Calcutta High Court
The Industrial Gases Ltd. And Anr. vs Kamrup Industrial Gases Ltd. And Anr. on 15 November, 1995
Equivalent citations: (1996)2CALLT483(HC)
Author: Umesh Chandra Banerjee
Bench: Umesh Chandra Banerjee
JUDGMENT Umesh Chandra Banerjee, J.
1. A patent monopoly is a privilege granted by the Patent Officer to the invention of any new contrivance in manufacture so that the inventor alone shall be entitled to it during a limited period to make articles according to his own invention. To be the subject-matter of a patent right, an article must be material and capable of being manufactured. An idea by itself cannot, however, be patented. The person supplying for the patent must be the true and first inventor of it and the Patents Act has been engrafted in the Statute Book to encourage inventions and also to protect inventions. The grant of patent entitles the patentee to all the rights and privileges in the invention and in the event of there being any infringement, the patentee can seek the assistance of Courts to protect his rights by an order of injunction together with a claim for damages. Be it noted that the patent documents carries with it a contemporary new technology and by reason of the protection as available under the Patent Act, there has been thus a steady statutory encouragement and development of modern technology be it in the field of software or other areas so as to meet the needs of a developing society and thereby giving rise to further scientific research and development for the benefit and enrichment of the present-day society, ''"he Patent office, therefore, has an important role to play in promoting scientific and technical progress and consequent economic development of the country. The inventions shall have to be encouraged by the Law Courts and due protection ought to be had, as otherwise the purpose of such inventions would be totally frustrated and the inventor would turn out to be a man dejected. The fundamental aim in practising the patent system is to protect and encourage fair competition in the field of technology so as the transform inventions or creations into real productive forces as quickly as possible. Be it also noted that not only do people in the present contingent need to constantly improve their professional skills, but with the development of the situation even more qualified patent workers are required. All lawful rights and interests of patentees is the nucleous of the patent system and the country's market economy is dependent on a successful working of this particular patent system (see in this context WIPO Publication No. 435: January to March, 1995, Page 15).
2. Having discussed the basic feature of the Patent Law let us now deal with the issue as to the grant of interlocutory injunction. The equitable remedy by way of an injunction, whether mandatory or interlocutory in nature, is discretionary and is never granted as a matter of course. Lord Diplock's speech in the American Cyanamid case (American Cyanamid Co. v. Ethtcon Ltd., 1975(1) All ER 504) lays down certain guidelines for the grant of Interlocutory injunctions. The guidelines provide that the plaintiff must satisfy the Court that there is a serious issue to decided and that if the defendants were not restrained and the plaintiff wins the action, damages at Common Law would be inadequate compensation for the palintiffs loss. Once satisfied of these facts, the Court will then consider whether the balance of convenience lies in favour of granting the injunction or not, i.e. whether justice would be best subserved by an order of injunction. The great value of Cyanamid case lies in its treatment of interlocutory injunction as an aid to the concept of justice in any litigation. The demands of justice, when it comes to be question of whether or not to maintain the status quo until the trial, cannot be governed by rules-what should be borne in mind in addition to the tests phrased by Lord Diplock is his reminder that at this state the Court does not and cannot judge the merits of the parties' respective cases and that no decision can be taken in a state of uncertainty about the parties' rights. It would seem to follow from this that if there is any uncertainty, the court should be doubly reluctant to issue an injunction, the effect of which is to settle the parties' rights once for all. (In this context, see All ER Annual Review, 1984).
3. Similar view has also been expressed by the House of Lords in the case of Dlmbleby & Sons Ltd. v. National Union of" Journalists (1984) 1 All ER 751.
4. It is therefore apparent that, the question of damages as also the balance of convenience has not really been ignored or said to be of trifling value. American Cyanamid has not really as such made a departure from the age-old law as regards the grant of interlocutory injunction.
5. Turning attention on to the state of Indian Law, be it noted that the Supreme Court in the decision of the United Commercial Bank v. Bank of India also laid down that even it there was a serious question to be tried, the balance of convenience ought to be considered in the matter of grant of injunction. This Court also in the case of Damodar Valley Corporation v. Haripada Das held that on being satisfied that there is a serious question to be tried, the Court ought also to consider the issue of balance of convenience and whether the plaintiff would be adequately compensated by an award of damages in the event of his success in the suit.
6. Be it recorded that Lord Diplock's speech itself in no uncertain terms laid down that the same tests as is required to be implied in the matter of grant of interim injunction in civil suits ought to be made applicable in the matter of grant of interlocutory injunction to a patent matter as well.
7. It is on this backdrop of law as formulated by the English courts as also by the Indian Courts as above, the instant appeal is to be examined as regards the tenability of the grounds of appeal against the order of the learned Single Judge refusing to accede to the prayer for interim injunction, Before, however, proceeding further with this matter, one redeeming feature ought to be noted, viz., observation of the learned Trial Judge to the effect that the petitioners being the appellants herein for the purposes of this application pressed their case before the learned Trial Judge only in respect of a part of the patent being No. 169335 and it is thus not necessary, the learned Trial Judge observed, to consider the details regarding the other two patents. The appellants, however, strongly contended that this observation of the learned Trial Judge cannot be said to be correct since the appellant prayed for an order of injunction before the learned Trial Judge in regard to the protection of its patent being No. 169335 in its entirety. The respondents, however, disputed such a stand by reason where for the notes of submission, as submitted before the letrned Trial Judge, were taken recourse to by the appellant. This dispute, however, ought not to detail the Appellate court for long since the law is well settled on this count and without much dilation reference may be made to the decisions of the Supreme Court in the case of State of Maharastra v. Ramdas Shiinlwas Nayek and Anr. , wherein the Supreme Court in paragraph 4 of the report observed as follows:
"4. When we drew the attention of the learned Attorney general to the concession made before the High Court, Shri A.K. Sen, who appeared for the State of Maharastra before the High Court and led the argument for the respondents there and who appeared for Shri Antulay before us, intervened and protested that he never made any such concession and invited as to peruse the written submission made by him in the High Court. We are afraid that we cannot launce into an inquiry as to what transpired in the High Court. It is simply not done. Public Policy bars us, Judicial decorum restrains us.
Matters of judicial record are unquestionable. They are not open to doubt. Judges cannot be dragged into the arena. 'Judgments cannot be treated as mere counters in the game of litigation'. (Per Lord Atkinson in Somasundaram v. Subramanlan AIR 1926 PC 136). We are bound to accept the statement of the Judges recorded in their judgment, as to what transpired in court. We cannot allow the statement of the Judges to be contradicted by statements at the Bar or by affidavit and other evidence. If the Judges say in their judgment that something was done, said or admitted before them, that has to be the last word on the subject. The principle is well-settled that statements of fact as to what transpired at the hearing, recorded in the judgment of the court, are conclusive of the facts so stated and no one can contradict such statements by affidavit or other evidence. If a party thinks that the happenings in court have been wrongly recorded in a judgment, it is incumbent upon the party, while the matter is still fresh in the minds of the Judges, to call the attention of the very judges who have made the record, to the fact that the statement made with regard to his conduct was a statement that had been made in error (Per Lord Buckmaster in Madhusudan v, Chandvabati AIR 1917 PC 30). That is the only way to have the record corrected. If no such step is taken, the matter must necessarily and there. Of course a party may resile and an Appellate Court may permit him in rare and appropriate cases to resile from a concession on the ground that the concession was made on a wrong appreciation of the law and had led to gross injustice, but, he may not call in question the very fact of making the concession as recorded in the judgment."
In paragraph 7 of the report the Supreme Court further observed:
"7. So the Judges' record is conclusive, neither lawyer nor litigant may claim to contradict it, except before the Judge himself, but nowhere else."
Subsequently the Supreme Court in Bhagwall Prasad v. Delhi State Mineral Development Corporation also in the same vein observed:
"It is now settled law that the statement of facts recorded by a court or quasi-judicial tribunal in its proceedings as regards the matters which transpired during the hearing before it would not be permitted to be assailed as incorrect unless steps are taken before the same forum ... It is not, therefore, open to the parties or the counsel to say that the proceedings recorded by the Tribunal are incorrect."
8. With this state of law in this regard, we therefore cannot lend our concurrence to the appellants' contention in regard to the recording of an observation of the learned Trial Judge as noted above to the effect that a part of patent No. 169335 was pressed and not the patent in its entirety.
9. The factual score has already been recorded in details by the learned Trial Judge and as such we refrain ourselves from longish narration of facts excepting, however, when It is otherwise required or essential in the matter of disposal of this appeal.
10. An interlocutory application was filed by the appellant by reason of an alleged infringement of the petitioners' patent bearing No. 170231, 169632 and 169335. Admittedly, the appellant did not press the alleged infringement in regard to the other two patents bearing No. 169632 and 170231 but proceeded to deal with the matter only in regard to the patent bearing No, 169335. It is at this juncture, however, that we ought, to remind ourselves as to the role of the Appellate court in the matter of interference with the order of .the learned Trial Judge, especially when the same arises out of the equitable remedy in the matter of grant of an injunction involving the discretion of the learned Trial Judge.
11. In Elan Digital Systems Ltd. v. Elan Computers Ltd. (1984 F.S.R. 373) Donaldson, M.R. stated in his speech before the House as follows:-
"I think it should be said, and said with great volume and clarity, that this court does not exist to provide a second bite at each interim cherry in the sense that it is open to parties, having failed in front of the learned Judge, simply to start again and have a de novo hearing in the hope that they will succeed in front of the Court of Appeal. We are a court of appeal, and particularly in the field of interim injunctions it is primarily the Trial Judge who is appointed to decided whether or not an injunction should be granted. This is not of course to say that there is no right of appeal, but there is a heavy burden on the appellant to show that the learned Judge has erred in principle, and that in exercising his discretion there is either an error of principle or which is the same thing in a different form, he exercised his discretion in a way which no reasonable judge properly directing himself as to the relevant considerations could have exercised it."
12. In England, the law is therefore well settled in regard to the intervention of the Appellate Court in the matter of grant of interim injunctions. Law in this country also does not, however have any variation and the observation of Venkatachaliah, J. in the case of Wander Ltd. and Anr. v. Antox India (P) Ltd. (1991 Vol. 11, PTC 1) in paragraph 13 of the report is to be noted which reads as follows:
"13, The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the Appellate Court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate Court will not re-assess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in Interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the Trial Court reasonably and in a judicial manner, the fact that the appellate Court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to those principles, Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph, , said:
"... These principles are well established, but as has been observed by Viscount Simon in Charles Osention & Co. v. Johnston, the law as to the reversal by a cotirt of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case.
The appellate judgment does not seem to defer to this principle."
13. It is on this backdrop of law as formulated by the English Courts and the Supreme Court that the instant appeal has to be examined and considered and we should at this juncture advert ourselves to the relevant contextual facts required to be dealt with for the purpose of this appeal. The records depict that the application in respect of patent No. 169335 was made on 28th June, 1988 and the patent was granted and sealed on 4 th September, 1992. The application for patent contained a complete specification and in this specification the following has been recorded by the appellant herein:-
"With a view to overcoming the foregoing draw-backs the present invention provides an improved carbide-to water type apparatus for generating acetylene by the interaction between calcium carbide and water which comprises in combination-
(a) a generator shall equipped with agitators or churners for intimating mixing of calcium carbide and water:
(b) means for feeding calcium carbide to water maintained at a predetermined level inside the generator shell:
(c) means for controlling pressure and temperature within generator vessel so as to achieve non elevation of temperature and avoidance of excess pressure build-up;
(d) means for controlling level of water inside the generator;
(e) means for drawing out acetylene from the generator;
(f) means for preventing lumps and/or unreacted carbides from going out. through slurry drain valve; and
(g) means for removal of lime sludge from the generator shell."
The specification further provided:-
"The apparatus of the present invention will now be more particularly described and illustrated with the help of the accompanying drawings wherein (1) is the acetylene generator, (2) Is the carbide hopper, (3) is the screw feeder for feeding calcium carbide to water inside the generator vessel, (4) is the agitator, (5) is the residue drain valve, (6) is the flash-back arrestor, (7) is the safety valve, (8) is the gas outlet, (9) is flame proof motor for screw feeder, (10) is the flame proof motor for agitator, (11) is the pressure indicator, (12) is temperature indicator, (13) represents the control Switch, (14) is the water meter, (15) is the water inlet valve, (16) is the level controller, (17) is the access hole, (18) is the mounting for the generator, and (19) is the screen of seive tray for holding back lumps or granular materials so that they may not clog the residue drain valve."
14. Admittedly, so far as the combination are concerned, as noted above (a) to (e) and (g) are said to be no invention and same are in use by other manufacturers. The uniqueness of the invention is said to contain in combination (1) read with (a) to (e) and (g). Similar is the position in regard to item Nos. 1 to 18 as above and admittedly the same are in use and in vogue and are in consonance with the 1SI specification and the invention is said to be contained in item No. 19 which is supposed to be a screen of selve tray for holding back lumps or granular materials so that they may not clog the residue drain valve. It is the appellants' definite contention that the entire apparatus being carbide-to-water type apparatus for generating gases like acetylene with the combination of paragraph (1) or item No. 19 as above is an invention by reason of which the patent has been granted by the Patent Office and it is this patent which ought to be protected-otherwise the rightful inventor would lose his rights as a patent-holder and this will render the statute to be a mere mockery.
15. The respondent on the other hand, however, contended that there is nothing new as such in the apparatus and as a matter of fact ISI Specification does contemplate a provision for filtration which has been translated into a workshop improvement by providing a seive to avoid clogging at the mouth of the valve. As a matter of fact, the respondent did not, however, feel shy even to contend that the provision for sieve cannot but be ascribed to be a pilferace, and placed strong reliance on the ISI specifications as also on the drawings of one of the manufacturers of carbide-to-water type apparatus for manufacturing gaseous products.
16. The issue, therefore, arises as to whether in the contextual facts of the case the introduction of a seive or a strainer can be said to be an invention or a mere workshop improvement, as has been contended by the respondent. In the event of there being only an improvement of an existing machinery, the question of declaring it to be an invention requiring protection under the law does not and cannot arise. We are, however, not in a position to lend any concurrence to the submission of Mr. Sen appearing for the respondents, since the stage therefore has not come as yet, but we are only concerned at this stage with the tenability of the order of the learned Trial Judge refusing to grant an interlocutory injunction in the matter itself. It would thus be convenient to note the observations of the learned Trial Judge at this juncture:-
"There are certain broad principles in the background of which the facts of this case will have to be considered. The first is that a patent is granted only in respect of an invention (vide Sections 6 & 7 of the Act). The second principles is that in a suit for in for infringement of a patent every ground on which the patent may be revoked is available as a ground of defence (vide Section 107)
17. Keeping these principles in mind, in my opinion on the basis of materials at this stage no interim order can be granted on this application as prayed.
18. Prima facie it appears that what the petitioner is claiming to protect is not an invention at all but part of one. At the hearing the petitioner has abandoned its case in respect of the two other patents and pressed its case only in respect of a part of the invention under Patent No. 169335. The petitioner's application for the patent was in respect of an improved apparatus for generating acetylene. All applications for grant of patent are required to be accompanied by a provisional or a complete specifications. A specification describes the invention and its operation or use and the method by which it is to be performed. A specification Includes a claim or claims defining the scope of the invention for which protection is claimed (vide Section 10). The claim or claims relate to a single invention.
19. The invention in this case in the entire apparatus which has expressly been stated in the specification to be comprised in a combination of seven features in Claim I. The subject matter of the present application therefore is one part of the apparatus, nemely, the means for preventing lumps from passing out through the slurry drain valve. The petitioner's case has not been pressed in respect of the several other components of the apparatus. In other words, of the 6 claims contained in the complete specifications referred to in an earlier paragraph of this judgment, the petitioner has restricted the claim to one viz. Claim 3 with reference to part of the apparatus in clauses (I) and (g) of the first claim.
20. Now the patent was granted for the whole apparatus. The question is whether the rights available to the petitioner as patent holder of the composite structure/process can be claimed in respect of a part and if it can be so claimed, whether the part is an inversion within the meaning of the Act."
The learned Judge further observed:-
"The actual article on the basis of which the petitioner has claimed infringement is a wire mesh or sieve. The Court can take Judicial notice of the fact that a wire mesh of sieve is an article in common use for the purpose of filtration. By itself it would not be patentable under Section 3 and particularly Section 3(d) of the Act. It is no doubt a useful object but it cannot be said to be 'new' within the meaning of Section 2 of the Act.
The argument of the respondents that the use of the wire mesh as a filter in an acetylene generator is also not a new use of a known object appears at this stage to be correct. In the specifications prescribed by the Indian Standards Institution for acetylene generator, medium pressure, stationary, of carbide-to-water type, it is prescribed that in every such generator suitable means for draining water seals likely to become thickened by the deposit of residue must be provided (5.6 of the specification). In specification 12 of the idea of usage of filters in a generator is envisaged. In specification 17.6 there is a requirement that the gas outlet 'shall be in away that their effect cannot be impaired or destroyed by humidity, lime choking or clogging'. Given these essential requirements, it is doubtful that the use of the wire mesh before an outlet drain can be said to be inventive step."
21. Be it noted that, the learned Single Judge placed strong reliance on a decision of another leaned Single Judge of the Bombay High Court in the case of Press Metal Corporation Ltd. v. Noshir Sorabji Pochkhanawalla and Anr. . For convenience's sake, the observations of the learned Single Judge of the Bombay High Court in paragraph 34 of the report ought to be noted. The learned Single Judge observed:-
"34. Under the Patents Act, an invention to be patentable must be a new and useful method or manner if manufacture. It involves two separate conditions, viz. is it a method or manner of manufacture, and secondly, is it new and useful. In order to entitle an inventor to a grant of a patent, both these conditions must be present. Manufacture in its ordinary parlence generally conveys the idea of making tangible foods by hand or by machine. If the words "new and useful manner of manufacture" were limited to the production of new articles without reference to the process of manufacture involving patent and improved, the inducement which law intended to give to the inventor would be encompassed within very narrow rules. The word 'manufacture" would, in my opinion, include improvements in manufacture and changes in the method by which an article is manufactured. The word 'manufacture' in my opinion, would also extend to a new process to be carried on by known implements. 'Manufacture' is a term which is difficult to define. An attempt was made at defining the term 'manufacture' by Abbott, C.J., in the following terms:
"Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, or at the least, or some new mode of employing practically his art and skill is requisite to satisfy this word'. (See Terrell on the Law of Patents, para 35, page 12)."
22. The observations of the learned Single Judge of the Bombay High Court and the law as laid down in that decision, in our view, cannot be decried in any way whatsoever and we record our concurrence with the view expressed by the learned Single Judge of the Bombay High Court that an invention to be patented must be a new and useful method and manner of manufacture. Two separate condition as laid down by the learned Single Judge in the decision noted above, viz., method of manufacture and the requirement of the article or apparatus being new and useful-both these conditions must be present in the matter of obtaining the grant of a patent under the Patent Act. Be it also noted that the learned Trial Judge has dealt with the two English decisions as cited by Mr. Chakraborty in the case of American Cyanamid (supra) and Hoffimann-Da-Roche & Co. v. D.D.S.A. Pharmaceuticals Ltd. (1965) RPC 503, which were exhaustively dealt with by the learned Trial .Judge and we do not see any reason to express a different opinion in the contextual facts of the matter under consideration and we record our concurrence with the observations of the learned Trial Judge for the purpose of avoiding prolixity.
23. As regards the ground of delay, we do not, however, see any reason to refuse the grant of injunction in the matter, if it is otherwise tenable, on the ground of delay only. The delay involved in the matter cannot be said to be that long a delay so as to defeat the equity if the grant of an injunction is necessary.
24. As regards the issue for damages and the quantification thereof, we express no opinion in regard thereto as the same ought to be decided at the time of final adjudication of the disputes between the parties and the learned Trial Judge also has not expressed any opinion as such in regard to the issue except recording that the injury, if any, to the plaintiff can be compensated by damages, whether the plaintiff himself assesses it or the Court comes to some other definite conclusion in regard thereto.
25. The learned Trial Judge upon consideration of the facts of the matter and submissions of the respective counsel appearing for the parties, has used her discretion in the matter. An equitable remedy by way of a grant of an injunction being a discretionary order and since the discretion used by the learned Trial Judge cannot be termed to be perverse, intervention of the appellate Court is wholly unwarranted at this stage of the proceeding. We do not see any perversity in the order as passed by the learned Trial Judge and relying upon the observations of Venkatachallah, J. in Wander Ltd. and Anr. v. Antox India (P) Ltd. (supra) we also record that the Appellate Court ought not to re-assess the material and seek to reach a conclusion different from the one reached by the learned Trial Judge if the conclusion reached by the Trial Court was reasonably possible on the material averment. The Appellate Court will not be justified in interfering with the exercise of discretion under appeal solely on the fact that if it had considered the matter at the trial stage it would have come to a different conclusion. The discretion has been exercised by the learned Trial Judge reasonably and in a Judicious manner and that puts an end to the question as to whether the order under appeal is tenable or not.
26. In that view of the matter, this appeal fails and is dismissed. No order as to costs. Be it recorded that the observations made herein shall not in any way effect the hearing of the pending application before the learned Trial Judge in regard to the revocation of grant of patent or at the time of final adjudication of the suit and the learned Trial Judge would be at liberty to deal with the matter on its merits and in the manner as the learned Judge may deem it expedient.
27. Xeroxed certified copy of the judgment be made available expeditiously to the parties.
R.K. Mitra, J.
28. I agree.