Kubota Corporation vs Godabari Agro Machinery And Services ... on 21 September, 2023

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Delhi High Court - Orders

Kubota Corporation vs Godabari Agro Machinery And Services ... on 21 September, 2023

Bench: Prathiba M. Singh

                                    $~27
                                    *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +     CS(COMM) 655/2023 and I.A. 18407/2023-18412/2023
                                         KUBOTA CORPORATION                              ..... Plaintiff
                                                      Through: Mr. J. Sai Deepak, Mr. Nitin
                                                                  Wadhwa, Ms. Srishti Banerjee, Mr.
                                                                  Ananth Swamy, Mr. R. Vigneshwar,
                                                                  Mr. Cheitanya Madan, Mr. Prateek
                                                                  Sisodia & Ms. Arpita Bishnoi, Advs.
                                                                  (M: 8588939380)
                                                      versus

                                                GODABARI AGRO MACHINERY AND SERVICES INDIA
                                                PRIVATE LIMITED & ORS.                     ..... Defendants
                                                               Through: Mr. Goutam Kumar Acharya Senior
                                                                        Advocate with Mr. Ashish Aggarwal,
                                                                        Ms. Gurkamal Hora Arora, Ms.
                                                                        Ramya Aggarwal, Mr. Jaisal Baaath
                                                                        for D-1. (M: 9560744337)
                                                                        Mr. Ayush Sharma, Adv. for D-2. (M:
                                                                        9899096069)
                                                                        Mr. Amit Sibal & Mr. Rajshekhar
                                                                        Rao, Senior Advocate with Mr.
                                                                        Nirupam Lodha, Mr. Gautam
                                                                        Wadhwa, Mr. Rishabh Sharma, Mr.
                                                                        Saksham Dhingra, Mr. Ankur Vyas,
                                                                        Mr. Yashraj Samant & Ms. Manasa
                                                                        Dammalapati, Advs. for D-3. (M:
                                                                        9871444784)
                                                CORAM:
                                                JUSTICE PRATHIBA M. SINGH
                                                         ORDER

% 21.09.2023

1. This hearing has been done through hybrid mode.

I.A. 18409/2023 (for additional documents)

2. This is an application seeking leave to file additional documents under CS(COMM) 655/2023 Page 1 of 88 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:09 the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018. Application is disposed of. I.A. 18410/2023 (for exemption)

3. This is an application seeking exemption from filing certified/cleared/typed or translated copies of documents. Exemption is allowed, subject to all just exceptions. Application is disposed of. I.A.18412/2023 (u/S 12A of the Commercial Courts Act)

4. This is an application seeking exemption instituting pre-litigation mediation. In view of the orders passed in Chandra Kishore Chaurasia v. R A Perfumery Works Private Ltd, 2022/DHC/004454, the application is allowed and disposed of.

I.A.18411/2023 (seeking permission to place videos on pen drive

5. The video recordings relied upon by the Plaintiff shall be handed over in a pen drive to the Court, and ld. Counsels for the Defendants today itself. If there are any technical glitches in the video recordings, the same shall be resolved between the ld. Counsels for the parties.

6. The application is disposed of.

CS (COMM) 655/2023

7. Let the plaint be registered as a suit.

8. Issue summons to the Defendants. Mr. Ashish Aggarwal, ld. Counsel appearing for Defendant No. 1, Mr. Ayush Sharma, ld. Counsel appearing for Defendant No.2 & Mr. Nirupam Lodha, ld. Counsel appearing for Defendant No.3 accept summons.

CS(COMM) 655/2023 Page 2 of 88

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:09

9. Written statements be positively filed within 30 days from the date of receipt of summons. Along with the written statements, the Defendants shall also file the affidavit of admission/denial of the documents of the Plaintiff, without which the written statements shall not be taken on record.

10. Liberty is given to the Plaintiff to file the replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

11. List before the Joint Registrar for marking of exhibits on 16th November, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

12. List before Court on 24th January, 2024.

I.A.18408/2023 (u/O XXVI Rule 9 CPC) & I.A.18407/2023 (u/O XXXIX Rules 1 & 2 CPC)

13. Issue notice. Mr. Ashish Agarwal, ld. Counsel appearing for Defendant No. 1, Mr. Ayush Sharma, ld. Counsel appearing for Defendant No.2 & Mr. Nirupam Lodha, ld. Counsel appearing for Defendant No.3 accepts notice.

14. This is a suit for patent infringement filed by the Plaintiff - Kubota Corporation, a Japanese company seeking enforcement of patent nos. 249257, 294814, 312782, 354002 & 371938 (hereinafter, 'suit patents'). The bibliographic details of the suit patents are as follows:

CS(COMM) 655/2023 Page 3 of 88

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:10 Suit patent 371938 294814 249257 312782 354002 no.


                                    Title of the            Normal                  Combine and                Threshing      Threshing    Combine
                                    suit patent             Type                    Threshing                  Aparatus       Apparatus    Harvester
                                                            Combine                 Apparatus
                                                                                    Mountable
                                                                                    thereon

Application 2998/CHEN 4494/CHENP 2043/CHE/20 4251/CHENP 2840/CHE/ no. P/2012 /2009 07 /2009 2011 Filing date 23rd July 9th January 12th 11th March 19th August 2012 2008 September 2009 2011 2007 Date of 14th July 23rd March 13th October 15th May 18th Grant 2021 2018 2011 2019 December 2020 Expiry date 23rd July 9th January 12th 11th March 19th August 2032 2028 September 2029 2031 2027

15. The suit patents relate to different components/parts of the Combined Harvester. All the five suit patents are stated to be embodied in the Plaintiff's product-the 'Combined Harvester, which is manufactured and sold by the Plaintiff through its Indian subsidiary- Kubota Agricultural Machinery India Pvt. Ltd. under the brand name 'HARVES KING'.

16. The Plaintiff has approached this Court seeking an injunction against all three Defendants from manufacturing, selling, exporting, importing and distributing their harvesting machines under the name 'Ruilong Plus ++' (hereinafter, 'impugned product'). According to the Plaintiff, the impugned product is built from components which infringe the suit patents of the Plaintiff.

CS(COMM) 655/2023 Page 4 of 88

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:10

17. The Plaintiff is a Japanese multinational company incorporated originally in 1890 for the purposes of production of castings for weighing equipment, and it thereafter commenced its Agricultural Oil Engine business in 1922. It is averred that since decades the Plaintiff has focused on the development and popularisation of smart agriculture that utilised robotic and ICT to offer ultra labour saving, productivity enhancing and higher quality products. In 2008, the Plaintiff set up a subsidiary company in India namely, Kubota Agricultural Machinery India Pvt. Ltd.

18. The Plaintiff's case is that its harvesters are sold across the globe under the name 'HARVES KING'. In the financial years 2020 to 2022, the market share of the Plaintiff in India in respect of its products is almost 35% to 40%. The Plaintiff also claims to have invested substantial sums in R&D activities, and also advertises its products extensively in India. It claims to have expended around Rs. 94 lakhs in advertising expenses for the financial year 2022.

19. Defendant No. 1-Godabari Agro Machinery and Services India Pvt. is based in Bhubaneswar, Odisha. Further, it is averred that Defendant Nos. 2 & 3- Shanghai Yingxin World Agricultural Machinery and Jiangsu World Group are Chinese companies who are manufacturing the impugned products.

20. According to the Plaintiff, the Defendants' combine harvester under the name 'Ruilong Plus ++', is manufactured in China, and is imported by the Defendant No.1. It is claimed that by infringing upon the Plaintiff's suit patents, the Defendants are increasing their market share in the last three years as is evident from the following chart.

CS(COMM) 655/2023 Page 5 of 88

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:10 Financial Year No. of products Market Share (in percentage) sold (approx.) (approx.) FY 2022 249 units 10.4% FY 2021 249 units 5.6% FY 2020 161 units 4.2%

21. The submission of Mr. J. Sai Deepak ld. Counsel for the Plaintiff is that the impugned products are openly being sold in India. It is stated that sometime in May 2023, one of the Plaintiff's investigators approached Defendant No. 1 for purchase of the impugned product, to be delivered in Delhi, and the same was confirmed by Defendant No. 1. Thus, it is submitted that the cause of action has arisen within the jurisdiction of this Court, as impugned products are freely available for sale/purchase in Delhi. The investigator's affidavit dated 5th September 2023 deposes that the impugned products are being sold at a lesser price as compared to the Plaintiff's patented products, thereby causing loss to the Plaintiff.

22. It is further submitted that upon comparing the impugned products, which were purchased by the Plaintiff, with the Plaintiff's product would reveal that all the suit patents are infringed upon by the Defendants. The ld. Counsel places reliance upon the comparison charts of various parts of the impugned products, that are mapped with the claim of the suit patents. The charts demonstrating patent claims mapped with the impugned products of the Defendants are annexed to this order as Annexures A, B, C, D & E qua each of the suit patents, as follows:

                                          Annexure                                                    Suit patent
                                          Annexure A                                                  IN354002
                                          Annexure B                                                  IN294814
                                          Annexure C                                                  IN249257
                                          Annexure D                                                  IN312782


                                    CS(COMM) 655/2023                                                                                     Page 6 of 88


This is a digitally signed order.

23. In this background, it is submitted that the Plaintiff being a market leader in agricultural machinery is entitled to an injunction against the Defendants, owing to the novelty and inventive nature of the patented components of the Plaintiff's Combined Harvester.

24. On behalf of Defendant No.1., Mr. G.K. Acharya, Sr. Advocate on instructions from Mr. Ashish Aggarwal, ld. Counsel submits that until 2020, impugned products were being imported by the Defendant No.1 from Defendant No.2, and approximately 50 units of the impugned products were imported. However, thereafter imports are being carried out through some other company based in China.

25. On behalf of the Defendant No.3, Mr. Amit Sibal, ld. Senior Counsel submits that the Defendant No.3 is the manufacturer of the impugned products and is known by the name 'Jiangsu World Agriculture Machinery Co. Ltd.' with the following address.

'Picheng Town, Danyang City, Jiangsu Province 212311, China'

26. It is stated that the Defendant No.3 learnt of the filing of the present suit from the Defendant No.2. It is submitted that the Plaintiff's Combined Harvester, which is the subject matter of the present suit, has been imported in India since 2016. He relies upon a bill of lading dated 27th March, 2016.

27. On a query from the Court as to how many models of Combined Harvesters are sold by the Defendant No.1, it is submitted that it sells a large number of harvesters, but there is only one model that is impugned in this suit and the said model is the subject matter of the bill of lading, which has been shown to the Court today. He further submits that the Defendant No.2 CS(COMM) 655/2023 Page 7 of 88 This is a digitally signed order.

28. The Court has heard ld. Counsels for the parties at the preliminary stage today.

29. The Defendant No.1 does not have the complete set of suit paper book. It is directed that all the counsels for the Defendants be supplied with the copies of the complete set of paper book by the Plaintiff today itself.

30. Considering the nature of the matter, and the fact that it involves analysis of five suit patents, this Court deems it appropriate to appoint Experts in this matter in terms of Rule 31 of the IPD Rules, 2022 and Rule 13 of the High Court of Delhi Rules Governing Patent Suits, 2022 to conduct the inspection of the Defendants' machine/impugned product located at Bhubaneshwar, Orissa.

31. Accordingly, the following two experts are appointed by the Court to compare the impugned product components, with the granted claims of the suit patents and submit their respective reports independently to this Court.

• Accordingly, Ms. Prof. Padmavati Manchikanti (M: +91- +91 94347 43672) from IIT, Kharagpur and Dr. Amol P. Bhondekar (M: +91 8146585825) from CSIR - Central Scientific Instruments Organisation (CSIO) are appointed as Experts in the present suit to inspect the machine/impugned product of the Defendants, and carry out an analysis of the same with the suit patent claims of the Plaintiff. • The Defendants' product or machine is located at 'Plot No.130, situated at Rudrapur, Balianta, Dist.- Khordha, Bhubaneshwar, Orissa-752101'.

• The two Experts, alongwith at least two technical experts on behalf of CS(COMM) 655/2023 Page 8 of 88 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:10 the Plaintiff, and one technical expert on behalf of each Defendant shall accompany the Experts appointed above for the inspection. • The two Experts shall be permitted to take photographs, as also videographs, and their reports shall be filed independently within two weeks after execution of the inspection/commission. • The two Experts shall visit and carry out their inspection within 10 days.

• One Advocate on behalf of each of the parties is permitted to accompany the two Experts.

• The two Experts shall inform the respective Counsels of the parties in advance as to the date of inspection.

• The fee of the two Experts is fixed at Rs.1.5 lakhs each, plus out of pocket expenses, to be borne by the Plaintiff.

32. Insofar as the injunction application is concerned, Mr. Amit Sibal, ld. Senior Counsel submits that some of the corresponding suit patents have been invalidated in China. If so, let the same be placed on record by way of copies of the orders, along with their reply.

33. Let reply to the injunction application be filed within four weeks after receiving the respective reports from the two technical experts. Rejoinder thereto be filed within four weeks thereafter.

34. The Defendants shall, in their respective replies, mention the following details:

a. The Defendants shall place before the Court the total quantity of the impugned products that have been imported till date, and the details of the importers from where the imports are being imported along with relevant documents.

CS(COMM) 655/2023 Page 9 of 88

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:10 b. The Defendant no.1 shall disclose the quantum and sales figures of the impugned products imported and sold by the Defendants along with the documentary evidence thereof.

c. The Defendant Nos. 2 & 3 shall also, in their replies, set out complete sales figures till date of the impugned products in India along with the documentary evidence thereof.

d. The Defendant Nos. 2 & 3 shall also continue to maintain the accounts of the imports of the impugned products, and file the same along with their replies, and thereafter, on quarterly basis before the Court.

35. If there are any confidential documents, the same may be placed by the Defendants in a sealed cover.

36. The amended memo of parties shall be filed within one week upon the Defendant No.3 furnishing the new name and address.

37. Ld. Counsel for the Plaintiff seeks liberty to file clear copies of the claims chart mapped. They are free to do so within one week.

38. List for hearing on 24th January, 2024.

PRATHIBA M. SINGH, J.

SEPTEMBER 21, 2023/dk/dn (corrected & released on 25th September 2023) CS(COMM) 655/2023 Page 10 of 88 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/09/2023 at 21:43:12

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