public, as well as would be an evasion of the law, to construe a claim in a manner different from plain import of the terms and thus ordinary and customary meaning of the claim term is the meaning of the term to a Person Of Ordinary Skill in the Art as of effective date of filing of the patent application. In case of any doubt as to what a claim means, resort can be had to the specification which will aid in solving or ascertaining the true intent and meaning of the language employed in the claims and for which the court can consider patent prosecution history in order to understand as to how the inventor or the patent examiner understood the invention. The Court recognized that since prosecution is an ongoing process, it often lacks clarity of the specification and thus is less useful for Page 937 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claim construction. The Court also recognizes that having regard to extrinsic evidence such as inventor testimony, dictionaries and treaties would be permissible but has to be resorted to with caution because essentially extrinsic evidence is always treated as of lesser significance in comparison with intrinsic evidence. In the decision reported as 457 F.3.1284 (United States) Pfizer Vs. Ranbaxy the Court held that the statements made during prosecution of foreign applications are irrelevant as they are in response to unique patentability requirements overseas. The Court also held that the statement made in later unrelated applications cannot be used to interpret claims of prior patent. In the decision reported as 1995 RPC 255 (UK) Glaverbel SA Vs. British Coal Corp the Court held that a patent is construed objectively, through the eyes of a skilled addressee. The Court also held that the whole document must be read together, the body of specification with the claims. But if claim is clear then monopoly sought by patentee cannot be extended or cut down by reference to the Page 938 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined rest of the specification and the subsequent conduct is not available to aid the interpretation of a written document.
67. For the above conspectus, pithily put, principles of claim construction could be summarized as under:-
(i) Claims define the territory or scope of protection( Section 10(4)(c) of the Patents Act, 1970.
(ii) There is no limit to the number of claims except that after ten claims there is an additional fee per claim (1st Schedule of the Act).
(iii) Claims can be independent or dependent.
(iv) The broad structure of set of claims is an inverted pyramid with the broadest at the top and the narrowest at the bottom (Manual of Patents Office - Practice and procedure).
(v) Patent laws of various countries lay down rules for drafting of claims and these rules are used by Courts while interpreting claims.
(vi) One rule is that claims are a single sentence defining an invention or an inventive concept.Page 939 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined
(vii) Different claims define different embodiments of same inventive concept.
(viii) The first claim is a parent or mother claim while remaining claims are referred to as subsidiary claims.
(ix) If subsidiary claims
contain an independent
inventive concept different
from the main claim then the Patent office will insist on the filing of a divisional application.
(x) Subject matter of claims can be product, substances, apparatus or articles;
alternatively methods or
process for producing said
products etc. They may be
formulations, mixtures of
various substance including
recipes.
Dosage regimes or in some
countries methods of use or treatment may also be claimed.
(xi) Where claims are dependent it incorporates by reference everything in the parent claim, and adds some further statement, limitations or restrictions'. (Landis on Mechanics of Patent Claim Drafting).
Page 940 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (xii) Where claims are
independent' although relating to the same inventive concept this implies that the independent claim stands alone, includes all its necessary limitations, and is not dependent upon and does not include limitations from any other claim to make it complete... An independent Claim can be the broadest scope claim. It has fewer limitations than any dependent claim which is dependent upon it'. (Landis on Mechanics of Patent Claim Drafting)
(xiii) For someone wishing to invalidate a patent the said person must invalidate each claim separately and independently as it is quite likely that some claims may be valid even while some are invalid.
(xiv) At the beginning of an infringement action the Courts in the United States conduct what is known as a Markman hearing' to define the scope of the claims or to throw light on certain ambiguous terms used in the claims. Although this is not technically done in India but functionally most Judges will resort to a similar exercise in trying to understand the scope and Page 941 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined meaning of the claims including its terms.
In the case of (52 F.3d 967 also 517 US 370) Herbert Markman Vs. Westview the Courts held that an infringement analysis entails two steps:-
(a) First step is to determine the meaning and scope of the patent claims asserted to be infringed.
(b) Second step is to compare the properly construed claim with the device accused of infringing.
(xv) The parts of the claim include its preamble, transition phrase and the body.
The transition phrase' includes terms like:-
(a) Comprising;
(b) Consisting;
(c) Consisting essentially of;
(d) Having;
(e) Wherein;
(f) Characterised by;
Of these terms some are open ended, such as comprising' which means that if the claim contains three elements A', B' and C' it would still be an infringement for someone to add a fourth element D'.
Page 942 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Further some terms are close ended such as consisting of', i.e. in a claim of three elements, A', B' and C' a defendant would infringe if he has all three elements. In case the defendant adds a fourth element D' he would escape infringement.
(xvi) Each claim has a priority date so that in a group of claims in a specification you could have multiple priority dates. This only means that if a patent application with certain priority date and claims was followed by another application with different claims and different priority dates, then if they were consolidated or cognate with another application, each claim would retain the original priority date [Section 11(1)]." 12.54 As the suit patent covers an inventive step for a system or a device to remove gas bubbles from the immersion material and the different parts of the apparatus as a whole evolving methodology for identifying the location and size of the inclusion Page 943 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in the gemstone. Considering the independent claim nos. 1 and 18 for which the suit patent is granted, same pertains to the entire apparatus including the system or device for removing the gas bubbles from immersion material which is an unique and novel inventive step of plaintiff no.1 while designing the apparatus so as to reduce the presence within the immersion material of any substance which would have third refractive index. Considering the claims made by the plaintiffs, they would meet the standards summarised as above by Hon'ble Delhi High Court as the Patent Office has considered the claim nos. 1 and 18 as independent claim and there are no independent inventive concepts Page 944 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined different from the main claim and in such circumstances, there is no lacuna in claim construction as tried to be pointed out by the defendants.
2) Reliance was placed on the decision in case of Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and others v. Unichem Laboratories and others reported in MANU/MH/0064/1969. It was contended on behalf of the defendants that in an infringement action, the main function of the Court is to construe the claims which are alleged to have been infringed, without reference to the body of the specification, and to refer to the body of the specification only if there is any ambiguity or difficulty in the Page 945 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined construction of the claim in question. It was submitted that in facts of the case, the plaintiffs have not given complete specification stating subject to which the invention relates, followed by a detailed description of one or more of the embodiment of the inventions. The contention of the defendants is not tenable as on perusal of the patent application, claim construction are in accordance with what is held as stated in Halsbury((3rd edn.) Vol. 29 p.g para 8) which is referred in the said judgment as under:
"8. As stated in Halsbury((3rd edn.) Vol. 29 p. 6 para 8), a complete specification customarily begins, after the title, with a general preamble stating the subject to which the invention relates, followed by a detailed description of Page 946 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined one or more embodiments of the inventions. The whole of that is known as the body of the specification. It is further stated in the said paragraph of Halsbury that the specification ends with the claims, delimiting the monopoly granted by the patent, and since they define the monopoly, they must, in the event of legal proceedings, be scrutinised with as much care as any other document defining a legal right, and require to be as carefully Halsbury ((3rd edn.) Vol. 29 p. 10 paras 16 & 17) that the specification is to be read as a whole, and that the body of the specification, or changing their meaning by reference to the language used in the body of the specification. though the body of the specification should be referred to for the purpose of resolving difficulties of construction occasioned by the claims when read by themselves. It is, therefore, clear that, in an infringement action, the main function of the court is to construe the claims which are alleged to have been infringed, without reference to the body of the specification, and to refer to the body of the specification only if there is Page 947 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined any ambiguity or difficulty in the construction of claims in question."
3) Reliance was placed on the decision in case of Novartis AG and ors. v. Natco Pharma Limited and ors. reported in MANU/DE/2921/2021. The said judgment relates to infringement and not revocation for the purpose of granting injunction during the pendency of the suit for infringement. Therefore, the same would not be applicable in facts of the case.
4) Reliance was placed on the decision in case of Boehringer Ingelheim International GMBH v. The Controller of Patents and another (Decision dated 12th July, 2022 in C.A. (Comm.IPD-Pat) 295/2022) of Delhi High Court for raising the contention that the plaintiffs have not constructed the Page 948 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claim as required under section 10 of the Patent Act, as the contents of specification does not describe the invention. It was submitted that Delhi High Court in facts of the said case held that there is no complete specification and the claims are not based on disclosures in specification. In the facts of the said case, the Controller of Patent rejected the request for pursing the divisional application and the Delhi High Court has held that if the invention is not containing claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosures made in the specification, in respect of alleged invention. In such facts, it was held as under:
Page 949 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "30. A perusal of these conditions as stipulated under Section 10 shows that the title indicates the subject matter of the invention.
The content of the specification describes the invention. The complete specification also describes the procedures, processes, methods, including the best methods. But what is crucial to note, is the fact that the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the 'Claims'. The Invention thus resides in the Claims. Accordingly, "unity of the invention"/ "plurality of inventions" and whether they form a "single inventive concept" has to be gleaned from a reading of the claims. This position has been examined and held so by the IPAB as well in ESCO Corporation v. Controller of Patents & Designs [OA/66/2020/PT/DEL, decided on 27th October, 2020], where the IPAB observed:
"10. Therefore, looking at the provisions of law and the settled practices, we reach the Page 950 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined following conclusions that a patent application can only be divided, if it claims more than 'one invention'. Now the question therefore is how "one invention" is defined. We look at the provisions of "unity of invention" as provided in section 10(5) of the Patents Act, 1970. It says 'The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept". Means if any specification claims either a single invention or a group of invention linked so as to form a single inventive concept, the requirement of "unity of invention" is satisfied. Hence, if there is no objection on the ground of 'plurality of distinct inventions' means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable."
31. Using this understanding of how an invention is ascertained in a patent application, it is clear that under Section 16 of the Act, Page 951 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the "plurality of inventions"
should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application. Therefore, under Section 16, the question of whether the claims of the complete specification relate to more than invention i.e., a "plurality of inventions" has to be seen from the claims of the parent application. Obviously, the claims in turn, have to be based on the disclosure in the specification. However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions. If applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., 'what is not claim is disclaimed'.1 Similarly,Section 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible. This is the settled legal position, as also held by this Court in Nippon A&L Inc. v. The Controller of Patents [C.A. Page 952 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (COMM.IMPD-PAT) 11/2022, decided on 5th July, 2022]. Thus, the divisional application would be maintainable only when the claims of the parent application disclose "plurality of inventions".
32. This position of law is also borne out by various decisions of the IPAB. For instance, most recently in ESCO (supra), the IPAB held as under:
"10. Therefore, looking at the provisions of law and the settled practices, we reach the following conclusions that a patent application can only be divided, if it claims more than 'one invention'. Now the question therefore is how "one invention" is defined. We look at the provisions of "unity of invention" as provided in section 10(5) of the Patents Act, 1970. It says 'The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept". Means if any specification claims either a single invention or a group of invention linked so as to form a single inventive concept, the requirement of "unity of Page 953 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined invention" is satisfied. Hence, if there is no objection on the ground of 'plurality of distinct inventions' means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable.
...
13. The issue of divisional applications has drawn much attention in recent past and we have noted different practices adopted by the applicants or by the Patent Office. We, therefore, opine that in the best interest of justice and in order to bring uniformity of practices, the following guiding principle may help to address the issue. Considering the above legal provisions of Indian Patent law, the Manual Of Patent Office Practice and Procedure, the PCT to which India in a member since 1998 and the previous decisions, we are of the view that the following points need be adhered to while dealing with divisional applications:
14. Formal Grounds:Page 954 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 14.1 Filing of divisional application ❖ Either by the applicant (suo-
moto), if he so desires or ❖ To remedy the objection raised by the Controller on the ground of plurality of invention.
❖ In either case the existence of plurality of invention in the parent application is the sine qua non for a divisional application.
14.2 The claims of divisional application shall have their route in the first mentioned (parent) application. This is true even for divisional to divisional application as well.
The routes of subsequent
divisional application also
should be from the first
mentioned application. The
divisional application shall
not be filed with the same set of claims as the first mentioned application.
14.3 The applications need be divided only on the ground of 'plurality of invention' as envisaged under section 16. If any claim is held to be non-
patentable due to any other provisions of the law such as Page 955 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the requirements section 3 or otherwise, it should not be proper for filing a divisional application for such claims.
14.4 For division of an
application, the primary
requirement is that the
application shall exist.
Meaning thereby that no
divisional application can be filed, if the application is either "deemed to be abandoned"
or 'withdrawn" or "refused".
However, the divisional application once filed, no such subsequent action will have any bearing on that divisional application, which shall continue as substantive application.
...
14.7 The complete specification of the divisional application shall not include any matter not in substance disclosed in the complete specification of first mentioned application. The teaching of sub section (2) of section 16 doesn't refer to the matter disclosed but not claimed. This relates to the fact that since both the applications are given the same date of filing, the latter shall not include any further subject matter which was not Page 956 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined disclosed in the first mentioned application. Therefore, the contention that some additional claim(s) can also be allowed, which never formed part of the originally filed claims, is negated as the provisions of law need to be read in totality. A plain reading of sub -section (1) of section 16 reveals that the very ground to accept divisional application is "on the ground that the claims of the complete specification relate to more than one inventions. Section 10(5) further qualifies "more than one invention" to only such invention or group thereof which cannot be linked to make a single inventive concept.
Substantive Grounds:
14.8 At the stage of examination, care should be exercised that merely by the presence of different embodiments in the specification, which are claimed as independent set of claims, it does not necessarily attract the provisions of lack of Unity of invention'. If the unity of invention is not ascertained, the amendement of Page 957 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the claims can overcome the "scope" or "definitiveness"
requirements, and this option could well be excercised before hand."
33. This position also finds favour in the IPAB's decision of LG Electronics, Inc. v. Controller of Patents & Designs [OA/6/2010/PT/KOL, decided on 10th August, 2011]. The said decision reads as under:
"The concept of divisional application in the patent law basically addresses the issues of allowability of protection of multiple inventions disclosed in one patent application, where these multiple inventions do not constitute a single inventive concept. The protection of multiple inventions through divisional application is available in the Patents Act 1970 under the provisions of section 16 and section 10(5) reproduced below.
We agree with the applicants arguments that the applicant can file an application as divisional application of his own before the grant of patent.
However Respondent-2 is
mandated by the law to
ascertain that the divisional Page 958 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined application so filed is on account of disclosure of plurality of distinct invention in the parent application. Section 16 pertains to power of the Respondent to make order respecting division of application. Right to file divisional application indeed rest with the applicant but the power to ascertain its allowability is vested with the Respondent. The first essential requirement of this provision is the fact of existence of plurality of invention in the parent application."
34. Even in Milliken (supra) which has been relied upon by the Applicant, the parent application had a plurality of inventions in its claims which was then moved to the first divisional application and then to the second divisional application."
12.55 In view of above position of law, Delhi High Court came to the conclusion that divisional application cannot be filed since there was no plurality of invention. The above decision would not be applicable in Page 959 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined facts of the case as there is only one invention which is in the form of apparatus using the system or device to remove the gas bubbles from immersion material for which the suit patent is granted. The contention of the defendants that fundamental rule of the patent law i.e. "what is not claimed is disclaimed" would not be applicable on perusal of the claims made in the suit patent and therefore, there is no infirmity in construction of claim as sought to be canvassed by the defendants.
12.56 In view of above settled legal position and considering the facts and claims by the plaintiffs, the main contention of the defendants that the suit patent in view of existence of Prior Art Page 960 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined D1 to D8, there is no disclosure of all specifications is not tenable. Moreover, it is demonstrated by the plaintiffs that there are overlapping claims so far as Prior Art D1 to D8 are concerned and there are no specific claims with regard to the suit patent which are not repeated herein for sake of brevity. Each of the Prior Art is distinguished vis-a-vis the suit patent as against that the defendants have also tried to draw similarity between the suit patent and Prior Art. However, on analysis of the distinction as well as the similarly drawn by both the sides, following conclusions can be drawn:
a) Suit patent pertains to apparatus and cannot be dissected to compare each component with Prior Arts as tried to be done by the both the sides. Entire methodology of the suit patent is Page 961 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined different than any of the methodology adopted by the Prior Arts D1 to D8 as the onus discharged by the plaintiffs.
b) Similarly with regard to Prior Art D2 to D8 distinguishing features are highlighted in the submissions of the plaintiffs. The defendants have tried to dislodge the distinguishing features pointed out by the plaintiffs by mapping the apparatus of the suit patent with that of Prior Art D1. However, on close scrutiny of such mapping which is already reproduced here in above in the submissions of the defendants for revocation of the suit patent, it is not discernible that all the Prior Arts in different communication teach and suggest use of vacuuming/degasing technology for reduction of the gas bubbles. In none of the Prior Arts, there is any system or Page 962 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined device using the methodology as per the suit patent. Therefore, it cannot be said that the claims made in the suit patent does not disclose the specifications and as such, such claims are publicly known as provided under section 64(1)(e) as per the Prior Art relied upon by the defendants.
B) Inventive steps 12.57 On the basis of evidence led by the plaintiffs with regard to concept in invention in the suit patent pertains to the ability of the apparatus to determine the exact three dimensional location, position and size of the inclusion which can be extremely small within a rough or irregular polished gemstone in a single scanning operation. In order to achieve such an inventive step, apparatus is designed which is specifically adapted to Page 963 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined render specific function as claimed in the method claim nos. 18 to 39 in the suit patent. Each of the component of the apparatus is adopted in a specific manner and it is inventive in nature to any similar component existing in any other Prior Art which is evident from the following comparisons:
D1-4049350 12.58 The following features of the Suit Patent are inventive over prior art D1 alone or in combination with other prior arts:
1) In the novelty chart the features/elements of independent claim 1 of the Suit Patent i.e. container, holder, illuminator, detector, immersion medium, controller, and a Page 964 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined system operative to reduce the presence within said material of any substance other than inclusions are either absent in D1 or are different.
2) All the elements of the Suit Patent(independent claims 1 and 18) have features that are not present in D1 which are not only novel and inventive but also lead to the technical advancement and economic significance and thus, the Suit Patent is not only novel over D1 but it is also inventive (non-obvious) over the prior art D1.
3) The person skilled in the art was not able to make the apparatus with the container, holder, immersion medium, illuminator, detector and, a system Page 965 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined operative to reduce the presence within said material of any substance other than inclusions as claimed in claim 1 of the Suit Patent and also not able to arrive to the method as claimed in claim 18 through the teachings of D1 alone or in a combination of any other prior art before the priority date of the Suit Patent. The Apparatus as a whole or its any element is not disclosed in D1 as such to achieve the objectives of the Suit Patent. 12.59 Following decisions are applicable in the facts of the case to substantiate the claim of inventive steps by the plaintiffs in invention of apparatus for which the suit patent is granted :
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1) Reliance was placed on the decision in case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries reported in MANU/SC/0255/1978, wherein Hon'ble Supreme Court with regard to as to whether a document is a publication which would negative existence of novelty or an "inventive step" is suggested, as under:
"27. Another test of whether a document is a publication which would negative existence of novelty or an "inventive step" is suggested, as under:
"Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives Page 967 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined me what I want?" (Encyclopaedia Britannica; ibid). To put it in another form:
"Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned ?" Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimadalal J. of Bombay High Court in Farbwrke Hoechst & B. Corporation v. Untchan laboratories.
With the aforesaid prefatory survey, we now turn to the 1911 Act. The Act provides various checks to prevent an invalid patent being granted which does not involve any inventive step or a manner of new manufacture or improvement. The procedure for obtaining an exclusive privilege under this Act (before the Amending Act 39 of 1970), may be described as below:
The true and first inventor or his legal representative or assignee submits an application in the prescribed form and Page 968 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined manner to the Patent Office. The application must contain a declaration to the effect that the application is in possession of an invention, for which he desires to obtain a patent. Such an application must be accompanied, inter alia, by either a provisional or complete specification. A provisional specification must prescribe the nature of the invention. A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. A specification whether provisional or complete, must commence with the title, and in case of a complete specification must and with a distinct statement of the invention claimed.(Sec.4). The Controller then considers that application and may require the applicant to supply suitable drawings and such drawings shall be deemed to form part of the complete specification. If a complete specification is not left with the application, the applicant may leave it at any subsequent time within 9 months from the date of the application. The application is then examined by the Controller of Patents for Page 969 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the patentability of the invention. The Controller then makes a thorough search among his records for novelty. The Controller is bound to refer to an Examiner an application, in respect of which a complete specification has been filed.
The Examiner then, after
careful and elaborate
examination, submits his report to the Controller, inter alia, as to whether or not--
(a) the nature of the invention or the manner in which it is to be performed is particularly described and ascertained in the complete specification;
(b) the application, specification and drawings have been prepared in the prescribed manner;
(c) the title of the
specification sufficiently
indicates the subject-matter of the invention;
(d) the statement of claim sufficiently defines the invention;
(dd) the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification;Page 970 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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(e) the invention as described and claimed is prima facie a manner of new manufacture or improvement;
(f) the specification relates to more than one invention;
(g) ...
(h) ..."
12.60 If the above principles are made applicable to the facts of the case, the Controller has already examined the application and required the plaintiffs to supply explanation for the distinguishing features than the Prior Art which is already supplied and considered and therefore, the suit patent was amended before the Controller proceeded with the application and he has satisfied with regard to these matters and accepts the application and thereafter, considering the objections, the patent is granted. Page 971 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined However, validity of such patent is challenged by way of counter claim and in such circumstances, the Hon'ble Supreme Court in the facts of the said case found that the trial Court has rightly considered that the patent application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a workshop improvement, a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. However, in facts of the case, such issues have not arisen neither pleaded to the effect that Prior Arts D1 to D8 Page 972 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined on perusal of the specification and components of Prior Art as well as the main object of such apparatus, it cannot be said that the suit patent is merely an application of an old invention by mere addition of system or device to remove the gas bubbles from immersion material. It is pertinent to note that there has been substantial exercise of the inventive power or innovative faculty and the patented apparatus is the result of research, independent thought, ingenuity and the skill as per the expert evidence brought on record by the plaintiffs which is not controverted or proved to be or disproved by the defendants. In view of the fact that the suit patent involves Page 973 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined novelty and inventive step, same cannot be revoked.
2) Reliance was placed on the decision in case of Enercon (India) Ltd. v. Alloys Wobben reported in 2013 SCC Online IPAB 91 with regard to issue as to who is the person skilled in art. IPAB has observed as under:
"25. A crucial issue to be decided is Who is the person Skilled in The Art. In fact, Mr. Praveen Anand repeatedly urged us that this issue must be decided. The guide to this is found in the judgment of the 2012 (52) PTC 1 (DEL) Mumbai Central, Mumbai F. Hoffmann-La Roche Ltd v. Cipla Ltd. It reads, "Therefore the same cannot be read to mean that there has to exist other qualities in the said person like unimaginary nature of the person or any other kind of person having distinct qualities and was it for practical purposes obvious to a skilled worker in the field concerned, in the state of Page 974 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the Invention the subject of the claim concerned?"
26. According to the respondent, the applicant should prove that the person skilled in the art knew each and every prior art, read every text book, and the prior art must be widely read, and even if it is in a patent text book it does not mean that it is known, and also that this person skilled in the art is working in India. Roche v.
Cipla, says one need not add further qualities and that one must "presuppose that the said person would have the knowledge and the skill In the sald field of art and will riot be unknown to a particular field of art and it is from that angle one has to see that if the said document which is prior patent if placed in the hands of the said person skilled in the art whether he will be able to work upon the same in the workshop and achleve the desired result leading to patent under challenge." Roche v. Cipla asks us not to import any further doctrinal approach by modifying or qualifying the test laid Page 975 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined down in Bishwanath Prasad Radhey Shyam v. H.M. Industries
- AIR 1989 SC 1444.
27. In view of this judgment, it is definitely not necessary or proper for us to dumb down the Person Skilled in the Art, nor make him so ignorant of anything that is happening elsewhere or presume he does not know even common text books unless proved otherwise. In fact this hypothetical person is presumed to know all the prior arts as on that date, even non-patent prior art in theory available to public. He has knowledge of the technical advancement as on that date, and the skill to perform experiments with the knowledge of state of the art. This is what Rocne v. Cipla also says
28. There is nothing in the Act which limits the person skilled in the art and defines him as possessing certain qualities. In fact the Delhi High Court frowns upon such a construction. The obviousness test is with reference to a person skilled in the art. That is all and not one who is residing in the country performing experiments with local materials and in the Page 976 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined laboratories specified. We may not do that in view of the Delhi High Court judgment, which says we cannot read into the definition words that are not there. An inventive step is what is "not obvious to a person skilled in the art"
(S.2(1)(ja) Patents Act.) It does not say to an Indian skilled in the art working in an Indian laboratory."
12.61 The contention of the defendants that the inventive steps of the plaintiffs is obvious to a person skilled in prior art is however not proved by any cogent evidence to consider the inferences and creative steps that a person of ordinary skill in the art would employ. It cannot be said that the apparatus of the plaintiffs shows the combination of elements was obvious to try, when there is a design need or market pressure to solve a problem and there are finite number of identified, practicable solution, a person Page 977 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of ordinary skill in the art has good reason to pursue the known option within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. However, in facts of the case, such approach is not possible to apply as the apparatus developed by plaintiff no.1 including the system or device to remove the gas bubbles from immersion material makes it novel and invention, as the elements used in the apparatus are not obvious to any person of ordinary skill and common sense would have imagined which is demonstrated by the plaintiffs at length while opposing this application for revocation. Page 978 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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3) Similarly reliance is placed on decision in case of Sankalp Rehabilitation Trust v. F. Hoffman - LA Roche AG & anr. reported in 2012 SCC Online IPAB 167, wherein similar view was taken and therefore, the said judgment would also not be helpful to the defendants.
4) Reliance was placed on the decision of Hon'ble Supreme Court of United States in case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd. et al. reported in 2002 SCC Online US SC 44 in respect to the rule of prosecution history estoppel in view of Patent Application No.876/2008 filed by the plaintiffs earlier. The Supreme Court of United States in facts of the said case, with regard to application Page 979 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of concept of prosecution history estoppel held as under:
"Though prosecution history estoppel can bar a patentee from challenging a wide range of alleged equivalents made or distributed by competitors, its reach requires an examination of the subject matter surrendered by the narrowing amendment. The complete bar avoids this inquiry by establishing a per se rule; but that approach is inconsistent with the purpose of applying the estoppel in the first place to hold the inventor to the representations made during the application process and to the inferences that may reasonably be drawn from the amendment. By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claim. It does not follow, however, that the amended claim becomes so perfect in its description that no one could devise an equivalent. After amendment, as before, language remains an imperfect fit for invention. The narrowing amendment may demonstrate what the claim is not; but it may still fail to capture precisely what the Page 980 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined claim is. There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered. Nor is there any call to foreclose claims of equivalence for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted. The amendment does not show that the inventor suddenly had more foresight in the drafting of claims than an inventor whose application was granted without amendments having been submitted. It shows only that he was familiar with the broader text and with the difference between the two. As a result, there is no more reason for holding the patentee to the literal terms of an amended claim than there is for abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of the patent.
This view of prosecution history estoppel is consistent with our precedents and respectful of the real practice before the PTO. While this Court has not weighed the merits of the complete bar against the flexible bar in its Page 981 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prior cases, we have consistently applied the doctrine in a flexible way, not a rigid one. We have considered what equivalents were surrendered during the prosecution of the patent, rather than imposing a complete bar that resorts to the very literalism the equivalents rule is designed to overcome. E. g., Goodyear Dental Vulcanite Co.,102 U. S., at 230; Hurlbut v. Schillinger, 130 U. S. 456, 465 (1889)."
It was further held that :
"Just as Warner-Jenkinson held that the patentee bears the burden of proving that an amendment was not made for a reason that would give rise to estoppel, we hold here that the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. This is the approach advocated by the United States, see Brief for United States as Amicus Curiae 22-28, and we regard it to be sound. The patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents. A Page 982 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.Exhibit Supply, 315 U. S., at 136-137 ("By the amendment [the patentee] recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference"). There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence. This presumption is not, then, just the complete bar by another name. Rather, it reflects the fact that the Page 983 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined interpretation of the patent must begin with its literal claims, and the prosecution history is relevant to construing those claims. When the patentee has chosen to narrow a claim, courts may presume the amended text was composed with awareness of this rule and that the territory surrendered is not an equivalent of the territory claimed. In those instances, however, the patentee still might rebut the presumption that estoppel bars a claim of equivalence. The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."
12.62 In light of the above principle, it is therefore, necessary to examine as to whether the plaintiffs have been able to show that at the time of amendment one skilled in the Art could not be reasonably be expected to have drafted a claim that would have literally encompassed the Page 984 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined alleged equivalent. On perusal of the amendment in the claim during the prosecution of the suit patent, it cannot be said that any one skilled in the art could be reasonably expected to have drafted a claim equivalent to the suit patent considering the components and elements used in the apparatus for reduction of presence within the immersion material of any substance which would have third refractive index so as to exactly find out the inclusions in rough gemstone in a single process. Therefore, decision of the Hon'ble Supreme Court of United States would not be applicable to the facts of the case.
5) Reliance was placed on the decision of Hon'ble Supreme Court in case of Novartis Page 985 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined AG v. Union of India (UOI) and others reported in (2013) 6 SCC 1 to submit that there was no invention as per section 3(d) of the Patent Act on the ground that invention of the suit patent results in enhancement with a new form of a known substance and mere use of a known process or the apparatus without resulting into new product. Relying upon the said judgment, it was contended that in the facts of the case no new apparatus which was not known earlier is invented by the plaintiffs. The Hon'ble Supreme Court in facts of the said case held as under:
"192.Section 2(1)(j) defines "invention" to mean, "a new product or ...", but the new product in chemicals and especially pharmaceuticals may not necessarily mean something altogether new or completely unfamiliar or strange or not existing before. It may mean something "different from a Page 986 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined recent previous" or "one regarded as better than what went before" or "in addition to another or others of the same kind"[53]. However, in case of chemicals and especially pharmaceuticals if the product for which patent protection is claimed is a new form of a known substance with known efficacy, then the subject product must pass, in addition to clauses (j) and (ja) of section 2(1), the test of enhanced efficacy as provided in section 3(d) read with its explanation.
193. Coming back to the case of the appellant, there is yet another angle to the matter. It is seen above that in the US the drug Gleevec came to the market in 2001. It is beyond doubt that what was marketed then was Imatinib Mesylate and not the subject product, Imatinib Mesylate in beta crystal form. It is also seen above that even while the appellant's application for grant of patent lay in the "mailbox" awaiting amendments in the law of patent in India, the appellant was granted Exclusive Marketing Rights on November 10, 2003, following which Gleevec was marketed in India as well. On its Page 987 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined package[54], the drug was described as "Imatinib Mesylate Tablets 100 mg" and it was further stated that "each film coated tablet contains: 100 mg Imatinib (as Mesylate)". On the package there is no reference at all to Imatinib Mesylate in beta crystalline form. What appears, therefore, is that what was sold as Gleevec was Imatinib Mesylate and not the subject product, the beta crystalline form of Imatinib Mesylate.
194. If that be so, then the case of the appellant appears in rather poor light and the claim for patent for beta crystalline form of Imatinib Mesylate would only appear as an attempt to obtain patent for Imatinib Mesylate, which would otherwise not be permissible in this country."
12.63 However, in facts of the case, test of invention and patentability as provided in clauses (j) and (ja) in section 2(1) of the Act are fulfilled for apparatus being a new product. Moreover, the said judgment pertains to pharmaceutical product Page 988 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and same would not be applicable in facts of the case.
6) Decision of Hon'ble Supreme Court in case of Astrazeneca AB and ors. v. Intas Pharmaceuticals Limited and others reported in MANU/DE/1939/2020 was relied upon to contend that the suit patent does not involve any inventive step and same is liable to be revoked under section 64(1)(f) of the Act. However, in facts of the case, Hon'ble Supreme Court observed as under:
"29. This brings me to the ground for revocation taken under Section 64(1)(f) i.e. that IN 625 is vulnerable as it does not involve any "inventive step". It is required to be noticed that the expression "inventive step" has been defined under Section 2(1)(ja) as follows.
"(ja) "inventive step" means a feature of an invention that Page 989 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;"
29.1. A plain reading of the definition would show that it has two parts to it and both are inextricably linked with the other. In other words, if a patentee is unable to measure up to the ingredients of either of the two parts, the invention claimed is not construed under the Act as an inventive step.
29.2. First part involves
patentee to show that the
invention claimed in any claim involves "technical advance" as compared to the existing knowledge or has "economic significance" or both. The second part of the definition alludes to the fact that the invention should not be obvious to the person skilled in the art."
12.64 Considering the above observations in the facts of the case, the plaintiffs Page 990 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined have shown that the invention claimed in independent claims involving technical advance as compared to existing knowledge and is also having economic significance and invention is not obvious to a person skilled in the art. All the ingredients of section 2(1)(ja) are applicable in the facts of the case to the suit patent and therefore, same cannot be revoked. C) Presence of Skill Art and Obviousness 12.65 The Suit Patent determines the location (position and size) of the inclusions (flaws) in gemstones through the apparatus and the method as claimed in claims 1 and 18 respectively. The Suit Patent apparatus with the method determines the flaws/inclusions present in the gemstone which tends to be missed (errored) Page 991 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in the prior arts like D1. The error is caused due to the high refractive index of gems which causes large refractions of incoming and outgoing light and total internal reflections resulting in multiple deflected images of the flaws and also due to the contamination/bubbles adhered to the surface of the gemstones. Besides, as mentioned here-in-above D1 does not disclose how the base of the diamond can be scanned while the same is covered by the plate on which the diamond is kept in D1. 12.66 Therefore, the Suit Patent determines the location (position and size) of the inclusions (flaws) in gemstones resulting to the largest flawless polished gems, and highest value polished gems and detect the flaws/inclusions which are not Page 992 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined contaminants/bubbles (as the detection of bubbles is the error which tends to consider as inclusions in the prior art). 12.67 These are achieved with the apparatus which have the features as discussed in novelty chart for points (a) to (i) and with the method of the Suit Patent.
12.68 The gemstone in the Suit Patent can be a rough irregular/uncut stone or polished stone. So the apparatus and method of the Suit Patent is able to determine the inclusions in both types of stones. In rough stones, the flaws are detected to determine the preferred dividing planes to cut accordingly, thus to yield the greatest Page 993 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined value. And in polished stones, flaws are identified to determine its value. 12.69 Determining the location through the imaging comprises obtaining a geometrical representation of the inclusions in the gemstone relative to the same coordinate system. These geometrical representations of the inclusions comprise color representation of the inclusions. A photo of the texture of the stone is taken in order to project a 3D model of the stone with the inclusions. Therefore, the suit patent cannot be said to have prior skill art or suffer from obviousness as tried to be canvassed by the defendants. This aspect is considered in the following decisions: Page 994 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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1) Reliance was placed on the decision in case of F. Hoffmann-La Roche Ltd. and others v. Cipla Ltd. reported in MANU/DE/3672/2015. The Delhi High Court has referred to decision in case of Pfizer Inc. v. Teva Pharmaceuticals reported in MANU/USFD/ 0081/2014 and observed as under:
"140. Before proceeding to test the issue of obviousness and lack of inventive steps on the facts of the present case, it would be appropriate to note the legal position. Sections 2(1)(j) and 2(1)(ja) Indian Patents Act define Invention' and Inventive step' as under:-
"2(1)(j) "invention" means a new product or process involving an inventive step and capable of industrial application;
2(1)(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that Page 995 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined makes the invention not obvious to a person skilled in the art;
141.Section 64 of the Patents Act, 1970 empowers the Appellate Board and the High Court to revoke a patent granted subject to other provisions in the Act for being obvious under Section 64(1)(f) which reads as under:-
"64(1)(f) That the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:"
142. From a bare reading of Section 64(1)(f) of the Patents Act,1970 it is evident that obviousness' and lack of inventive steps' have to be seen vis-a- vis facts publically known or publically used in India or published in India or elsewhere before the priority date. The priority date of US 498 and IN `774, the suit patent is March 30, 1995, and thus teachings prior thereto can only be seen. Both US 534 and US 766 are admittedly not prior arts and thus could not have been used to test obviousness.
143. Whether an invention involves novelty' and an inventive step' or Page 996 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is obvious' is a mixed question of law and fact, depending on the facts and circumstances of each case. Though no absolute or uniform formula can be laid down to ascertain obviousness however certain broad criteria have been laid down in the various decisions.
144. Obviousness has to be strictly and objectively judged. In the decision reported as(1979) 2 SCC 511 Bishwanath Prasad Vs. Hindustan Metal Industries(para 25) the Supreme Court laid down the principles to test inventive step' as under:-
25. Another test of whether a document is a publication which would negative existence of novelty or an "inventive step"
is suggested, as under:
"Had the document been
placed in the hands of a
competent draftsman (or
engineer as distinguished from a mere artisan), endowed with the common general knowledge at the priority date, who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, this gives me what I want? (Encyclopaedia Page 997 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Britannica; ibid). To put it in another form: Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?
[Halsbury, 3rd Edn., Vol.
29, p. 42 referred to by
Vimadalal, J. of Bombay
High Court in Farbwerke
Hoechst & B . Corporation
v. Unichem Laboratories
[AIR 1969 Bom 255 (Bom HC)] .]"
145. To test obviousness the first test required to be applied is to see who is an ordinary person skilled in art (POSA) and what are its characteristics. The features of a person skilled in the art are that of a person who practices in the field of endeavour, belongs to the same industry as the invention, possesses average knowledge and ability and is aware of what was common general knowledge at the relevant date.
146. The Supreme Court of United States in the decision reported as 383 U. S. 1(1966) William T. Graham et al. Vs. John Deere Company of Page 998 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Kansas City et al. analyzed the factual determination of the level of ordinary skill in the art which analysis was followed with approval in 218 U.S. P.Q. 865 Environmental Designs Ltd. Vs. Union Oil Company of California, 702 F.2d 1005Orthopedic Equipment Co. Inc. Vs. The United States, 864 F.2d 757Newell Companies, Inc. Vs. Kenney Manufacturing Company and 501 F.3d 1254Daiichi Sankyo Co., Ltd. Vs. Apotax, Inc. The decisions laid down the following principle factors, though not exhaustive, as under:-
"In determining the level of ordinary skill in the art, you should first determine whether there was a number of people who regularly worked to solve the type of problem that the invention solved, and, if so, determine the level of ordinary skill of such people at the time the invention was made. You must consider the level of skill as to the time the invention was made. Among the factors that may be considered in your determination are:
(1) The various ways that
others sought to solve the
problems existing;
(2) The types of problems
encountered;
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(3) The rapidity with which new inventions are made in this art; (4) The sophistication of the technology involved; and (5) The educational background of those actively working in the field."
147. The triple test of obviousness has been laid down by the U.S. Supreme Court in KSR International Co (supra) i.e. teaching, suggestion, or motivation. Noting that the analysis was objective, it was held:-
"Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc.,might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Id., at 17-18."
148. In Windsurfing International Inc (supra) the Court of Appeals noted the four steps to answer the Page 1000 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined question of obviousness which were followed in Pozzoli SPA (supra) as under:-
"(i) identifying the inventive concept embodied in the patent;
(ii) imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
(iii) identifying the differences if any between the matter cited and the alleged invention; and
(iv) deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention."
149. In Eisai Co., Ltd. (supra) the Board of Appeals of European Patent Office applying the problem solution approach which consists essentially in
(a) identifying the closest prior art, (b) assessing the technical results (or effects) achieved by the claimed invention when compared with the closest state of the art established, (c) defining the technical problem to be solved as the object of the invention to achieve these results, and (d) Page 1001 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined examining whether or not a skilled person starting from the closest prior art would arrive at something falling within claim by following the suggestion made in the prior art held that when deciding upon inventive step in relation to pharmacologically active compounds it is not essential whether a particular substructure of a compound could be replaced by another known isosteric one, but whether information was available on the impact of such a replacement on the pharmacological activity of the specific group of compounds concerned.
150. Expressing a note of caution, the Bombay High Court in F.H. & B. Corp. (supra) guarded the Courts of law against the common human failing of being wise after the event in regarding something that has been discovered by research as obvious. In Grain Processing (supra) the Court noted that care must be taken to avoid hindsight reconstruction by using the patent in suit as a guide through the MAZE of prior art references in the right way so as to achieve the result of the claims in suit. In Pfizer Inc. Vs. Teva Pharmaceuticals (supra) it was held that a patent challenger however must demonstrate the selection of a lead compound based on its promising useful properties, not a Page 1002 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined hindsight driven search for structurally similar compounds. Similar caution was advanced in Yamanouchi Pharmaceutical Co. Ltd. (supra) and Otsuka Pharmaceutical Co. Ltd.(supra).
151. From the decisions noted above to determine obviousness/lack of inventive steps the following inquires are required to be conducted:
Step No.1 To identify an ordinary person skilled in the art, Step No.2 To identify the inventive concept embodied in the patent, Step No.3 To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date.
Step No.4 To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications, Page 1003 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Step No.5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hide- side approach.
152. On the various tests as noted above, there is no dispute between Cipla and Roche however the dispute arises whether the teaching of prior art document should be considered as a whole, whether there should be no teachings away and whether evidence to try merely on structural similarity can form the basis for selection of lead compound in a prior art.
153. In Otsuka Pharmaceutical Co. Ltd. (supra) it was held -
"A patent is invalid if an alleged infringer proves, by clear and convincing evidence, that the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art."
154. In re: Dillon relied upon by learned counsel for Cipla, though the majority held that a prima facie case for obviousness of chemical composition is established Page 1004 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined if there is structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, and if prior art gives reason or motivation to make claimed composition however, the minority judgment noting various authorities held that Courts have expressed dissatisfaction on the earlier rule that structural obviousness' alone was deemed to create a presumption of unpatentability. The minority held that the weight of the authorities would show that structural similarity of the prior art compound cannot be the criteria alone and the prior art must prima facie suggest both similar structure and property before the burden shifts to the applicant to prove the unexpected differences. Even in 444.2d 581 re: John R. Slemniski the Court held that similarity of structure alone was insufficient for prima facie unpatentability. Thus to show obviousness besides structural similarity there should be a reason or motivation shown in the prior art to make the particular structural change in order to achieve the properties that the applicant was seeking.
155. In Pfizer Inc. Vs.Teva Pharmaceuticals(supra) the Court of Appeals with regard to obviousness inter alia held as under:-
Page 1005 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "The determination of obviousness is a legal conclusion based on underlying facts. Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290-91 (Fed.Cir. 2013). After a bench trial, we review the district court's factual findings for clear error and its conclusions of law de novo. Honeywell Int'l, Inc. v. United States, 609 F.3d 1292, 1297 (Fed.Cir.
2010). A patent claim is invalid for obviousness if "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. 35 U.S.C. § 103. The "underlying factual considerations in an obviousness analysis include the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the art, and any relevant secondary considerations[,]" which include "commercial success, long-felt but unsolved needs, failure of others, and unexpected results." Allergan, Page 1006 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 726 F.3d at 1290-91 (citations omitted). Patent invalidity must be established by clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2242 (2011).
Whether a new chemical compound would have been prima facie obvious over particular prior art compounds follows a two-
part inquiry under our
precedent. First, the
court determines whether a
chemist of ordinary skill in the art would have selected the asserted prior art compound as a lead compound, or starting point, for further development. Eisai Co. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353, 1359 (Fed.Cir. 2008). A lead compound is a compound in the prior art that would be "most promising to modify in order to improve upon its activity and obtain a compound with better activity." Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed.Cir. 2007). The selection analysis may be guided by evidence of the compound's pertinent properties, such as chemical activity or potency. See Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1378 (Fed.Cir. 2006). Mere Page 1007 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined structural similarity between a prior art compound and the claimed compound does not inform the lead compound selection. Otsuka Pharm. Co. v. Sandoz Inc., 678 F.3d 1280, 1292 (Fed.Cir. 2012); see Daichii Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1354 (Fed.Cir. 2010).
Proof of obviousness of a
chemical compound "clearly
depends on a preliminary
finding that one of ordinary skill in the art would have selected [a particular prior art compound] as a lead compound." Takeda, 492 F.3d at 1357. The second step of the obviousness analysis requires a showing that the prior art would have taught a skilled artisan to make "specific molecular modifications" to a lead compound so that the claimed compound may be made with a reasonable expectation of success. Id. at 1356-57."
(emphasis supplied)
156. In Eli Lilly And Company and Lilly Industries Ltd. (supra) the Court of Appeals held as under:-
".....As taught by Yamanouchi Pharm. Co. and other precedent, mere identification in the prior art of each component of a composition does not show Page 1008 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined that the combination as a whole lacks the necessary attributes for patentability, i.e. is obvious. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Rather, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention."
"Furthermore, Lilly overcame any prima facie case of obviousness. Among other things, Lilly proved extensive secondary considerations to rebut obviousness. The trial court found the evidence clearly established four of the five proffered secondary considerations. Findings of Fact and Conclusions of Law, 364 F.Supp.2d at 852-74, 905-
12. Lilly established (1) a long-felt and unmet need; (2) failure of others; (3) industry acclaim; and (4) unexpected results. Id. The record shows a long-felt need for a safer, less toxic, and more effective clozapine-like drug; a decade (or more) of failure to find a replacement for clozapine; a Page 1009 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined reasonable amount of commercial success for olanzapine; and a number of awards for olanzapine as indicators of industry acclaim. Id. at 852-53.
Specifically, the trial court noted a "long-felt but unsolved need for a safe atypical antipsychotic from 1975 until 1990," as well as extensive evidence supporting the other objective criteria.Id. at 832- 34, 906. The trial court also discussed the unexpected differences between the closest analog, Compound `222 and olanzapine, most of which focused on olanzapine not raising cholesterol levels in dogs, and a comparison of some humans tests with other similar drugs that raised CPK. Id. at 853-73. In sum, these objective criteria buttressed the trial court's conclusion of nonobviousness."
157. Thus though initially structural obviousness' alone was deemed to create a presumption of unpatentability however the Courts expressing dissatisfaction with the Rule opined that the properties were also material to show unpatentability of new chemical and must be considered. Thus prior art disclosure should not merely be structurally similar compound but also at least to some degree Page 1010 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined demonstrate the same desired property which is relied on for the patentability of the new compound.
In other words idea of new compounds is not separable from the properties that were sought by the inventor when making the compounds and structure and properties are essential compounds of the invention as a whole'. (See in re:
Dillon (supra)).
158. Thus obviousness is a question of law based on facts and the burden to prove is on the party which alleges however after the party which alleges makes out a prima facie case of invalidity on the ground of obviousness, the burden shifts on the inventor to disprove obviousness."
12.70 The above analysis of law on the obviousness and person skilled in art, considering the evidence of PW-6 and PW-9, expert witnesses of the plaintiffs, as discussed here in above, while recording the submissions of the plaintiffs, the plaintiffs have not been able to satisfy the test laid down and could not establish Page 1011 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined prima facie that the suit patent was obvious. Consequently, the action of the defendants seeking invalidity of the suit patent on the ground of obviousness fails.
2) In case of 3M Innovative Properties Ltd & anr. v. Venus Safety & Health Pvt Ltd & anr. (judgment dated 19th September, 2016 in FAO(OS) 292/2014), Delhi High Court followed the decision in case of Bishwanath Prasad Radhey Shyam (supra) and on comparison of the suit patent with that of Prior Art D1, it is apparent from the examination of description of the suit patent with the Prior Art D1 to D8 that the apparatus to which suit patent is granted is totally different than that of the Prior Art D1 to D8 which is apparent in terms of configuration and functionality. Page 1012 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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3) In case of Liberty Ammunition, Inc. v. United States reported in MANU/USFD/0250/2016 wherein the Court of Appeals for the Federal Circuit, has described as to how the claim construction is to be made in the suit patent as under:
"Claim construction seeks to ascribe the "ordinary and customary meaning" to claim terms as they would be understood to a person of ordinary skill in the art at the time of invention.Phillips v. AWH Corp.,415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582(Fed. Cir. 1996) ). "[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms,"id. at 1314, and therefore "the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms,"ACTV, Inc. v. Walt Disney Co., 346 F. 3d 1082, 1088 (Fed. Cir. 2003). But "the Page 1013 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification."Phillips, 415 F.3d at 1313. Indeed, the specification is "the single best guide to the meaning of a disputed term" and "[u]sually, it is dispositive."Id.at 1315 (quoting Vitronics,90 F.3d at 1582). Thus, claims "must be read in view of the specification, of which they are a part." Id. (quoting Markman v. Westview Instruments, Inc.,52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),aff'd,517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed 2d 577 (1996) ).
12.71 In facts of the case, claims are therefore, required to be read in view of specification of which they are part and the specifications are clear and unambiguous, not obvious to any person skilled in art resulting into novelty and inventive step.
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4) In case of Rembrandt Patent Innovations LLC Rembrandt Secure Computing LP v. Apple Inc reported in MANU/USFD/0482/2017, Court of Appeals for the Federal Circuit for claim construction held as under:
"1. Claim Construction The "ultimate issue of the proper construction of a claim"
is "a question of law." Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839 (2015). "[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." Id.
at 841. "[S]ubsidiary fact
finding in patent claim
construction" is reviewed for "clear error." Id. at 840.
"The process of construing a claim term begins with the Page 1015 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined words of the claims themselves." Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1316 (Fed. Cir. 2014). However, the claims "do not stand alone. Rather, they are part of 'a fully integrated written instrument,' consisting principally of a specification that concludes with the claims." Phillips v. AWH Corp., MANU/USFD/0250/2005 415 F.3d 1303, 1315 (Fed. Cir. 2005) (quoting Markman v. Westview Instruments, Inc., MANU/USFD/0015/1995:52 F.3d 967, 978 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996)). "For that reason, claims 'must be read in view of the specification, of which they are a part." Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979). Indeed, the specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."
Vitronics Corp. v.
Conceptronic, Inc.,
MANU/USFD/0085/1996: 90 F.3d
1576, 1582 (Fed. Cir. 1996).
In this case, the district court relied primarily on statements in the '678 Page 1016 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined patent's. specification when construing the claims and expressly declined to rely on testimony from Rembrandt's expert that contradicted the claims' meaning established by the intrinsic record. See J.A. 5-6. We agree with the district court that the intrinsic evidence clearly limits the scope of the '678 patent's invention to automatic recovery. We likewise agree with the district court's decision to disregard testimony from Rembrandt's expert that contradicts the claims' meaning established by the intrinsic evidence. Vitronics, 90 F.3d at 1583.
The asserted claims do not recite the word "automatic" or any variation thereof and do not appear to require automated recovery when read in isolation. However, as explained in Phillips, claims should be construed in conjunction with the specification. In Verizon Services Corp. v. Vonage Holdings Corp., MANU/USFD/ 0612/2007: 503 F.3d 1295, 1308 (Fed. Cir. 2007), we held that, when a patent "describes the features of the 'present invention' as a whole, this Page 1017 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined description limits the scope of the invention." The '678 patent repeatedly characterizes the recovery process of the "present invention" as being "automated.""
5) Decision in case of Hill v. Evans reported in 45. E.R. 1195(1862) before the Lord Chancellor Lord Westburry is relied upon with regard to whether the Prior Arts D1 to D8 to have any effect upon the suit patent or not, wherein it is held as under:
"1. The question of the identity of two specifications, for the purpose of deciding as to the novelty of an invention, is one of fact, to be left to the jury.
2. A specification of a patent does not differ from any other publication of an invention for the purpose of invalidating a subsequent patent for want of novelty.
3. A. prior publication, to have that effect, must be one from which a person with Page 1018 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ordinary knowledge would be able practically to apply the discovery without further experiment. If something remains to be ascertained there is room for a valid patent.
4. Publication of an invention in terms of mere generality or not true to their full extent will not invalidate a subsequent patent, the specification of which is limited and accurate and gives a specific rule of practical application.
5. Prior knowledge must, in order to avoid a patent for want of novelty, be knowledgo equal to that required to be given by a specification.
xxx I have therefore to consider, and to give my opinion upon, the question that has been argued, namely, whether there be or be not anything in these specifications which has rendered the Plaintiff's invention matter of public knowledge, and therefore matter of public property, anterior to the granting of the patent. I was extremely desirous to ascertain in the course of the Page 1019 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined argument whether any clear rule has been laid down on the subject of what shall be the nature of the antecedent publication which shall be held sufficient to anticipate and to vitate a subsequent patent on the ground of want of novelty.
I think it desirable to consider that first as a matter of proof, and then to consider what light can be derived upon that question from the cases that have been decided. With regard to the specification of a prior patent it is not to be distinguished in principle from any other publication. The only peculiarity attending the specification of a prior patent is this, that it must of necessity be considered as a publication. There has been some doubt with regard to books and documents under particular circumstances, whether they can be considered as amounting to a publication. With regard to a specification there can be no doubt, because the specification is that which the patentee gives to the public and makes a matter publici juris in return for the privilege which he receives.
But upon all principle a specification is not to be distinguished from any prior Page 1020 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined publication contained in a book published in the ordinary manner. The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. By the words of the statute of James, it is necessary for the validity of a patent that the invention should not have been known or used at the time. These words are held to mean "not publicly known or publicly used." What amounts to public knowledge or public user is still to be ascertained. One of the means of imparting knowledge to the public is the publication of a book, or the recording of a specification of a patent. If, therefore, in disproving that Page 1021 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined allegation which is involved in every patent, that the invention was not previously known, appeal be made to an antecedently published book or specification, the question is what is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patents? There is not, I think, any other general answer that can be given to this question that this: that the information as to the alleged invention given by the prior publication was for the purpose of practical utility, be equal to that given by the prior publication must for the purposes of practical utility be equal to that given by the subsequent patent. The invention must be shewn to have been before made known.
Whatever therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication."
6) In case of LML Limited v. Bajaj Auto Page 1022 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Limited reported in MANU/IC/0028/2013, the Intellectual Property Appellate Board, Chennai Circuit Bench at New Delhi in facts of the said case observed as under:
"33. If we compare the features of the claimed invention with the prior art cited by the applicant we find there is a mosaic of separate steps or the features known which could not be sufficient to constitute anticipation. The specific feature such as scooter with monocoque chassis with engine mounted at one side to which the claimed invention is applied, are not found in any of the cited document. None of the prior art documents taught all the features of the claimed invention applicable to the limitation of monocoque chassis with engine mounted at one side. None of the prior art suggests the improved intake system for two stroke engine of the kind claimed where reed valve is adopted and positioned between carburetor housing and the crankshaft. In the present case the applicant has made mosaic of citations by using mosaic of separate steps relating to use of reed valve Page 1023 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined to prove anticipation of the claimed invention. The applicant has not cited one single document which has all the claimed features of the Invention but has relied on different documents/ specifications put together in the form of mosaic of citations which is not sufficient to prove anticipation.
xxx
51. We do not agree with the applicant that the claimed invention is mere workshop modification and arrangement. We agree with the respondent that one cannot adopt known (or off the shelf) design/shape of reed valve and its mounting arrangement to any or all types of intake system.
52. In the Court of Session, inner House before Lord Rodger of Earlsferry, Lord President and two other Lordships, on February 6th 2001 in Buchanan Vs. Alba Diagnostics Ltd., it was held that, if the invention contained in a prior patent had been something which was made more useful or convenient by a subsequent patent, the latter was something which in ordinary language might be considered to Page 1024 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined be an improvement on the prior patent.
53. Thus we find that impugned patent is an inventive improvement over UK 857575 which made the invention in question more useful and efficient. The above analysis of all the documents relied on by the applicant clearly demonstrates that claimed invention is not obvious. This ground therefore also fails."
7) In case of Novertis AG v. The Controller General of Patents, Designs and Trade Marks and ors. reported in MANU/IC/0043/2020, wherein it is held as under:
"20. We will now look at the provisions of the tests applied for judging the novelty (anticipation).
20.1 The novelty should be judged on the available facts in the prior art and not on imaginary attributions therein.
20.2 Test of Novelty Page 1025 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined (anticipation) 20.3 The test of novelty as provided in the Manual Of Patent Office Practice and Procedures at its para 09.03.02 is as follows:
1. An invention is considered as new (novel), if it is not anticipated by prior publication in patent and non-
patent literature, i.e., an invention is novel if it has not been disclosed in the prior art, where the prior art means everything that has been published, presented or otherwise disclosed to the public before the date of filing/priority date of complete specification.
2. An invention is considered as novel, if it has not been anticipated by prior use or prior public knowledge in India.
3. For the purpose of determining novelty, an application for patent filed at the Indian Patent Office before the date of filing of complete specification of a later filed application, but published Page 1026 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined after the same, is considered for the purposes of prior claiming.
4. While ascertaining novelty, the Examiner takes into consideration, inter alia, the following documents:-
-which have been published before the date of filing of the application in any of the specifications filed in pursuance of application for patent in India on or after 1st January, 1912.
-such Indian Patent Applications which have been filed before the date of filing of complete specification and published on or after the date of filing of the complete specification, but claims the same subject matter.
5. The examiner shall make such investigation for purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in section 13(1) Page 1027 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined before date of filing of the applicant's complete specification.
6. A prior art is considered as anticipating novelty if all the features of the invention under examination are present in the cited prior art document.
7. The prior art should disclose the invention either in explicit or implicit manner.
Mosaicing of prior art documents is not allowed in determination of novelty.
8. A generic disclosure in the prior art may not necessarily takeaway the novelty of a specific disclosure. For instance, a metal spring may not take away the novelty of a copper spring.
9. A specific disclosure in the prior art takes away the novelty of a generic disclosure. For instance, a copper spring takes away the novelty of a metal spring.
10. In a case where a prior art is cited as an anticipation in the Examination Report, the Page 1028 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined onus of proving that the same is not to be an anticipation by reason of Section 29-34, lies on the applicant.
20.4 It is settled practice that in order to demonstrate lack of novelty, the anticipatory disclosure must be entirely contained within a single document15. If more than one document is cited, each must stand on its own. The cumulative effect of the disclosures cannot be taken into consideration nor can the lack of novelty be established by forming a mosaic of elements taken from several documents. This may be done only when arguing obviousness.
xxx
23. Conclusion:
23.1 We have thoroughly considered the facts on records, the submissions of both the parties, the evidence adduced by all the three experts, reviewed all the relevant case laws presented by the parties and reached the following conclusions:
23.2 The post-grant opposition was not maintainable ab initio Page 1029 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for lack of filing proper prescribed fee. The Controller should not have acted upon the post-grant opposition as the proper fee of ` 12000 was not paid by the opponent being a legal entity within the prescribed time period of filing the opposition. The fee remitted to patent office was only ` 2400- a fee applicable to natural person as evident by Form 30 filed on 08/11/2017.
How come an opponent having stature of legal entity, pay a fee applicable to natural person? The balance fee was remitted on 08/11/2017 after the statutory time period expired on 30/09/2017.
Therefore, the post-grant opposition itself was not maintainable and the office of the Learned Controller is expected to exercise due diligence in future. On this ground, we hold that the order passed by Controller on 16/08/2019, being an order on non-existent post-grant opposition, does not have merit to stand.
23.3 Secondly, we have thoroughly studied the complete specifications of both the cited patents in'653 and IN'560 and come to conclusion that Page 1030 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined there is no clear and unambiguous disclosure of all of the essential elements of the invention described and claimed in IN'026, in these prior arts by which the novelty of the instant patent will be destroyed. None of the prior art document describe or exemplify the structure and the compound as claimed and described in the subject patent IN '026. But for the "hindsight analysis", it was not possible to arrive near to the structure of the instant patent. The "hindsight analysis" is not allowable under "inventive step" determination let alone "novelty" consideration. 23.4 Further, the Learned Controller took help of two cited prior arts to attack "novelty' of the subject patent by picking suitable equivalent substitutions, keeping inventive structure of the subject patent IN'026 in sight. As discussed in para 20.3 and 20.4 above, it is settled practice that in order to demonstrate lack of novelty, the anticipatory disclosure must be entirely contained within a single document. If more than one document is cited, each must stand on its Page 1031 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined own. This is not the case here, as the Controller is comparing some claims from first prior art IN'653 and one claim with IN'560. The Formula 2 of IN'026 is never exemplified either in the description or claims of both these prior arts IN'653 or IN'560. All compounds exemplified in IN'653 or IN'560 wherein piperidinyl or pyrrolidinyl is linked to phenyl ring either through the hetero atom which is Nitrogen atom or through oxygen linker.
These prior arts do not disclose to link pyrrolidinyl, piperidinyl or azetidinyl with the phenyl ring with a C-C atom. Therefore, the cumulative effect of unclear and ambiguous prior arts disclosures cannot be taken into consideration for destruction of "novelty". 23.5 Further, as per General Tire & Rubber Co19 "To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise Page 1032 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined destination before the patentee." Again the cited prior arts do not describe and exemplify the structure and the product of the subject patent IN'026 and hence cannot be held as "anticipating" the subject patent IN'026.
23.6 The Learned Controller ought to have considered the view of the members of the opposition board who were of the opinion that "the present opposition may be dismissed and the current patent may be allowed to stand." As both the sub-groups involved in "novelty" search of the invention i.e. "examination and grant" and the "opposition board" have considered the invention to be "novel" based on the same cited prior arts (IN'653 and IN'560) and no additional prior art was relied upon by the Learned Controller during post - grant opposition other than these two, the views of members of opposition board appears very crucial. If at all the Learned Controller was to defer from the opinion of the opposition Board, the point of disagreement should have been annotated in the order, which is not present in the order of the Learned Controller dated Page 1033 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 16/08/2019.
23.7 It is evident that the other grounds such as "lack of inventive step', objection under section 3(d) and that related to "insufficiency of disclosures" were also decided without proper reasoning."
8) In case of Tata Global Beverage Limited v. Hindustan Unilever Limited (judgment dated 18th October, 2012 in M.P. No.24,28 & 29 of 2012 in TRA/1/2007/PT/MUM and TRA/1/2007/PT/MUM), wherein it is held as under:
"49. The counsel for the respondent contended that from the aforesaid authorities, it is evident that various authorities has defined the ingredients of anticipation in different words but all leading to the same conclusion. The authorities above go to laydown:
• A claimed subject-matter would lack novelty only if it Page 1034 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined were derivable as a whole directly and unambiguously from a prior art disclosure and if a "clear and unmistakable teaching" of the combination of all claimed features (and not only the essential ones) could be found in said disclosure.
• The earlier publication should disclose the same device as the device which the patentee by his claim asserts so as to be anticipated, but not otherwise.
• To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented.
• A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee.
• A challenge to validity based on anticipation requires the court to address two concepts, namely, prior disclosure and enablement.Page 1035 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined • A party seeking revocation of a patent on the ground that it has been anticipated by the prior art has to satisfy the court on two points, namely, whether the prior art disclosed the invention which had been patented ('disclosure') and whether the ordinary skilled man would be able to perform the disclosed invention if he attempted to do so using the disclosed matter and common general knowledge ('enablement') The petitioner has failed to satisfy any of the conditions of lack of novelty as laid down by various authorities and therefore the ground of lack of novelty clearly fails.
50. The case of the applicant is resting on the basic premise that de-creams and cream fraction is same. Since we have already stated in para ante that de-cream and cream fraction is not same. We have no hesitation to hold that the claimed invention is not anticipated by the prior art citations D1, D4-D7, D9 as all these citations disclose and are related to oxidation of the cream fraction only. Therefore Page 1036 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the case of the applicant falls on anticipation.
xxx
85. If we see Expert's evidence of the applicant we find it merely did ex post facto analysis of the impugned method which at best can be said to be an attempt to equate the oxidative solubilization of tea cream to make it soluble with the oxidation of the supernatant already containing cold water soluble solids which is not relevant for ascertaining the inventive step. It is obvious for an expert to draw such conclusion once the invention is known. In view of above analysis we find the method claimed in impugned patent is novel and inventive.
86. We cannot agree with applicant's contention that the cream and the decreamed portion are same and hence follow the same chemistry. The invention as claimed in the alleged patent is for oxidation of the decreamed fraction at acidic pH [preferred 3.7]. We do agree with the applicant on two counts. Firstly the starting material is new (decreamed fraction). Secondly the oxidation of this fraction does Page 1037 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined not lead to excessive darkening as it happens when the cream portion is oxidized. The product of oxidation of decreamed fraction does not require the additional bleaching step. We therefore find that the invention as claimed is non-obvious and involve inventive step."
9) In case of Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and ors. reported in MANU/MH/0064/1969, for want of novelty wherein it is held as under:
"15. That brings me to the next ground of alleged invalidity of the plaintiffs' patent viz. want of novelty. The test of novelty as formulated by Halsbury, (3rd edn.) Vol. 29 p. 27 para 58) is in the following terms: "To anticipate a patent, a prior publication or activity must contain the whole of the invention impugned; i.e., all the features by which the particular claim attacked is limited. In other words, the anticipation must be such as to describe, or be an infringement Page 1038 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the claim attacked." The starting materials for the purpose of claim No. 11 were the thioureas corresponding to the ureas invented and claim No. 11 itself states in specific terms that the radicals R and R. 1 in the formula of the thioureas set out therein must have the meanings given to them in claim No. 1. That would mean that the radical R must be limited in regard to the number of Carbon atoms in the matter stated in claim No. 1. Dr. Aumuller was asked in examination-in-chief a question as to why the radicals R and R. 1 in the specification (Ex. A) are limited in the manner therein stated, and his answer was "because only such products had been taken into the patent which lower the blood-sugar", or in other words for obtaining a hypoglycemic effect particular radicals were selected by a process of testing on animals. It would follow that if the Carbon atoms in R. or R. 1 were more or less than the number specified in claim No. 1 hypoglycemic property would not be obtained, and that has been stated explicitly by Dr. Bander in the course of his examination-in- chief. The evidence on record Page 1039 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined shows that it was known that amino-sulphonamides had anti- diabetic properties. Many sulphoylureas were also known, but they were all with the wrong radicals at either end and it was not known that they could have anti-diabetic properties if they were activated by certain radicals. That was the prior art and, in that state of knowledge, it was not possible for a skilled chemist to predict that the combining of the two starting materials mentioned in the plaintiffs' patent would produce compounds which would have hypoglycemic properties. The idea which is new in the plaintiffs' patent is the discovery that a useful anti- diabetic preparation could be obtained by constructing a molecule with a sulphonylurea in the middle and carefully planned lumps of radicals at either end. The novelty in the plaintiffs' patent lies entirely in the R and R. 1/ What is new in the plaintiffs' patent is that it was discovered that it was possible to have the desired anti- diabetic properties, without producing undesirable toxic or anti-bacterial effects of known sulphonamides like I. P. T. D., Page 1040 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined by modifying the structure of the sulphonylurea in a particular way. The way in which that new idea was sought to be applied was (1) to select proper material having certain characteristics; (2) to react them together and (3) to obtain the product, directly or indirectly. I therefore hold that the objection to the validity of the plaintiffs' patent on the ground of want of novelty must stand rejected."
12.72 From the above conspectus of law and as per the facts of the case, the apparatus invented by the plaintiffs does not suffer from any prior skill art or obviousness as the comparison of the claimed invention with the prior arts cited by the defendants, there is no prior skill art or obviousness in existence considering the specific features of claim invention apparatus by the plaintiffs which are not found in any of the prior arts. None of the prior arts document taught all Page 1041 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the features of the claim invention of apparatus which takes measures for reducing presence within its immersion material of any substance other than inclusion having a third refractive index, said measures including withdrawal of gas bubbles from said material and determining the position of inclusions in gemstone in all three coordinates by illuminating and imaging the entire gemstone.
D) Technical advancement as compared to existing knowledge and having economic significance:
12.73 The Suit Patent determines the location (position and size) of the inclusions (flaws) in gemstones with the better effectiveness of value to cost such Page 1042 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined as value less cost, or value per cost ratio.
12.74 The value of the potential polished gems is responsive to the cost of producing the gems. As the cost of producing the gemstone reduces, thus the value of the gems increased.
12.75 The following features of the Suit Patent is inventive over prior art D2 alone or in combination with other prior arts D3-
D8 D2-WO2005116617 a. Gemstone- TO DETECT THE INCLUSIONS IN GEMSTONE The invention disclosed in the Suit Patent is for detection of inclusions Page 1043 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in the gemstone. On the contrary, D2 is not in relation to gemstones in any manner and not even provide any hint to detect inclusions in the gemstone. D2 is related to detecting inclusions in internally transmissive substrates such as glass and plastics. Thus, the Suit Patent with all the features is inventive over D2. b. Container-A CONTAINER IS SEALED AND ADAPTED FOR CONTAINING A MATERIAL HAVING A SECOND REFRACTIVE INDEX;
The Container is sealed and is specially adapted to contain the immersion medium which is used in the subject patent. The container has an opening/provision for allowing pressure of inert gas and/or vacuum. Further, immersion medium is heated Page 1044 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined through the heaters surrounded in the container. On the contrary, D2 does not provide details on the container sealing and is specific with the container having black walls. D2 also include a window in the container to illuminate the substrate as the whole container except the window part is black coated. It does not contemplate a container which can be adaptive for heating the immersion medium (Selenium) and which prevents the contamination of air or gas bubbles. Thus, the Suit Patent is inventive over D2. Moreover, none of the prior arts disclose such a container for carrying out the invention disclosed in the Suit Patent. Page 1045 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined c. Holder-A HOLDER OPERATIVE TO CLAMP A GEMSTONE IN A WAY TO ILLUMINATE THE WHOLE GEMSTONE The holder disclosed in the Suit Patent is adapted to clamp the gemstone with two points and makes it capable to illuminate the whole gemstone. D2's apparatus does not contain a holder and therefore, this aspect is not only incomparable but is also absent in D2. Thus, the holder disclosed in the Suit Patent does not need to be tested for inventive step in relation to any other prior art, as none of the prior arts disclose a holder with minimum interference as disclosed in the Suit Patent. Page 1046 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined d. Illuminator- AN ILLUMINATOR POSITIONED AND ADAPTED TO ILLUMINATE THE GEMSTONE WHEN THE GEMSTONE IS IN THE IMMERSION MATERIAL The Suit Patent discloses an illuminator which is positioned and adapted to illuminate the whole gemstone when it is immersed in the immersion material. The Suit Patent also states that the diamond is imaged with infrared or near-infrared light and the illumination is in near-infrared and has a wavelength between 0.8 and 2 microns. D2 does not disclose about the infrared or near-infrared light, in particular D2 mentions the use of green laser of 532nm. Further, the light passes to the substrate is through the window of the container in D2 as the whole container Page 1047 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined except the window part is black coated. Thus, the Suit Patent is inventive over D2. e. Detector- A DETECTOR THAT DETECTS ILLUMINATION FROM THE ILLUMINATED GEMSTONE, AND PRODUCES SIGNALS IN RESPONSE TO THE ILLUMINATION The Suit Patent discloses a detector which can be a high-resolution commercial camera or a digital camera, for e.g., a camera with 1280 x 1024 pixels or more. In D2, the detection of the inclusion can be seen through the naked eyes or through the detector. In D2, to detect the inclusions through the naked eye, green laser of 532nm is used and the scattering of the light (irregular reflection) is seen from the perpendicular position of the substrate. Page 1048 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined So, the detector in D2 is not positioned in the same manner as the detector/camera in the Suit Patent or which is adapted to detect the infra red or near infra red light as the detector/high resolution camera detects in the Suit Patent. Thus, the detector used in the invention and manner of its position as disclosed in the Suit Patent is inventive in comparison with D2.
f. Immersion medium- A MATERIAL HAVING A SECOND REFRACTIVE INDEX The immersion medium used in the Suit Patent belongs to the Chalcogenide group of elements. The Suit Patent further discloses that preferably the immersion material can be elemental Selenium (Selenium in its Page 1049 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined natural form, which is solid pellet form). The Suit Patent also provides that the said immersion material is also adapted to be used in the invention disclosed in the Suit Patent and for this purpose the immersion material is heated so it become liquid. It is also stated in the Suit Patent that the immersion material can be sensitive to foreign substances present in the air, as when Selenium is exposed to air it combines with air to produce Selenium Dioxide which can optically affect the properties of Selenium. On the Contrary, D2 discloses a fluid to be used is a non-toxic oil having low volatility and this fluid is stable when exposed to the air. Therefore, any comparison of the immersion medium disclosed in the Suit Patent with the immersion medium disclosed in D2 is Page 1050 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined misplaced. Thus, the immersion material disclosed in the Suit Patent is inventive over D2.
g. Controller- A CONTROLLER THAT RECEIVES SIGNALS AND IS OPERATIVE TO DETERMINE A LOCATION OF AN INCLUSION IN THE GEMSTONE BASED ON THE SIGNALS The controller disclosed in the Suit Patent embodies a method to determine the value of a gemstone with respect to its potential to produce polished gems responsive to the position and size of a flaw and internal stresses of the gemstone. In D2 however, the signal analyser is disclosed to be used as a controller and it can also be a human operator. Thus, in so far as the controller is concerned, it is an inventive feature of Page 1051 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the apparatus in comparison with prior art D2.
h. A system- A SYSTEM TO REDUCE THE PRESENCE WITHIN SAID MATERIAL OF ANY SUBSTANCES OTHER THAN INCLUSIONS A system operative to reduce the presence within said material of any substance other than inclusions, having a third refractive index and a system including a device for withdrawal of gas bubbles from said material. This includes a combination of the steps such as cleaning the gemstone before inserting it inside the container, using the sealable container, introducing an inert gas through the container, maintain the inert gas atmospheric pressure in the sealable container, slow heating of Page 1052 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined the material in the container, applying a vacuum to the container, inserting the diamond into the container at a slower pace, and heating the gemstone while inserting into the container containing immersion medium. D2 does not provide any details in relation to any step to be performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the Suit Patent for carrying out the invention disclosed therein. Therefore, the Suit Patent is inventive over D2 alone or in combination of any other prior art. 12.76 The features/elements of independent claim 1 of the Suit Patent i.e. Page 1053 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined container, holder, illuminator, detector, immersion medium, controller, and a system operative to reduce the presence within said material of any substance other than inclusions are either absent in D2 or are different. All the elements of the Suit Patent (independent claims 1 and 18) have features that are not present in D2 and lead to the technical advancement and economic significance and thus, the Suit Patent is also inventive (non-obvious) over the prior art D2. D2 fails to determine the location (position and size) of the inclusions (flaws) in gemstones resultant to get the largest flawless polished gems, and highest value polished gems, and to detect the flaws/inclusions which are not contaminants/bubbles.
Page 1054 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Further, D2 is combined with D3 for the immersion medium:
12.77 D2 is combined with D3 for the immersion medium, however D3 does not disclose the use of the Chalcogenide group of elements or in particular selenium which is opaque and highly colored to be used as an immersion medium for the detection of inclusions in the gemstone. D3 does not mention anywhere if any of the compounds can be used conveniently in the gemstone industry. In fact, even with the combination of other prior arts, it does not motivate to use the selenium as an immersion medium due to its properties.
Therefore, even the combination of D2 with D3 does not lead to lack of inventive step of the Suit Patent.
Page 1055 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined D2 along with D3 is combined with D4 or D5 for the removal of gas bubbles:
12.78 D4 does not provide any details in relation to any step to be performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the Suit Patent for carrying out the invention disclosed therein. Therefore, the Suit Patent is inventive over D4 alone or in combination of any other prior art.
12.79 D4 is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as Page 1056 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined disclosed in the Suit Patent. D4 contemplates a different purpose for degassing wherein in the process, higher pressure is achieved by gasification and thermal expansion of argon whereafter, there is a need of degassing in order to achieve the highest purity of selenium crystals. Therefore, even the combination of D2 and D3 with D4 does not lead to lack of inventive step of the Suit Patent.
12.80 D5 also does not provide any details in relation to any step to be performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the Suit Patent for carrying out the invention Page 1057 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined disclosed therein. D5 is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as disclosed in the Suit Patent. D5 contemplates the kinetics of the overall process of crystallization of bulk a-Se Specimens under different isobaric-
isothermal conditions over the pressure P and temperature T ranges 0.28-0.69 Gpa and 382-409K, respectively. D5 also does not disclose how to remove the bubbles from the immersion medium such as molten selenium. Therefore, even the combination of D2 and D3 with D5 does not lead to lack of inventive step of the Suit Patent. D2 in view of D6 for the removal of gas bubbles:
12.81 D6 also does not provide any details in relation to any step to be Page 1058 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the Suit Patent for carrying out the invention disclosed therein. Therefore, the Suit Patent is inventive over D6 alone or in combination of any other prior art.
12.82 D6 is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as disclosed in the Suit Patent. D6 contemplates the removal of bubbles stuck to the interlayer-insulating films [i.e., a transparent film made of silicon dioxide (semiconductor wafer)] or from the objective lens of the apparatus with a Page 1059 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined different purpose of inspecting the defects is to improve the images by reducing/correcting the unevenness between films of the semiconductor wafers.
Therefore, even the combination of D2 with D6 does not lead to lack of inventive step of the Suit Patent.
D2 in view of D7 for the removal of gas bubbles:
12.83 D7 does not provide any details in relation to any step to be performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the Suit Page 1060 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Patent for carrying out the invention disclosed therein.
12.84 D7 is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as disclosed in the Suit Patent. D7 contemplates a method wherein the immersion medium fills the space between the photoresist on the wafer (part of the wafer) and the lens/optics in the imaging subsystem and in such a method, the removal of bubbles results in the creation of more bubbles, i.e., breaking large bubbles into smaller bubbles. Thus, defeating the purpose of the system for removal of any substance other than inclusions, as explained in the Suit Patent. Therefore, even the combination of D2 with D7 does not Page 1061 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined lead to lack of inventive step of the Suit Patent.
Claims 8, 9, 10, 22 and 23 of Suit Patent does not lack inventive step over D2 with D3 and with D4 or D5 and D8 for the removal of gas bubbles:
12.85 D8 does not provide any details in relation to any step to be performed as disclosed in the Suit Patent to reduce presence within said material of any substance other than inclusions and there is no other prior art which uses a system such as the one disclosed in the dependent claims 8, 9, 10, 22 and 23 of the Suit Patent for carrying out the invention disclosed therein.Page 1062 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.86 D8 is not teaching about removal of gas bubbles and/or contaminants from an immersion medium in the same manner as disclosed in the Suit Patent. D8 contemplates a process of fining glass melts using helium bubbles in the immersion medium. D8 does not teach detection of inclusions from the gemstone or removing the bubbles from the immersion medium. Therefore, even the combination of D2 with D3 and D8 does not lead to lack of inventive step of the Suit Patent. 12.87 Therefore, considering the above analysis of the suit patent with that of the Prior Art D1 to D8, reliance placed by the defendants on following decision with respect to concept of inherent property/characteristic/ inherent function Page 1063 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined would not be applicable in the facts of the case:
1) Reliance was placed in case of Atlas Powder Company v. Ireco Incorporated (decision dated September 7, 1999 reported in 190 F 3d 1342 (Fed. Cir.
1999). The aforesaid decision of United States Court of Appeals, Federal Circuit is relied upon by the defendants in support of the contention that in patent application a prior reference normally needs to disclose each and every limitation of the claim and because sufficient aeration was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect. It was observed as under:Page 1064 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined "To invalidate a patent by anticipation, a prior art reference normally needs to disclose each and every limitation of the claim. See Standard Havens Prods., Inc. v. Gencor Indus., Inc., 1953 F.2d 1360, 1369, 21 USPQ2d 1321 1328 (Fed. Cir. 1991). However, a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it.See id.; Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,814 F.2d 628, 630, 2 USPQ2d 1051, 1052 (Fed.
Cir. 1987). Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. See In re King,801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art.See Titanium Metals,778 F.2d at
780. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. See id.at
782. However, the discovery of a previously unappreciated property of a prior art Page 1065 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer.
xxx Because "sufficient aeration"
was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of Dr. Clay's alleged invention -- that air may act as the sole sensitizer of the explosive composition. An inherent structure, composition, or function is not necessarily known.See, e.g.,In re King,801 F.2d at 1327 ;Titanium Metals,778 F.2d at
782. Once it is recognized that interstitial and porous air were inherent elements of the prior art compositions, the assertion that air may act as a sole sensitizer amounts to no more than a claim to the discovery of an inherent property of the prior art, not the addition of a novel element. Insufficient prior understanding of the inherent properties of a known composition does not defeat a finding of anticipation."Page 1066 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined 12.88 However in facts of the case, Prior Arts relied upon by the defendants does not possess inventive steps in the system for reduction of presence within immersion material of any substance which would have a third refractive index as well as method to identify the inclusion in rough gemstone in a single process.
2) Reliance was placed on decision in case of EMI Group North America, INC v. Cypress Semiconductor Corporation (decision dated September 21, 2001 in 00-1508) of United States Court of Appeals for the Federal Circuit with regard to anticipated obvious claim with only difference of removal of gas bubbles from the immersion material than that of the Prior Art is inherent Page 1067 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined in Prior Art device, whereas in facts of the said case there was anticipated or obvious of vapor-induced mechanism, because the claim vapor-induced explosion mechanism which is the only difference between the asserted claims and prior art, whether the same was inherent in prior art or not, it was held as under:
"[T]he discovery of a
previously unappreciated
property of a prior art
composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed.Cir.1999); see also Parker v. Flook, 437 U.S. 584, 594, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) ("[D]iscovery of ․ a [natural] phenomenon cannot support a patent unless there is some other inventive concept in its application."). "The public Page 1068 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined remains free to make, use, or sell prior art compositions or processes, regardless of whether or not they understand their complete makeup or the underlying scientific principles which allow them to operate." Atlas Powder, 190 F.3d at 1348. The vapor-
induced explosion mechanism recited in the claims at issue is a scientific explanation for the process of blowing the claimed fuse structure of the ′801 and ′785 patents. Thus, to support the verdict that the claimed theoretical explanation is inherent in the prior art, the record must show prior art references that disclose the claimed fuse structure.
xxx
A hypothetical example
clarifies this principle. Humans lit fires for thousands of years before realizing that oxygen is necessary to create and maintain a flame. The first person to discover the necessity of oxygen certainly could not have obtained a valid patent claim for "a method of making a fire by lighting a flame in the presence of oxygen." Even if prior art on lighting fires did not disclose the importance of oxygen and Page 1069 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined one of ordinary skill in the art did not know about the importance of oxygen, understanding this law of nature would not give the discoverer a right to exclude others from practicing the prior art of making fires." 12.89 However, in facts of the case, system or device used by the plaintiffs for removal of gas bubbles cannot be said to be inherent in prior art as tried to be canvassed by the defendants which is a novel and inventive step for granting the suit patent.
3) Reliance was placed on the decision in case of Schering Corporation v. Geneva Pharmaceuticals Inc and Novartis Corporation (decision dated August 1, 2003 in 02-1540) of United States Court of Appeals for Federal Circuit Page 1070 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined for applying inherency principle, wherein it was held as under:
"This court recognizes that this may be a case of first impression, because the prior art supplies no express description of any part of the claimed subject matter. The prior art '233 patent does not disclose any compound that is identifiable as DCL. In this court's prior inherency cases, a single prior art reference generally contained an incomplete description of the anticipatory subject matter, i.e., a partial description missing certain aspects. Inherency supplied the missing aspect of the description. Upon proof that the missing description is inherent in the prior art, that single prior art reference placed the claimed subject matter in the public domain. This case does not present the issue of a missing feature of the claimed invention. Rather, the new structure in this case, DCL, is not described by the prior '233 patent. Patent law nonetheless establishes that a prior art reference which expressly or inherently contains each and Page 1071 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined every limitation of the claimed subject matter anticipates and invalidates. See, e.g., EMI Group N. Am., Inc., v. Cypress Semiconductor Corp., 268 F.3d 1342, 1350 (Fed. Cir. 2001) ("A prior art reference anticipates a patent claim if the reference discloses, either expressly or inherently, all of the limitations of the claim."); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) ("A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."). In these prior cases, however, inherency was only necessary to supply a single missing limitation that was not expressly disclosed in the prior art. This case, as explained before, asks this court to find anticipation when the entire structure of the claimed subject matter is inherent in the prior art. Because inherency places subject matter in the public domain as well as an express disclosure, the inherent disclosure of the entire claimed subject matter anticipates as well as inherent disclosure of a single feature Page 1072 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the claimed subject matter. The extent of the inherent disclosure does not limit its anticipatory effect. In general, a limitation or the entire invention is inherent and in the public domain if it is the "natural result flowing from" the explicit disclosure of the prior art. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001); see also In re Kratz, 592 F.2d 1169, 1174 (CCPA 1979) (suggesting inherent anticipation of a compound even though the compound's existence was not known). In reaching this conclusion, this court is aware of In re Seaborg, 328 F.2d 996 (CCPA 1964). In that case, this court's predecessor considered claims drawn to an isotope of americium made by nuclear reaction in light of a prior art patent disclosing a similar nuclear reaction process but with no disclosure of the claimed isotope. The court reversed a United States Patent and Trademark Office rejection of the claims for lack of novelty. This court's predecessor found that the prior art process did not anticipate the claims because the process would have produced at most one billionth of a gram Page 1073 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of the isotope in forty tons of radioactive material, i.e., the isotope would have been undetectable. Id. at 998-99 ("[T]he claimed product, if it was produced in the Fermi process, was produced in such minuscule amounts and under such conditions that its presence was undetectable."). In this case, DCL forms in readily detectable amounts as shown by the extensive record evidence of testing done on humans to verify the formation of DCL upon ingestion of loratadine. This court sees no reason to modify the general rule for inherent anticipation in a case where inherency supplies the entire anticipatory subject matter. The patent law principle "that which would literally infringe if later in time anticipates if earlier," BristolMyers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001), bolsters this
conclusion. Similarly, "if
granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated." Atlas Powder, 190 F.3d at 1346. "The public remains free to make, use, or Page 1074 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined sell prior art compositions or processes, regardless of whether or not they understand their complete makeup or the underlying scientific principles which allow them to operate. The doctrine of anticipation by inherency, among other doctrines, enforces that basic principle." Id. at 1348. Thus, inherency operates to anticipate entire inventions as well as single limitations within an invention."
12.90 Considering the above enumerated inherency principle, same would not be applicable in facts of the case as Prior Arts D1 to D8 does not have any inherent anticipation in a case where inherency supplies the entire anticipatory subject matter as the doctrine of anticipation of inherency, among other doctrines enforces the basic principle, as inherency operates to anticipate entire Page 1075 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined invention as well as single limitation within an invention. Therefore, the suit patent cannot be said to infringe the Prior Art as it is having novel and inventive step as stated here in above and there is no anticipation of claims made by the suit patent by Prior Art.
4) Decision of the Intellectual Property Appellate Board, Chennai in case of Enercon (India) Limited v.
Aloys Wobben reported in
MANU/IC/0009/2013, wherein the IPAB
held as under:
"57. A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention. The prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent in the single Page 1076 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined anticipating prior art. In 339 F. 3d 1373 SCHERING CORPORATION, V. GENEVA PHARMACEUTICALS, INC and others the Court rejected the contention that "inherent anticipation requires recognition in the prior art".
It also held that it is not necessary that inherent anticipation requires that a person of ordinary skill in the art at the time would have recognized the inherent disclosure. But it is necessary that the result is a necessary consequence of what was deliberately intended in the invention."
12.91 Relying upon the above findings, it was the contention of the defendants that suit patent is hit by inherent anticipation which requires that a person of ordinary skill in art at the time would have recognized inherent disclosure. However, such a contention is not tenable as the suit patent is having novel and inventive steps which was not present in prior arts Page 1077 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined and there cannot be any anticipation as not a single prior art reference discloses each and every limitation of the claim invention and there is no inherent anticipation in the prior art for removal of gas bubbles from immersion material as invented in the apparatus of the plaintiffs. Therefore, invention lies only in apparatus using the system or device provided in suit patent for reduction of presence within the immersion material of any substance including the gas bubbles which would have a third refractive index which is novel to the prior art.
12.92 Reliance was also placed on the following decisions:
1) Decision of Intellectual Property Appellate Board, Chennai in case of Enercon Page 1078 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined India Ltd. v. Aloys Wobben reported in MANU/IC/0096/2010 was relied upon by the defendants to submit that complete specification will have one inventive step for making them to be having group of inventive features to have a single inventive concept as per the provisions of the Act. It was submitted by the defendants that as inventive steps in claim no.1 has been shown to be obvious and all the subsidiary claims dependent on particular principal claim which tends to add only minor variations of features, will not impart any inventive steps to the dependent claims. However, in facts of the case, the contention is based on the assumption that inventive step in claim no.1 is obvious by use of vacuum pump and it would be obvious to have a person skilled in art having Page 1079 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined regard to the state of art at the priority date. In such circumstances, IPAB has observed as under:
"51. Buckley LJ in Valensi v. British Radio Corporation 1973 RPC 337, held that, "The hypothetical addressee is not a person of exceptional skill and knowledge, and he is not to be expected to exercisa any invention nor any prolonged research, enquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found and arrive at the result..."
52. A patent will be invalid for lack of inventive step if the invention claimed in it was obvious to a person skilled in the art having regard to the state of the art at the priority date. Our attention was invited to the decision of the Court of Appeal of United Kingdom In 1985 RPC 55 Wind Page 1080 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Surfing International Iric. v. Tabur Marine Great Britain Limited, where it was pointed out that the question of obviousness Involves analysis of the following four steps, and a detailed and correct approach to the issue of obviousness has recently been restated by the Court of Appeal in Pozzoli v. BDMO SA2007 EWCA 588 2007 FSR 37. It was also pointed out that the above approach to obviousness was also restated by the High Court of Justice, Chancery Division, Patent Courts in2007 EWHC 2636 (Pat) between Mr. Aloys Wobben and Vestas Celtic Wind Technology Ltd., where it was pointed out that the question of obviousness involves analysis of the following four steps:
53. The following four steps are:
"1 Identify the notional 'person skilled in the art and the relevant common general knowledge of that person 2 Identify the inventive concept of the claim in question or, if it cannot Page 1081 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined be done, construe it.
3 Identify if any the differences existing between the matters cited as forming state of the art and the inventive concept of the claim or the claim as construed.
4 Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
12.93 In facts of the case, above four steps are very much present in the form of expert opinion of PW-6 and PW-9 who have identified the inventive concept of claim in question and it has been demonstrated that there is difference existing between the matters cited as forming state of art and the inventive concept of claim and it Page 1082 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined is apparent from the facts of the case which has been enumerated in detail here in above that the differences constitute steps which would not have been obvious to a person skilled in the art and it would require a degree of invention so as to achieve the real object of the apparatus invented by the defendants for reduction of presence within immersion material of any substance which would have a third refractive index in the evolution method of inclusion in a rough gemstone.
2) In case of AGC Flat Glass Europe SA v. Anand Mahajan and others reported in MANU/DE/2490/2009, wherein issue before the Delhi High Court was with regard to amendment of the claim and in that context the Court observed as to whether the Page 1083 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined amendment propounded meets the objection arising out of such prior publication or not and if it does not, the amendment should be refused and if the patentee has known of the objection on the prior publication for many years, delay in applying for amendment will itself be ground for refusal. However, in facts of the case, the plaintiffs have not amended claim no.1 but has filed amendment with regard to inclusion of the system or device which was not known on the prior publication to the plaintiffs and on raising a query by the Controller, amendment was made by the plaintiffs. Moreover apparatus for which suit patent is granted, no claim is made by the plaintiffs in a wide and sweeping form and claim is not made limited but a specification Page 1084 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined highlighting the system or device for removing gas bubbles is added in claim no.1 which differentiated the apparatus invented by the plaintiffs having the inventive step of system or device for reduction of presence within immersion material.
3) In case of Enercon (India) Limited v. Alloys Wobben reported in MANU/IC/0062/2013 wherein IPAB was concerned with allowing of suit patent which was refused by the Controller as the same was beyond the scope of original claim on the ground that there was discrepancy in the claim. However, in facts of the said case, claim invention was found to be obvious and accordingly, revocation application was allowed. However in facts of the present case it cannot be said that inventive step is a novel feature Page 1085 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined invented by the plaintiff no.1 with regard to use of system or device removing gas bubbles from immersion material so as to reduce the presence within immersion material of any substance which would have a third refractive index.
4) Similarly in another matter for revocation between the same parties, in case of Enercon (India) Limited v. Alloys Wobben reported in MANU/IC/0059/2013, the Intellectual Property Appellate Board, Chennai held as under:
"60. If we see common general knowledge in generators, we find all generators use coils of wire wound on rotor and stator. In US 784, and EP '072 stator winding is wound without interruption. The claimed generator in the impugned patent has same functional features of the stator winding for the purpose of generation Page 1086 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined of electric power by movement of prime mover. When feature of continuous winding is known for generation of electricity its use in large wind turbine does not involve an inventive step. Step forward which the inventor claimed to have taken is already known for same functional result. Size of the generator for wind power generation will not make the obvious step non obvious. There is no other novel feature as claimed in claim 1 as granted except continuous wounding of windings. There is no technological advance beyond the skill shown in US 784, and EP '072. Minor adaptation in the scheme of winding i.e. 'position of upper and lower conductor bundles are Interchanged in predetermined order. [As claimed in claim 7) in view o large size is only adaptation of prior art based on what is commonly available and understood in the art. Therefore, the invention as claimed is within the grasp of MS. P. Sita skilled in making of generators on the bases of inventions described in US '784 and EP 1072.
61. In Miscellaneous Petition No. 63/2011, the patentee Page 1087 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined sought amendment in OCT, 2012 without prejudice to his right to sustain his granted claims but the respondent had already amended the claims extensively in reply to office action in the corresponding US patent application 1005429, US patent 7432610, Divisional US patent 7436097 and Divisional US patent 7478777 as stated in para ante. But no steps were taken by the respondent to amend the Indian patent 935 accordingly. Yet they kept their unamended claims until the hearing. We bear in mind this conduct of respondent also. Here, we find the invention is anticipated and does not involve inventive step. The amendment sought for cannot be granted for the same reasons as we held in ORA/6/2009/PT/CH. In the present application in view of the reasoning above, the amended claims cannot be granted both on merits and on account of delay."
12.94 However in facts of the said case, there is an inventive step involved in using the system or device as claimed in the suit patent and duly considered by the Page 1088 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined Controller while granting the suit patent and the amendment was already granted after permitting the plaintiffs to amend the suit patent which was never objected by the defendants. In such circumstances, claim in the suit patent is an independent claim. 12.95 In view of the above analysis, the suit patent is not required to be revoked as there is inventive step and novelty therein and none of the prior arts have any comparison as an apparatus as a whole as explained and analyzed here in above. 12.96 As the Suit Patent has both the technical advancement and economic significance of the invention, it is not obvious to a person skilled in the art as Page 1089 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined per Section 2 (1) (ja) of the Indian Patents Act, 1970.
12.97 Moreover, Claim no.l of the suit patent, the apparatus which has been constructed to achieve the objectives as mentioned and all the elements of the apparatus include features that altogether or alone are not disclosed by any of the prior arts. Similarly, the method includes the steps wherein each step is performed in a way to achieve the objectives of the Suit Patent which were not obvious to the person skilled in the art. Therefore, the Suit Patent is novel and inventive over D1. In view of above analysis, issue nos. 2 and 3 are decided in the negative. 12.98 In view of the above, counter claim Page 1090 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024 NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined stands rejected. Suit patent cannot be revoked as claimed by the defendants as there is inventive steps and novelty therein and none of the prior arts have any resemblance to the suit patent and it cannot be any obvious. It is also held that claim made in the suit patent having inventive steps capable of being industrial application have all the specifications which are not new having regard to what was publicly known or publicly regard before the priority date of claim nor was it published in India or elsewhere in any of the document referred to in sub-section 13 of the Act. Invention claimed in the suit patent is not obvious to a person skilled in the art and it involves technical advance as compared to existing knowledge and economic significance. Hence, the suit patent fulfills all the criteria of inventive step novelty as prescribed and no obviousness as prescribed under the provisions of the Act. Page 1091 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
NEUTRAL CITATION C/CS/2/2017 CAV JUDGMENT DATED: 05/04/2024 undefined ORDER
1) In view of the above foregoing reasons and on appreciation of the oral and documentary evidence led by both the sides, issue no.1 is answered in negative to the effect that plaintiffs do not prove that the defendants are infringing the suit patent as alleged in the plaint. Therefore, the additional issues which are proposed by the plaintiffs being consequential are not required to be decided.
2) The issue nos.2 and 3 are also decided in negative to the effect that the suit patent is not liable to be revoked on any of the grounds stated in the counter claim filed by the defendant nos. 4 and 5 and further the defendants have failed to prove that they have got prior arts which will impinge upon the validity of the suit patent. Page 1092 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024
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3) Thus, both the suit and counter claim are hereby dismissed with no order as to the costs.
(BHARGAV D. KARIA, J) RAGHUNATH R NAIR Page 1093 of 1093 Downloaded on : Fri Apr 26 20:47:38 IST 2024