Gujarat High Court
Galatea Ltd vs Diyora And Bhanderi Corporation on 26 March, 2018
Author: R.M.Chhaya
Bench: R.M.Chhaya
C/CS/2/2017 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/CIVIL SUITS NO. 2 of 2017
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GALATEA LTD Versus DIYORA AND BHANDERI CORPORATION ========================================================== Appearance:
MR MEHUL S SHAH, SENIOR ADVOCATE assisted by MR DILIP B RANA, MR SANDEEP GROVER, MR ISHWER UPNEJA, MR VARA GAUR, ADVOCATES for the Plaintiff(s) No. 1-2 MR SAURABH SOPARKAR, SENIOR ADVOCATE assisted by MR MANAN A SHAH, ADVOCATE for the Defendant(s) No. 1-14 ========================================================== CORAM: HONOURABLE MR.JUSTICE R.M.CHHAYA Date : 26/03/2018 ORDER BELOW EXH.5 APPLICATION FOR TEMPORARY INJUNCTION
1. At the outset, it deserves to be noted that the Suit was originally filed before the District Court, Surat, which came to be registered as Trademark Suit no. 3 of 2017 and thereafter, the Suit came to be transferred to the Commercial Court at Vadodara and thereafter, to this Court and was renumbered as Civil Suit no. 2 of 2017.
2. The parties, as mentioned in the Suit, are described hereinafter in this order as per their original position in the Suit.
3. The plaintiff no.1 is a Company incorporated under the laws of Israel, having its Page 1 of 164 C/CS/2/2017 ORDER registered office at Dalton, Israel and the plaintiff no.2 is also incorporated under the laws of Israel, having registered office at Hod, Hasharon, Israel. The present Suit is filed seeking protection against the infringement of Patent no. 271425. It is claimed by the plaintiffs that it is an invention pertaining to the determination of the location of inclusions in gemstones. It is the say of the plaintiffs that gemstones are as such ornamental objects rather than put to an industrial use and are valued by their appearance. It is the say of the plaintiffs that in gemology, the quality of a gem such as a diamond is typically determined by 4 C's-
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); Colour (colourless being the more expensive); Cut (consistency of shape, proportions, symmetry and polish); and Carat (weight).
4. It is the say of the plaintiffs that almost all rough stones contain various types of imperfections known as "inclusions" or "flaws" in form of dark spots, streaks and other blemishes. In order to obtain maximum value of the gem, it is the goal of every diamond jewelery manufacturer to cut and polish each Page 2 of 164 C/CS/2/2017 ORDER stone in such a manner that it contains optimum mix of attributes that is desirable in the market. The plaintiffs have further averred that in order to obtain such optimum clarity in a polished diamond, it is necessary to identify the location, shape and size of flaws inside a rough stone so as to reduce their influence on the final value of the polished stones. The plaintiffs further say that the extent to which the diamonds distort images, depends on the difference between their refractive index, which is very high, and that of its exterior. Further, giving an example, it is contended by the plaintiffs that 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 the flaws. In order to 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 contained in the Suit Patent and in the resulting machines that counteract the effects of such refraction and gives an accurate threedimensional picture of the external and internal features of the rough stone. It is the say of the plaintiffs Page 3 of 164 C/CS/2/2017 ORDER that the plaintiff no.1 has invented the machine which automatically determines the exact locations where to cut the rough stone so as to optimize the mix of attributes that are desirable in the finished stone and thereby, achieve maximum yield with greatest value from any given rough stone. It is also the case of the plaintiffs that it is also important to identify flaws in a polished stone in order to grade its clarity and consequently, to determine its value.
5. The plaintiffs have also contended that in past before invention of plaintiff no.1, rough stone was visually examined by experts who relied on experience, skill and industrial practices in order to provide the best estimate of what the inclusions were and where they were located. However, this process often wasted precious material and reduced the weight and potential value of the stone. It is also contended that in addition, human subjective judgment upon which such determinations were made, varied between different individuals and circumstances and it also took long time to assess each stone, which ultimately, resulted into less value of the package. It is claimed by the plaintiffs that prior to plaintiff no.1's technology, no automated commercial solutions were suggested Page 4 of 164 C/CS/2/2017 ORDER for any specific mechanism for the detection of inclusions, nor a manner in which the detection could be practically and commercially performed with high accuracy.
6. Keeping in mind the aforesaid problem, 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 Patent no. IN271425. It is claimed by the plaintiffs that it was this invention that literally changed the entire diamond industry by enabling diamond manufacturers to know exactly where inclusions are located in a rough diamond by automatic identification of their location and thus, it is claimed that the Suit Patent is highly valuable asset. It is further claimed by the plaintiffs that plaintiff no.2's sophisticated "Advisor" software used in conjunction with the data output of plaintiff no.1's galaxy family of machines shows the manufacturer exactly where to cut and how to polish the stone so as to achieve increased yields from every rough stone. It is further contended that the said software integrates internal inclusion scanning information and geometrical Page 5 of 164 C/CS/2/2017 ORDER 3D analysis produced by the galaxy machines of 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.
7. It is also contended 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 also claimed by the plaintiffs that the plaintiffs are worldwide leaders in development and manufacturing of advanced evaluation, planning, cutting, shaping, polishing and grading systems for diamonds and other gemstones. It is thus claimed by the plaintiffs that the plaintiffs' products have revolutionized the way rough diamonds are cut so as to optimize 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 by the plaintiffs' solutions, it becomes easier for diamond cutters to cut the diamond with more precision and in a way that would minimize the Page 6 of 164 C/CS/2/2017 ORDER margin of error and the consequent wastage.
8. On the basis of the aforesaid, it is therefore claimed by the plaintiffs that plaintiff no.1 has the exclusive 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, products manufactured using or products and/or processes which incorporate the technology covered under the Suit Patent in India as well as other foreign jurisdictions, where plaintiff no.1 has been registered and recognized.
9. The plaintiffs have also discussed and have given analysis for the method of evaluation of a gemstone as per the Suit Patent, which is discussed and described hereinafter.
10. It is the say of the plaintiffs that the plaintiffs have learnt from reliable sources that the defendants herein have unlawfully and in utter disregard and violation of the provisions of the Patents Act, 1970 (hereinafter referred to as "the Act" for the sake of brevity) have started manufacturing, selling and using certain machines, which directly infringe the Suit Patent and therefore, the Suit is filed along with the present application for temporary injunction.
Page 7 of 164 C/CS/2/2017 ORDERIt is alleged that all the defendants are jointly engaged in business of providing inclusion scanning services 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. It is further averred that the defendants are also aware of the Suit Patent, which is incorporated in the galaxy machines owned by plaintiff no.1 and despite having full knowledge in this regard, the defendants, in collusion and connivance with each other, have manufactured or otherwise procured one or more duplicate versions of such galaxy machines or otherwise provide services, which utilize identical or similar technology which is patented by the Suit Patent. The plaintiffs have further contended that the plaintiffs verily believe that the defendants are manufacturing or are having manufactured, or providing services in relation thereto, such duplicate and infringing machines, and are using the same for commercial purposes. It is further the say of the plaintiffs that the defendants have sold number of machines and devices and continue to sell such duplicate machines and are thus unjustly enriching itself at the cost of the plaintiffs.
Page 8 of 164 C/CS/2/2017 ORDER11. It is further the say of the plaintiffs that recently, the plaintiffs have heard from reliable sources that not only are the defendants manufacturing or otherwise procuring, importing and selling duplicated/infringing machines to third parties, but they are also storing the said duplicated/infringing machines at their premises located at Surat as per the address given in the plaint.
12. It is further averred that in order to verify the said facts, plaintiff no.2, through its Indian subsidiary, purchased 10 rough diamond stones on May 05, 2017 from a Company situated at Surat and the said rough diamonds were submitted with defendant no.1 by 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. It is pertinent to note that the plaintiffs have also averred that before giving such 10 rough diamonds to defendant no.1, the plaintiffs, through the private investigator, got the said 10 diamonds tested in batches for the presence of "Selenium" by an independent laboratory in New Delhi and the results indicate that there was no presence of "Selenium". It is claimed by the plaintiffs that "Selenium" is an active Page 9 of 164 C/CS/2/2017 ORDER component used in the process of detecting inclusions in rough stones and is also an integral part of the Suit Patent, as can be clearly borne out from perusal of the Suit Patent and analysis of the Suit Patent. It is the case of the plaintiffs that 10 diamonds which were given for testing to defendant no.1 were returned with a report in a flash drive as well as in the website of defendant no.1 and upon receiving the said 10 rough diamonds taken from defendant no.1, the private investigator at the plaintiffs' behest again get tested for "Selenium" residue at the same laboratory in New Delhi and the report indicates that there was presence of "Selenium" residue in each and every stone and therefore, it is contended by the plaintiffs that the same proves beyond any doubt that defendant no.1 used the machines for scanning and mapping the rough diamonds by employing the Suit Patent. It is further contended by the plaintiffs that the reports given by laboratory in New Delhi clearly indicate presence of "Selenium" residue on the stones which are also produced on record of the Suit in a sealed cover. It is further contended that the documentary evidence placed on record in a sealed cover unequivocally and clearly discern that the defendants, either directly or indirectly, are infringing the Suit Patent Page 10 of 164 C/CS/2/2017 ORDER and therefore, the defendants are liable to be restrained from continuing with their nefarious, illegal and unlawful activities forthwith.
13. It is contended by the plaintiffs that infringing machines sold and offered for sale and/or use by the defendants as well as the services provided by them are a direct infringement of plaintiff no.1's monopoly right over the Suit Patent. It is claimed by the plaintiffs that the Suit Patent is unique, inasmuch as, the defendants cannot provide the services, which the defendants are currently providing to third parties and/or achieve the same end result without using the Suit Patent. It is further contended by the plaintiffs that even if the defendants assume that the defendants could have made some attempts to modify the design or process to plan the rough gemstone, the same would still infringe the Suit Patent as the essential feature 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 of the rough gemstone and thereby, achieve maximum profit from each stone.
Page 11 of 164 C/CS/2/2017 ORDER14. It is also alleged by the plaintiffs that the defendants have used the essence of the Suit Patent as defined in the claims and described in the specification of plaintiff no.1's Suit Patent and to duplicate and manufacture or otherwise procure machines which purportedly perform the same functions as the galaxy machines of the plaintiffs. It is contended by the plaintiffs that the defendants, with a malafide 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 expense of the plaintiffs and such an infringing enterprise of the defendants, being run covertly and surreptitiously, shows malafide intention of the defendants.
15. It is the say of the plaintiffs that the defendants have not taken any permission or licence from plaintiff no.1 and have made or otherwise procured substantial and material reproduction of plaintiff no.1's machines and thereby, achieved illegal profit by such unlawful activity. It is also the case of the plaintiffs that the plaintiffs have invested huge amount of capital in India and have Page 12 of 164 C/CS/2/2017 ORDER helped to develop India into a global player in the diamond industry. It is also contended by the plaintiffs that plaintiff no.2's subsidiary in India employs hundreds of Indians, which has immensely contributed to increasing the quality of service that the Indian diamond industry provides to its customers and hence, any infringement of the rights of the plaintiffs would adversely affect the Indian diamond industry itself.
16. It is alleged by the plaintiffs that the defendants have modified or will modify their infringing models of the machines and the plaintiffs' reliefs qua the infringement of its patent are against such devices as well which incorporate the Suit Patent and are not limited to any specific infringing models. It is claimed by the plaintiffs that the plaintiffs have acquired common law rights as well as statutory rights by virtue of the registration of its Suit Patent and therefore, any imitation of the products and method claimed therein by any other 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 Act and that too, without any consent of the defendants.
Page 13 of 164 C/CS/2/2017 ORDER17. On the aforesaid basis, the plaintiffs have also claimed for damages to the tune of Rs.50 crores in the Suit and have also contended that defendants are liable to render 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 Act.
18. It is further contended that as provided under Section 48 of the 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 from the act of making, using, offering for sale or selling the infringing product/machine/device in India. It is also contended that the plaintiffs have expended huge amount of effort, time, energy and intellect in developing and inventing the Suit Patent and the defendants cannot, by any stretch of imagination, be allowed to capitalize upon the same to the prejudice of the plaintiffs and thus, it is contended that the acts of the defendants, wherein the Suit Patent is being used are liable to be restrained by an order of injunction of this Court. It is also a Page 14 of 164 C/CS/2/2017 ORDER matter of record that defendant no.3 has filed an application for revocation of the Suit Patent on 20.3.2017 before Intellectual Property Appellate Board (IPAB).
19. On the aforesaid grounds, it is therefore contended by the plaintiffs that the plaintiffs have strong prima facie case, which is established beyond any iota of doubt and therefore, it is submitted that the defendants be restrained by way of injunction as prayed for in the application. It is contended that if no orders are passed against the defendants, the defendants would continue their illegal activity thereby, causing immense harm to the reputation and goodwill of the plaintiffs, which cannot be compensated in terms of money and therefore, it is contended that the balance of convenience lies most heavily in favour of the plaintiffs.
20. It is a matter of record that thereafter, by an order dated 14.6.2017 passed by this Court (Coram: Mr. C.L. Soni, J.) in Special Civil Application no. 11240 of 2017, Court Commissioner came to be appointed, report of which is already placed on record. The Suit was thereafter transferred to the Commercial Court at Vadodara and the Commercial Court at Vadodara, by an order dated 18.8.2017, issued Page 15 of 164 C/CS/2/2017 ORDER notice to the defendants making it returnable on 23.8.2017 and thereafter, the matter was transferred to this Court. As the said facts are on record, the same are not necessary to be discussed in further details in this order.
21. Over and above the aforesaid factual matrix averred in the plaint as well as the injunction application, the plaintiffs have relied upon the documentary evidence, more particularly, copy of the image of rough diamond which has been mapped using plaintiffs' galaxy system, copy of the image of the corresponding 3D model of the diamond generated by such mapping, copy of the image of the same 3D model with finished diamond plan therein using the "Advisor" software, true copy of the Suit Patent, copy of the certificate of registration of patent granted by the Controller of Patent under the Act and printout of data output as obtained from defendant no.1.
22. Defendants no. 1 to 3 and 6 to 11 have filed a written statement and so also defendants no. 4 and 5 have filed a separate written statement denying all the contentions and claim raised by the plaintiffs in the Suit as well as injunction application.
Page 16 of 164 C/CS/2/2017 ORDER23. The defendants have contended that they are primarily engaged in selling of inclusion scanning machine and rendering inclusion scanning services to its customers and have invested huge amounts for purchasing machines and equipments which are assembled so as to render its goods and services to its customers. It is averred that defendant no.3 in particular is in this business since more than 4 years. As a matter of preliminary submission, it is contended by the defendants that the Suit filed by the plaintiffs is flawed, baseless and not maintainable either in law or in facts and the same is liable to be dismissed. It is contended that the Suit is filed totally on falsehood and misrepresentation and is only to harass the defendants commercially so as to eliminate the completion and create monopolistic scenario with malafide and oblique motive to defame and cause considerable damage to the reputation and business of the defendants and hence, it is an abuse of process of law. It is also alleged by the defendants that the plaintiffs have concealed vital facts and has come up with unclean hands on the basis of which the Suit deserves to be dismissed. It is also contended by the defendants that the defendants have ensured that they are rendering scanning services which is not Page 17 of 164 C/CS/2/2017 ORDER infringing any intellectual property of any third parties including the plaintiffs. It is further contended by the defendants that in short span of time, the defendants have grown by leaps and bounds and captured market for their goods and services. It is alleged that the expanding growth of the defendants have actually made the plaintiffs nervous and induced them to refer to anticompetitive tactics which led to filing of this frivolous and baseless Suit, which needs to be outrightly dismissed. It is also alleged that no cause of action is established by the plaintiffs and on the said ground also, the Suit deserves to be dismissed. The defendants have also discussed the Commissioner's report and have disputed the same on various grounds.
24. It is denied by the defendants that plaintiff no.1 has invented any automated technology as claimed in the Suit Patent and in the resulting machines. It is contended that the plaintiffs have not invented the technology as the said technology was already known publicly and used in India before the priority date of the claim of the Suit Patent. It is contended that defendant no.3 has already filed an application for revocation before IPAB. It is therefore contended by the defendants that the plaintiffs cannot claim to be inventor of the Page 18 of 164 C/CS/2/2017 ORDER technology under the Suit Patent as the same was known publicly and is liable to be revoked. It is denied by the defendants that prior to invention of plaintiff no.1's technology under the Suit Patent, no automated commercial solutions were suggested for any mechanism for detection of the inclusions. The defendants have contended that there were prior existing technologies before the Suit Patent which form part and parcel of the revocation petition which provides for the mechanism for detection of inclusions in the diamonds or gemstones.
25. It is also denied vehemently that the plaintiffs have invented and developed the technology and/or machines as claimed. It is also contended that complete specification of the Suit Patent is not novel as the same was publicly used in India before priority date of the claim or to what was published in India or elsewhere in any of the documents referred and also that the claim of the Suit Patent is obvious and does not involve any inventive step having regard to what was published in India or elsewhere before the priority date of the claim prior arts. It is also contended that the existence of any international patent does not grant any rights in the Indian territory as intellectual property laws being Page 19 of 164 C/CS/2/2017 ORDER territorial in nature, rights under the same are restricted to the jurisdiction of the subject country and not beyond that. It is further contended that so far as the Suit Patent in India is concerned, the same is under revocation and is liable to be revoked under various grounds as provided under the Act. The defendants have also contended that defendant no.3 has developed a robust technology that helps traders in evaluation and planning of diamonds and gemstones. It is further contended that the technology thus developed by defendant no.3 includes the 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.
* A light sensor is positioned to receive the light transmitted from the gemstone.
Page 20 of 164 C/CS/2/2017 ORDER* 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.
26. It is therefore contended by the defendants that the technology of defendant no.3 is although competitive to the technology of the plaintiffs, it does not fall within the scope of claims of the Suit Patent whatsoever and hence, any possibility of infringement of the same is farfetched and not tenable. It is also contended that the defendants have ensured that defendant no.3 the instant scanning machine with great consciousness ensuring, that it does not infringe any proprietary rights of the third parties including plaintiffs, for which, the defendants have also relied upon the expert opinion of Anand & Anand, Advocates. It is alleged by the defendants that being nervous of the defendants' growth in the market, the present Suit is filed merely to create unnecessary bottlenecks in the defendants' growth. The defendants have also given the Page 21 of 164 C/CS/2/2017 ORDER analysis of the Suit Patent and more particularly, claims no.1 and 18 and have contended in detail that there is no infringement of Suit Patent of the plaintiffs. It is contended that the defendants' product does not use any device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium which is essential element of the Suit Patent without which infringement of the Suit Patent cannot be claimed. It is contended by the defendants that the defendants do not manufacture, sell or use any machine which directly infringes the Suit Patent in violation of the provisions of the Act. The defendants have contended that the defendants in fact have developed machines but such development does not infringe the Suit Patent as it does not comprise of 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 and in absence of which, no infringement can be claimed. It is also contended by the defendants that the Suit Patent deserves to be revoked and the claim of the plaintiffs is preposterous and not sustainable.
27. It is also submitted by the defendants that they are not engaged in providing inclusion Page 22 of 164 C/CS/2/2017 ORDER scanning service by using duplicate machines incorporating the Suit Patent. It is claimed by the defendants that defendant no.3 in collaboration of other defendants have developed a distinct technology that does not fall within the scope of claims of the Suit Patent constituting any infringement. It is also denied by the defendants that the defendants, in their business of providing inclusion scanning services to third party make use of the Suit Patent pertaining to determination of inclusions in a gemstone. It is also denied that the defendants are manufacturing or have manufactured or have provided services in relation to duplicate and infringing machines for commercial purposes. It is averred by the defendants that in fact the defendants have their own technology and machine which is independently developed ensuring that it does not infringe the Suit Patent whatsoever. It is contended that the sole basis or rather novelty on the basis of which the Suit Patent was granted in India is for a device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium and not for any scanning machine or system for scanning machines per se. It is alleged by the defendants that the plaintiffs have deliberately hidden this core heart of the invention and have repeatedly Page 23 of 164 C/CS/2/2017 ORDER indicated falsely to the Court that the very use of Selenium is their patent, which is grossly incorrect, false and mentioned purely to mislead the Court. The defendants have contended that numerous prior arts exist prior to the Suit Patent which were cited in the proceedings of the Suit Patent, particularly, in the First Examination Report issued by Indian Patent Office, as a result of which, the plaintiffs, by their own admission, limited their novelty in "a device or system operative to reduce or eliminate presence of gas bubbles from immersion medium". Relying upon the First Examination Report of the Indian Patent Office, it is contended by the defendants that the Suit Patent provides for limited rights to the plaintiffs and by their own admission are certainly estopped in equity to claim otherwise which even law does not grant to them, which indeed is misrepresentation and warrants strict action against the plaintiffs. It is claimed by the defendants that the device or machine that is being developed and used by the defendants does not comprise of any device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium. The defendants have submitted that the use of Selenium cannot, in any manner, whatsoever under the fair principles of claim Page 24 of 164 C/CS/2/2017 ORDER construction, be construed to be the substance/pith and marrow of the present invention and the Suit Patent relates to only on use of a device to prevent bubble formation. The defendants have contended that as the defendants' inclusion detection device does not have vacuum/bubble prevention device, there is no infringement of Suit Patent by the defendants' device in any manner. It is contended by the defendants that the device to prevent bubble formation enabled the plaintiffs to get the patent as that was last claim amendment that they did in order to get the allowance. It is also contended by the defendants that nonuse of such a device that prevents bubble formation can be clearly evidenced from the local commission report that indicated that no vacuum pump was present in the devices inspected during the visit.
28. The defendants have also denied the fact that the defendants have sold machines or devices that incorporate Suit Patent. It is also contended by the defendants that the plaintiffs have miserably failed to give any single cogent evidence which can prove that the defendants are making use of technology under the Suit Patent leading to infringement and that the claim raised by the plaintiffs is merely fantasizing the story as per their Page 25 of 164 C/CS/2/2017 ORDER whims being nervous about the expansion and growth of the defendants in the history and such attempt is frivolous and anticompetitive tactics which amounts to sheer abuse of process of law and have therefore prayed that the Suit deserves to be dismissed.
29. The defendants have reiterated that the plaintiffs are unable to show even a single piece of evidence which states that the machine/device by the defendants is infringing upon the Suit Patent by using a device or system operative to reduce or eliminate presence of gas bubbles from the immersion medium and without any evidence, merely to harass the defendants as the defendants have developed a competitive product, the present Suit is filed. It is contended that, on the contrary, the plaintiffs' own statement shows that they will produce evidence as and when they get chance to inspect machines manufactured by the defendants.
30. It is further contended by the defendants that even finding in the laboratory report to the effect that there are Selenium residue is not fundamental to the Suit Patent. It is further alleged that reading claim no.1 of the Suit Patent, First Examination Report as well as the response as filed against the examination Page 26 of 164 C/CS/2/2017 ORDER report clearly show that the core and sole novelty of the invention is in such a system including a device such as vacuum for withdrawal of gas bubbles from the said material. It is therefore contended by the defendants that any claim by the plaintiffs claiming infringement on the basis of Selenium residue is baseless, frivolous and not admissible. It is also contended that as the private investigator's report is in a sealed cover, the defendants have had no chance to defend the same and the same is against the principles of natural justice. Denying the contentions raised by the plaintiffs in the Suit, the defendants have contended that pith and marrow of the claim patent is of a device or system operative to reduce or eliminate presence of gas bubbles from immersion medium and not for the product or method for scanning gemstones for inclusion as such method of scanning gemstone are already widely known from various prior arts cited and relied upon by the defendants. It is contended that the plaintiffs cannot claim infringement purely on the output or end result of the machine/device by the defendants.
31. It is also reiterated that the essence of the Suit Patent is a device or system to reduce or eliminate presence of gas bubbles from Page 27 of 164 C/CS/2/2017 ORDER immersion medium, whereas the defendants' system does not use such device in their scanning mechanism and therefore, any claim pertaining to infringement of the Suit Patent stands vitiated. It is alleged by the defendants that the plaintiffs have filed the Suit merely to create bottlenecks in the legitimate business of the defendants who are in no way infringing the Suit Patent. It is further alleged by the defendants that such action by the plaintiffs is nearly to disrupt business and earn illegitimately by restraining the defendants to operate in the market. It is also denied by the defendants that they run their business covertly and surreptitiously and it is claimed that the business of the defendants is legitimate and open.
32. The defendants have further submitted that as the device or the machine of the defendants is different and not falling within the scope of the claims of the Suit Patent, there is no need for the defendants to take any licence or permission from the plaintiffs. It is also reiterated that the core inventive step of the Suit Patent is on the device that prevents bubble formation, which the inclusion detection device of the defendants is not using in any manner whatsoever which is also Page 28 of 164 C/CS/2/2017 ORDER evidenced/supported by the findings of the local Commissioner during inspection. It is therefore contended that as the core substance/pith and marrow of the Suit Patent is not being incorporated in the device of the defendants, there is no infringement. It is further contended that the plaintiffs did not show presence of or importance of the bubble prevention device in the defendants' device at all. It is alleged by the defendants that either the plaintiffs are not clear of their scope of patent and believed that they have protection of any type/configuration of inclusion detection device or are deliberately trying to mislead this Court to believe that their Suit Patent prevents any third party from using Selenium. Denying other contentions raised by the plaintiffs, it is contended by the defendants that the averments made pertaining to the investment, resources or effort in research and development leading to country's growth by the plaintiffs are baseless and irrelevant as the device by the defendants does not fall within the scope of the Suit Patent and there is no infringement of the Suit Patent as such.
33. It is also denied by the defendants that the activities of the defendants are covert or surreptitious. It is further contended by the Page 29 of 164 C/CS/2/2017 ORDER defendants that the defendants carry out their business publicly and legitimately only due to which the plaintiffs were able to procure diamonds scan from the defendants as claimed. It is therefore alleged by the defendants that the act of the plaintiffs and the averments are contradictory to each other and not tenable.
34. Denying further contentions raised by the plaintiffs, it is contended by the defendants that the defendants are not entitled to any damages and no infringement of Suit Patent is committed by the defendants and the same is not established beyond doubt and therefore, the Suit deserves to be dismissed. It is also contended, in the aforesaid facts, that the defendants are not liable to render accounts of gross sales as contended by the plaintiffs. The defendants have also contended that the defendants have not infringed the Suit Patent of the plaintiffs and that there is no prima facie case and no balance of convenience is in favour of the plaintiffs and therefore, it is contended that the plaintiffs are not entitled to any reliefs and the Suit deserves to be dismissed. The defendants have also prayed that the Suit itself deserves to be dismissed. It is also prayed that the present Suit be stayed in view of the fact that defendant no.3 Page 30 of 164 C/CS/2/2017 ORDER has already filed revocation application against the Suit and the same is pending for adjudication with IPAB and the Suit be stayed sine die till disposal of the revocation. It is also prayed that the plaintiffs and/or their associated Companies, servants, agents, assigns, etc. be restrained by an order of injunction of the Court from giving any effect to or any further effect to the Suit Patent or from making any claim in any manner against the defendants or against any other person on the basis of the Suit Patent and/or taking or adopting or continuing any proceedings on the basis of or arising out of the order of the Controller of Patents sealing the Suit Patent pending disposal of revocation by IPAB.
35. The defendants, over and above the documents of their identity, have relied upon the following documents:
(a) Copy of partnership agreement for defendant no.1.
(b) Copy of certificate of incorporation for defendant no.2.
(c) Copy of the partnership agreement for defendant no.3.
Page 31 of 164 C/CS/2/2017 ORDER(d) Certified copy of invoices for purchasing inclusion scanning machines by defendant no.3.
(e) Certified copies of few invoices raised by defendant no.3 for rendering its services to customers.
(f) Copy of acknowledgment of revocation as filed by the defendant no.3.
(g) Copy of prior arts cited in the prosecution and additional strongly relevant prior arts cited in the revocation of the Suit Patent.
(h) Revocation petition filed by defendant no.3.
(i) Copy of the infringement opinion by Anand and Anand to defendant no.3.
(j) Copy of First Examination Report (FER) issued on April 16, 2014, rejecting all claims of the then patent application 1606/MUMNP/2009 under section 2(1)(j).
(k) Copy of response to First Examination Report (FER) dated 23rd September, 2014 of the then patent application Page 32 of 164 C/CS/2/2017 ORDER 1606/MUMNP/2009.
(l) Hearing notice by Controller.
(m) Controller's decision order.
(n) Prior patent application with Application no. 876/CHENP/2008 filed by the defendant in India on 21st February, 2008 pending before the Indian Patent Office.
36. As mentioned hereinabove, defendants no.4 and 5 have also filed a separate written statement and have also raised a counter claim, which is not discussed in detail in this order. Suffice it to note that defendants no.4 and 5 have also relied upon the reasons, for which, the patent deserves to be revoked and have also relied upon the application of revocation which is filed, prior arts (at AnnexureD Colly.), copy of the report of Anand & Anand, Advocates, First Examination Report dated April 16, 2014, rejecting all claims of the then Patent Application under Section 2(1)(j) of the Act, copy of the response of First Examination Report given by plaintiff no.1 dated 23.9.2014, Hearing Notice by the Controller, Controller's decision order, prior Patent Application with Application no. 876/CHENP/2008 filed by the defendants in Page 33 of 164 C/CS/2/2017 ORDER India on 21.2.2008 pending before the Indian Patent Office and copy of complete specification of the Suit Patent. Commissioner's report as well as a copy of the report of private investigator (in a sealed cover) are also on record. It deserves to be noted that the plaintiffs have also replied to the counter claim raised by defendants no.4 and 5 along with the documents.
37. However, as the matter is considered only for the limited purpose of temporary injunction, the aforesaid material is not necessary to be discussed at this stage.
38. Heard Mr. Mehul S. Shah, learned Senior Advocate assisted by Mr. Dilip B. Rana, Mr. Sandeep Grover, Mr. Ishwer Upneja, Mr. Vara Gaur, learned advocates for the plaintiffs and Mr. Saurabh N. Soparkar, learned Senior Advocate assisted by Mr. Manan Shah, learned advocate for the defendants.
39. Over and above the oral submissions made by the learned advocates appearing for the respective parties, the plaintiffs as well as the defendants have also submitted their written arguments. I have also referred to the relevant documents which are on record.
Page 34 of 164 C/CS/2/2017 ORDER40. Mr. Mehul S. Shah, learned Senior Advocate for the plaintiffs, relying upon the certificate of grant of patent issued by the Controller of Patent as well as the complete specification, contended that the plaintiffs have invented a device, whereby determination of location of inclusions in gemstone is made. It was contended that considering the novelty and the invention, the patent is granted under Patent no.IN271425.
41. Mr. Shah, referring to the contents of the plaint as well as the injunction application, contended that the diamonds are valued by 4 C's, namely, Clarity, Colour, Cut and Carat. It was contended that all rough stones contain various types of imperfections known as "inclusions" or "flaws" in form of dark spots, streaks and other blemishes and for optimum clarity, location, shape and size of inclusions inside a rough stone must be identified in order to cut it adjacent or through such inclusions. It was contended that before invention of plaintiff no.1, no automated commercial solutions for detecting the exact locations of inclusions in gemstones were available. It was contended that due to lack of accuracy for inclusions, the value of gemstones would be affected.
Page 35 of 164 C/CS/2/2017 ORDER42. It was therefore contended that the technology developed by plaintiff no.1 was a first of its kind and therefore, after considering all objections pertaining to novelty and obviousness in the First Examination Report, office action and hearing notice raised by a third party at the stage of pregrant opposition, Registrar of Patents in India have granted the patent.
43. It was also contended that the analysis of the Suit Patent in the claims which are made by the plaintiffs, more particularly, described in Paragraph 19 of the plaint makes the invention of the plaintiffs totally different from other machines and therefore, reliance upon the prior arts by the defendants in their written statement as well as counter claim were all taken into consideration by the Controller of Patent before granting the Suit Patent. It was contended that rights of plaintiff no.1 have been protected for the same technology by patents granted in other jurisdictions, namely, USA, Australia, Canada and South Africa. It was also contended that the counter claim filed by the defendants is as such not maintainable.
44. Referring to Section 48 of the Act, it was contended that the plaintiffs have right to Page 36 of 164 C/CS/2/2017 ORDER restrain the defendants from making, using, offering for sale, selling or importing any item which infringes the patent of the plaintiffs. Mr. Shah also relying upon the Court Commissioner's report, contended that the plaintiffs have established beyond any iota of doubt that the machines used by defendant no.1 for scanning the rough diamonds for its customers' uses are having the same technology, which is protected under the Suit Patent.
45. Further, more particularly, relying upon Paragraph 13 of the final report of the Court Commissioner, it was contended that the machines of defendant no.1 provide for introduction of Helium gas in the container before the same is heated and the pressure of the gas is controlled by various valves found in the machine. It was further contended that the structure of the machines of the defendants was also found to be similar. Further, relying upon the Commissioner's report as well as CD which is submitted by the Court Commissioner along with the report, it was contended that the machines used by the defendants are comparable to the machines operated by plaintiff no.1. It was further contended that even the Court Commissioner has noted that defendant no.1 used Selenium as the Page 37 of 164 C/CS/2/2017 ORDER medium in which the rough diamonds are submerged quickly at first and then at a slower pace after the bell valve gets compressed and thereafter, even at a slower pace prior to actual process of scanning. It was contended that only the contention which is raised by the defendants is that they do not have bubble prevention technology/device and it is further the case of the defendants that there is no vacuum pump in the device of the defendants. It was further contended that the defendants have admittedly stated in the video recording that there is only one distinguishing factor between their machines from those of the plaintiffs which is the perceived absence of the bubble prevention device/technology in terms of a vacuum pump. It was further contended that bubble prevention mechanism which is part of the Suit Patent is not confined to removal of bubble through vacuum pump alone. Explaining the steps, it was contended as under:
(a) 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;
Page 38 of 164 C/CS/2/2017 ORDER(b) Using a sealable container for the material in which the gemstone must be immersed, such that contaminants cannot enter the container when it is sealed;
(c) Introducing of an inert gas (such as helium) through the container in which the material is stored;
(d) Maintaining inert gas atmospheric pressure in the sealable container;
(e) Slow heating of the material in the container in solid pellet form at excess pressure of helium to become a liquid before the stone is inserted in the material;
(f) Applying a vacuum to the container in which the material is located before and/or during the hearing of the material;
(g) Inserting the diamond into the container quickly at first and then at a slower pace after the ball valve gets compressed and thereafter at an even slower pace until the stone is fully submerged in the material held in the container, which pace is slow enough to prevent the entrance of Page 39 of 164 C/CS/2/2017 ORDER any bubbles of the inert gas into the material; and
(h) 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.
46. It was contended that except the vacuum pump, all other steps are present in the machines of defendant no.1. It was alleged that the documents on record show that the vacuum pumps were deliberately and intentionally removed from the machines found at defendant no.1's premises. It was contended that as provided under Section 114 of the Act, a mere non infringement of only one claim under the entire patent does not absolve the defendants from being liable for infringement of all other claims under the patent and as such, nonpresence of vacuum pump at the time of the commission being executed would not tantamount of noninfringement of Suit Patent.
47. It was contended that it is pertinent to note that the defendants have selected and have bifurcated the legal actions against the plaintiffs. It was contended that defendant no.3 has filed a revocation petition before Page 40 of 164 C/CS/2/2017 ORDER IPAB. However, merely because such revocation petition is filed before the authorities would not preclude this Court from passing an injunction order if the case of infringement is made out. Mr. Shah, relying upon the judgment of Delhi High Court in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd., AIR 2000 Delhi 23, TVS Motor Company Ltd. Vs. Bajaj Auto Ltd., 2009 (40) PTC 689 (Mad.), and CTR Manufacturing Industries Ltd. Vs. Sergi Transformer Explosion Prevention Technologies Pvt. Ltd., 2015 SCC Online Bom. 5538. It was also contended that as such IPAB is currently not in session and the revocation petition is not even registered and therefore, the same would not affect the rights of the plaintiffs to approach this Court. It was further contended that merely because defendants no.4 and 5 have filed a counter claim for revocation, in the present Suit, is of no consequence and as such the counter claim is not maintainable. Relying upon the judgment of Alloys Wobben & Anr. Vs. Yogesh Mehra & Ors., (2014) 15 SCC 360, it was contended that it is a settled legal position that the revocation petition and counter claim cannot be said to be maintainable at the same time in respect of the same patent as decided by the Hon'ble Apex Court and as it was Page 41 of 164 C/CS/2/2017 ORDER further reiterated that such a revocation petition as well as the counter claim are filed by different arms of the same entity and defendants no.3 to 5 are nothing but alter egos of defendant no.1. Referring to the judgment of Hon'ble Bombay High Court in the case of CTR Manufacturing Industries Ltd. (supra), it was further contended that just as mere grant of patent does not amount to an automatic inference of validity of the patent, mere filing of revocation of the patent does not tantamount to an automatic inference of patent being invalid and/or unenforceable and mere pendency of revocation petition would not automatically prevent the Court from granting adinterim injunction if otherwise a case for injunction is made out.
48. It was further contended that it is not so that the bubble prevention test can only be operated by vacuum pump, but the fact that they adopt the method and patented method cannot be used by any device. It was further contended that it is a continuous process. It was further contended that even if the Commissioner's report is looked at, there was material time gap which was consciously allowed to pass by so that they can manipulate so as to show distinguishing things and only because the vacuum pump is not found from the Page 42 of 164 C/CS/2/2017 ORDER defendants, it does not mean that there is infringement. Relying upon the provision of Section 114 of the Act, it was contended that even if there may be invalid claims for the claims which are valid, injunction has to follow. It was further contended that at the time of grant of patent, objections raised by the third party before the Controller of Patents were overruled and such counter claims which are raised, if compared, are identical. It is also contended that the defence of the defendants is for counter claim and revocation. It was contended that the case of the defendants is that as everything is at large, it does not grant injunction. However, prima facie reading Section 64 of the Act, counter claim is just not maintainable and therefore, those pleadings ought not to be looked into by the Court. Mr. Shah relying upon the provisions of Section 2(1)(j)(a) of the Act, which defines words "inventive step", contended that the method adopted by the plaintiffs was never obvious to those persons and it is a kind of leap forward. It was also contended that it covers both the advancement of knowledge and it does have economic significance and on the basis of the same, patent is granted. Again referring to provision of Section 48 of the Act, it was contended by the learned Senior Advocate for Page 43 of 164 C/CS/2/2017 ORDER the plaintiffs that as per the said provision, the plaintiffs have right to ask for preventing the defendants from using the same. It was contended that only because the revocation of patent and counter claim have been filed, the patent granted does not become vulnerable and the present case is a clear case of infringement.
49. It was also contended by Mr. Shah that ultimately, if the injunction pending the main Suit is granted, the defendants can continue to manufacture their own machines, but without violating the patent of the plaintiffs.
50. Mr. Shah, relying upon the judgment in the cases of Ashwinkumar K. Patel Vs. Upendra J. Patel & Ors. (1999) 3 SCC 161, Dana Ram & Ors. Vs. Civil Judge (J.D.) & Ors., rendered in Civil Writ Petition no.7099 of 2003 dated 27.4.2004, Amarben Vs. Laxmanji Bhikaji Thakor, 2014 SCC OnLine Guj. 7158 and Mathew V. Mathew Vs. Premier Enterprises, rendered in O.S. no.1 of 2000(A) dated 8.6.2009, contended that while deciding the injunction application, report of the Court Commissioner is of considerable importance.
Page 44 of 164 C/CS/2/2017 ORDER51. Mr. Shah further contended that in light of the facts as contended above and the law discussed, nothing adverse is pointed out to indicate even the prima facie that products/process for which the patent is obtained, is not an inventive step. It was further contended that once it is established prima facie, injunction has to follow, particularly, in light of the wordings of the prayers prayed for even as per the case of the defendants. It was contended that except for one socalled variation, it is having the same method and product bringing about the identical results and if they are correct in saying that no they are not infringing, then, they would not be in any way affected by the reliefs as prayed for. On the aforesaid grounds, it was contended that all ingredients of Order XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 are in favour of the plaintiffs and therefore, the present application below Exh.5 deserves to be allowed.
52. Per contra, Mr. Saurabh N. Soparkar, learned Senior Advocate for defendant no.1, after enumerating the main points which have been argued on behalf of the plaintiffs, contended that what is now argued orally is not forming part of the contentions in the plaint and the Page 45 of 164 C/CS/2/2017 ORDER same goes to the root of the matter. Referring to main claims which are accepted by the Controller of Patent being claims no.1 and 18, it was contended that these claims say, inter alia, about the device to remove bubbles. It was contended that the Court Commissioner came for inspection and that device was not there and thus, principal claim is of removal of bubble by vacuum pump. Mr. Soparkar also took this Court through the contents of the plaint and contended that the whole case of the plaintiffs is different and what is argued is not the case in the pleadings at all. It was contended that there is not even a suggestion or an indication about the vacuum pump as well as removal of bubble and the same is not even whispered at all. It was contended that in such circumstances, how can oral arguments be made which is not found in the plaint. It was contended that the ground on which the Suit is filed is use of Selenium and it is stated that the same is in violation of the Suit Patent and bubble and vacuum pump for removal of bubble is not even mentioned. It was thus contended that whole case pleaded is in variance with what is argued and hence, no relief can be granted. It was contended that vacuum pump is not even pleaded and it is not their case and therefore, the plaintiffs cannot claim injunction on this basis. Mr. Page 46 of 164 C/CS/2/2017 ORDER Soparkar contended that the defendants' case is that the defendants do not use any vacuum pump. It was contended that even if it is presumed that there are pleadings, the defendants' machines do not use any vacuum pump or any other device for removal of bubble. It was contended that what is the basis of the argument is the report of the Court Commissioner. Mr. Soparkar, further referring to the Court Commissioner's report, contended that it is not possible to infer that the vacuum pumps were removed in all 212 machines. It was contended that outlet valve can be provided for many things. It was thus contended that even the Court Commissioner has noted that in 212 machines, no pump was there and therefore, whole Suit is a misconceived Suit. It was contended that the report of the Court Commissioner is wholly unrealistic, bias and the Court Commissioner was appointed by the plaintiffs and no pump has been found and therefore, there is no possibility for use of the pump by the defendants and thus, there is no infringement and therefore, the application Exh.5 deserves to be rejected. It was contended by Mr. Soparkar that each claim is a different claim and therefore, the defendants have not committed any breach of the patent. It was reiterated by Mr. Soparkar that the defendants are not using any vacuum pump. It Page 47 of 164 C/CS/2/2017 ORDER was contended that in the plaint, the case of the plaintiffs is the presence of Selenium. Mr. Soparkar, referring to the new application filed by the plaintiffs, contended that Selenium is subject matter of a different patent application, which is not granted. It was also contended that the defendants are not using bubble removal device and hence, the plaintiffs should fail on merits as well as the pleadings.
53. It was contended that there can be no injunction when patent is new one and there are disputes raised by the counter claim and revocation application. It was further contended that as per the provisions of Section 107 read with Section 64 of the Act, counter claim will have to be examined at this stage as it is available as defence under Section 64 of the Act and therefore, the contention raised to the effect that the counter claim cannot be examined in law, is misreading of the provisions.
54. Mr. Soparkar further contended that the patent was granted on 22.2.2016 and within a period of one month i.e. on 15.3.2017, revocation application has been filed, whereas the Suit is filed only on 6.6.2017 i.e. after almost 3 months of filing of the application for Page 48 of 164 C/CS/2/2017 ORDER revocation. At this stage, Mr. Soparkar also relied upon the judgment of this Court in the case of Garwarewall Ropes Ltd. Vs. Techfab India, 2008 (2) GLH 721 and thus, contended that even if the date of application is considered as per the provisions of Section 45 of the Act, patent is new. It was contended that all the 3 conditions are satisfied and hence, in the instant case, no injunction be granted. It was contended that various grounds are raised in the counter claim as regards validity of the patent. It was also contended that bubble removal device is not claimed and therefore, the patent fails and hence, under either circumstances, there can be no injunction against the defendants. It was also contended that vulnerability found to be examined at the stage of Exh.5 and there cannot be any presumption as to the validity only because the patent is granted. In order to buttress his argument, the learned Senior Advocate for the defendants has relied upon the judgments reported in 2011 (48) PTC 426, 2009 (40) PTC 193, 1999 (19) PTC 479 and AIR 1978 Delhi 1. It was therefore contended that on examination of patent and examining the vulnerability, prima facie, the patent requires to be revoked. Mr. Soparkar also relied upon documents at Exhibits D1 to D6 which are produced on record by defendant no.1 Page 49 of 164 C/CS/2/2017 ORDER with his written statement and contended that the document at D4 was published in the year 1965, whereas the document at D5 was published in the year 1992 and therefore, what has been claimed by the plaintiffs is not something new. Referring to the parameters of Section 64 of the Act, it was contended by Mr. Soparkar that except for claims no.1 and 18, no patent is granted. Relying upon the judgment of the Bombay High Court in the case of CTR Manufacturing Industries Ltd. (supra) and more particularly, Paragraphs 28, 50 and 51 as well as the relevant contentions raised in the written statement of the defendants, it was contended by the learned Senior Advocate for the defendants that there is a conflict between oral submission and the pleadings. It was contended that when the defendants do not use the vacuum pump and the patent is new, the machines of the defendants do not have bubble removal mechanism. It was also contended that the Commissioner's report is inappropriate and is not against the defendants as far as bubble removal mechanism is concerned. It was also contended that the Commissioner's report cannot go beyond what he was asked. It was contended that only because outlet is there and hence, it is inferred that there may be some device and the observations made by the Court Commissioner in his report makes the Page 50 of 164 C/CS/2/2017 ORDER report bias and beyond jurisdiction. It was also contended that the judgment of Madras High Court in the case of TVS Motor Company Ltd. (supra) relied upon by the plaintiffs is overruled and therefore, the same has no application. As far as the judgment relied upon by the plaintiffs for the purpose of Court Commissioner report is concerned, the same is also not applicable to the present case.
55. It was therefore submitted that the plaintiffs have no prima facie case and have no balance of convenience and no irreparable loss is likely to be caused and therefore, Exh.5 application must fail.
56. In rebuttal to the contentions raised by the learned Senior Advocate for the defendants, Mr. Shah, learned Senior Advocate for the plaintiffs has again reiterated the submissions which were made earlier. It was contended by Mr. Shah that bubble prevention mechanism is not confined to the presence of vacuum pump. It was contended by Mr. Shah that the claims no.1 and 18 are independent claims of the Suit Patent and the apparatus is meant to detect location of inclusions. It was further contended that the said two independent claims were for the purpose of Page 51 of 164 C/CS/2/2017 ORDER preventing bubbles and a method of 3 dimension elimination so as to detect exact location of the inclusions. It was also contended that the independent claims as per the Suit Patent is a system and method for reduction of presence of any substance other than inclusions and it does not talk of only vacuum pump, but such system and method comprises of various other methods and steps for withdrawing gas bubbles from the said material. It was contended that two things are provided in the machine; firstly, the vacuum pump; and another is by inserting gas which is used for removal of air bubbles for which components are provided for in the apparatus. It was also contended that the same has nothing to do with the vacuum pump and as noticed even in the Commissioner's report, even in the machines of the defendants, such components are found. Mr. Shah contended that now in this context and juxtaposition to what is exactly granted is of 3 dimensional effects and this is what the patent is. It was contended that the Suit Patent is to find out inclusions in 3 dimensions and such patent is granted and therefore, it was contended that such novel feature is not found in any of the apparatus and therefore, reliance placed for by the defendants on documents at D4 to D6 are different and irrelevant and it is not a prior Page 52 of 164 C/CS/2/2017 ORDER art. It was contended that novel feature which is found in the machines of the defendants is enough for prima facie case. It was therefore contended that the contentions raised by the defendants that the pith and marrow of the Suit Patent lies in the use of vacuum pump for prevention of bubble formation is a figment imagination of the defendants and is not borne out from the record. It was further contended that thus, it is manifest that withdrawal of gas bubbles under the Suit Patent is not limited to applying vacuum. The said process is also stated to be done by applying inert gas and therefore, the defendants' contention that absence of vacuum pump in their machines shows a complete noninfringement of the Suit Patent is incorrect and untenable. Referring to Paragraphs 29 and 32 of the plaint, it was contended by Mr. Shah that these are the pleadings as to how the defendants have infringed the patent and therefore, the question of plaintiffs' pleading that the whole case is based upon Selenium and vacuum pump and the case of the defendants that the plaintiffs' pleadings is based on the pleadings the plaintiffs have based their whole case upon presence of Selenium and vacuum pump is not correct. It was also contended that while presence of bubble prevention mechanism was considered as one of Page 53 of 164 C/CS/2/2017 ORDER the novel and unique feature in the Suit Patent by the Controller of Patent, the Suit Patent was not granted only because of that single feature and various other factors have been considered as novel and unique that resulted into grant of patent in favour of the plaintiffs. It was contended that after considering the objections raised and even the U.S. patent being document D1 in the counter claim of defendants no.4 and 5 and so also the opposition to grant the Suit Patent and after considering the said prior arts, the Suit Patent has been granted. It was contended that it contains various other features of apparatus and method as part of the amended claims no.1 and 18 of the Suit Patent. Referring to the order passed by the Patent Controller, it was contended that the Patent Controller, after examining of such aspects, has come to the conclusion that prior art does not disclose the apparatus which takes measure for reducing presence within its immersion material of any substance other than the inclusions having a third refractive index and said measures includes withdrawal of gas bubbles from the said material and determining the position of inclusions in gemstone in all 3 coordinates by illuminating and imaging the entire gemstone. It was therefore contended that the Suit Patent is not granted only Page 54 of 164 C/CS/2/2017 ORDER because of presence of vacuum pump, is erroneously contended and alleged by the defendants. Mr. Shah contended that the Suit was filed only on the circumstantial evidence in form of presence of Selenium residue and rough gemstone and on the basis of the report which was received by the plaintiffs to their private investigators. However, when the Court Commissioner entered the premises of defendant no.1, the plaintiffs learnt about the defendants infringing the machines exactly and the extent of infringement of the Suit Patent by the defendants. Relying upon the provisions of Order VI Rule 2 of the Code of Civil Procedure, 1908, it was contended by Mr. Shah that it is a settled law that the plaint should contain only material facts and not evidence and in order to prima facie disclose the case of infringement of Suit Patent, the plaintiffs mentioned those facts which the plaintiffs could unearth without assistance of the Court Commissioner. It was contended that while deciding the interim injunction application, the Court should look into the evidence presented before the Court through the Court Commissioner.
57. It was contended that the counter claim raised by defendants no.4 and 5 are sham and bogus and all prior arts relied upon by the Page 55 of 164 C/CS/2/2017 ORDER defendants being documents at D1, D4, D5 and D6 are different and distinct than the improvement which is made by the plaintiffs and as accepted by final decision of the Patent Controller in granting the Suit Patent. It was contended that the prior arts which are relied upon by the defendants are different and distinct and have been considered by the Patent Controller while accepting that there is novelty in the apparatus of the plaintiffs and has accepted the independent claims no.1 and 18 and have granted the Suit Patent. It was also contended by Mr. Shah that at the stage of examining the prima facie case and considering the injunction application, the evidence by way of Court Commissioner's report may also be taken into consideration. It was contended that defendant no.1 has relied upon the opinion of Anand and Anand. However, the same fails on various grounds. Further, elucidating the opinion relied upon by the defendants, it was contended by Mr. Shah that the said opinion describes the patent as GSPN Exim as the instant product. However, the said opinion fails on various grounds. It was contended that in the said opinion, at the subhead titled as "Technical Understanding", all the components of the apparatus are not provided. It is pertinent to point out that the same are indispensable in order to judge Page 56 of 164 C/CS/2/2017 ORDER whether the product therein, has infringed the "apparatus" claim of the Suit Patent or not. It was contended that further, the opinion fails to provide the method of operation of the product therein, which is again necessary to assess whether the "method" claim of the Suit Patent has been infringed or not. It was further contended that the subhead titled as "Understanding of the Subject Patent IN271425", erroneously states that the subject matter of the Suit Patent is a device for withdrawal of gas bubbles from liquid material. As mentioned hereinabove, the Suit Patent optionally among other elements of the apparatus, provides for a device for increasing the vacuum within the apparatus. It was also contended that it must be appreciated that not only was the information meted out to Anand and Anand limited as stated therein, but also the said opinion was generated for the satisfaction of its clients only. Lastly, the opinion relied upon by the defendant no.1 does not even bear the name of its signatory. It was contended that the Suit Patent is pertaining to the "Method for evaluation of a Gemstone", which has been explained in detail in the plaint. The use of Selenium as an immersion medium is one of the key and integral features of the apparatus and the method for evaluation of a gemstone. The Page 57 of 164 C/CS/2/2017 ORDER presence of Selenium amongst other features in the defendants' machines, provides circumstantial evidence of the likelihood of infringement, which is sufficient to establish a prima facie case for grant of interim injunction in favour of the plaintiff. It was further contended that while it is not disputed that the plaintiffs' application regarding use of Selenium is a subject matter of a separate patent application, the defendants have tried to confuse this Court on this aspect. The plaintiffs' Suit Patent provides for use of Selenium in the defendants' claims to claims no.1 and 18; and therefore, upon finding Selenium residue on the rough gemstones scanned by the defendants, the plaintiffs averred the same as a circumstantial prima facie evidence. However, the plaint clearly states that the data output generated using the defendants' infringing machines clearly corroborates that the defendants' machines are using the apparatus and method identical or similar to that protected by the Suit Patent and therefore, it was contended that bringing up the said application is irrelevant and inconsequential to the present Suit.
58. It was contended that the Hon'ble Division Bench of this Court in the case of Rajnikant Page 58 of 164 C/CS/2/2017 ORDER Devidas Shroff & Anr. Vs. Pharma Chem & Ors., 2009 SCC Online Guj. 790, more particularly, Paragraph 37 of the said judgment, while dealing with Garwarewall Ropes Ltd. Vs. Techfab India (supra), has expressly distinguished the said decision on facts, and proceeded to grant adinterim injunction in favour of the plaintiffs despite a counter claim for revocation having been filed in that case by the defendants.
59. Further, referring to the case of Rajnikant Devidas Shroff (supra), it was contended by Mr. Shah that even in that case, the counter claim was filed by the defendants of the said Suit. Still however, the stay was granted and the said judgment was confirmed before this Court as well as before the Hon'ble Apex Court. Relying upon the judgment in the case of Strix Ltd. Vs. Maharaja Appliances Ltd., the Hon'ble Delhi High Court, while observing that Section 48 of the Patent Act vests the patentee with a right to prevent all other users from making use of patent or commercially exploiting the patent except with the prior permission of the patentee and had granted interim relief even though the defendants had filed a counter claim against the patent in the main Suit.
Page 59 of 164 C/CS/2/2017 ORDER60. Mr. Shah also further contended that 4 local Commissioners were appointed by Hon'ble District Court of Surat vide order dated 14.6.2017 from the list of 8 suggested names by exercising its discretion and by exercise of discretion, the Court appointed 2 Commissioners from Surat, 1 from Mumbai and 1 from Delhi. Mr. Shah contended that it was merely a coincident that the Commissioner from Delhi found infringing products and the other Commissioners either they are not permitted to enter into the premises of the defendants or the other premises were found vacant as the case may be and therefore, the contentions raised by the defendants that the Court Commissioner's report is in any manner biased is nothing but an attempt to find something cavil at. It was contended that on the contrary, the behaviour of the defendants when the Court Commissioner visited their premises was such that the Court Commissioner was asked to wait for half an hour before it would enter the premises. On the aforesaid grounds, it was therefore contended that on the contentions raised in the injunction application and the submissions made, Exh.5 deserves to be granted.
61. Mr. Soparkar, in his further reply, contended that the main basis on which the patent was Page 60 of 164 C/CS/2/2017 ORDER granted to the plaintiffs was the vacuum pump device and the patent which is granted nowhere says about the Selenium used. It was contended that the plaintiffs are trying to give a twist which is inconsistent to the facts of the case. Mr. Soparkar further submitted that the defendants are not using the vacuum pump device. It was contended that the patent was granted on 22.2.2016. The revocation application was preferred by two of the defendants on 15.3.2017 and the Suit was filed as a counter blast on 6.6.2017. Commenting on the judgments which are relied upon by the learned counsel for the plaintiffs, Mr. Soparkar contended that the plaintiffs have wrongly relied upon the judgment in the case of TVS Motor Company Ltd. (supra) as the same is not a good law. Further, relying upon the judgment of the Apex Court in the case of TVS Motor Company Ltd. (supra), it was contended that no injunction was granted. Mr. Soparkar also distinguished each and every judgment relied upon by the plaintiffs and has contended that the facts which were found in such judgments are not found in the present case and therefore, they are not applicable. It was reiterated by Mr. Soparkar that the patent is new and it is not tested by any Court of law and therefore also, the plaintiffs are not entitled for the injunction Page 61 of 164 C/CS/2/2017 ORDER as prayed for. It was contended that the issues which are raised by the plaintiffs are triable issues and unless and until they are tried, the plaintiffs have no prima facie case and balance of convenience is also not in favour of the plaintiffs and it cannot be said that the plaintiffs cannot be compensated in terms of money. On the aforesaid grounds, it was therefore reiterated that on the grounds which are raised by the defendants, the injunction application deserves to be dismissed.
62. Before reverting to consider the submissions made by both the parties, it would be appropriate to refer to the relevant provisions of the Patents Act, 1970:
63. Sections 2(j) and 2(j)(a) of the Act reads as under: "(j) "invention" means a new product or process involving an inventive step and capable of industrial application;
(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 makes the invention not obvious to a person skilled in the art;"
64. Section 48 of the Act reads as under: Page 62 of 164 C/CS/2/2017 ORDER "48. Rights of patentees - Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India."
65. Section 107 of the Act reads as under: "107. Defences, etc., in suits for infringement. (1) In any suit for infringement of a patent every ground on which it may be revoked under section 64 shall be available as a ground for defence.
(2) In any suit for infringement of a patent by the making, using or importation of any machine, apparatus of other article or by the using of any process or by the importation, use or distribution or any medicine or drug, it shall be a ground for defence that such making, using, importation or distribution is in Page 63 of 164 C/CS/2/2017 ORDER accordance with any one or more of the conditions specified in section
47.
107A. Certain acts not to be considered as infringement. For the purposes of this Act,
(a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product;
(b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as a infringement of patent rights."
66. Section 114 of the Act reads as under: "114. Relief for infringement of partially valid specification -
(1) If in proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of which infringement is alleged, is valid, but that any other claim is invalid, the court may grant relief in respect of any valid claim which is infringed:
Provided that the court shall not grant relief except by way of Page 64 of 164 C/CS/2/2017 ORDER injunction save in the circumstances mentioned in subsection (2).
(2) Where the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the court as to costs and as to the date from which damages or an account of profits should be reckoned, and in exercising such discretion the court may take into consideration the conduct of the parties in inserting such invalid claims in the specification or permitting them to remain there."
67. It would also be appropriate to refer to the judgments relied upon by both the sides which are as under:
68. In the case of CTR Manufacturing Industries Limited Vs. Sergi Transformer Explosion Prevention Technologies Pvt. Ltd., 2015 SCC OnLine Bom 5538, it has been observed thus: "50. I think the words I have emphasized form a limitation to the defence. It is not enough to show (as both Sergi's experts seem to do) that the patent has known devices or integers. Nor is it enough to show that those devices perform the functions for which they were intended; that, at least, is obvious, for if they did not, they would not be used and would be mere surplusage. It must also be shown that every one Page 65 of 164 C/CS/2/2017 ORDER of these integers functions independently of every other one and does so in a manner that is known. I cannot possibly arrive at that finding. The material before seems clearly to indicate that CTR's use of the Differential Relay, the Buchholz Relay and the Master Trip or Circuit Breaker, all previously known to the art, have been used in a completely unique and novel fashion. They do not work independently of each other in a known way; and the patent lies precisely in the combination of their use, the timing, and the manner in which their known functions are deployed to deliver a stated result. 'Mosaicing', cobbling together bits and pieces, is not in and of itself a complete defence to a patent infringement action except in very limited circumstances. In short, to succeed, the charge of mosaicing must itself be selfevident and plain, one that can be put together by "an unimaginative man with no inventive capacity".55 The cobbling together must be so obviously noninventive that 'he who runs can read'.
51. There is a vast body of law, both here and in other jurisdictions, on this. For combination patents, the issue for determination is whether the combination of the integers was at the relevant time obvious, not whether each integer regarded in isolation was obvious. In contemporary terms, the test is to see whether this combination of integers from the myriad previous publications that constitute the prior art is an obvious selection.
Page 66 of 164 C/CS/2/2017 ORDER80. I must clarify that it is my understanding that I am not, at this prima facie stage, required to assess the validity of the patent, or whether Sergi can maintain its pre and postgrant oppositions, its application for revocation of the patent and its CounterClaim all at the same time. I have subsequently clarified this to both sides, and that issue is pending in this very matter before another court. It is not, therefore, necessary to consider the impact of the Supreme Court's decision in Dr. Aloys Wobben & Anr. v Yogesh Mehra & Ors.,93 except to note that it overrules the decision of the Delhi High Court that was relied on by Mr. Justice Gavai in this very litigation while deciding Civil Revision Application No.185 of 2011 (against the District Court's order refusing to take the CounterClaim on record) on 6th June 2011.94 I need only note that the present litigation is unusual because it is precisely the situation that the Supreme Court said was unlikely ever to arise:
where there are, pending all at once, a postgrant opposition (and also a pregrant opposition, it seems), a CounterClaim and an application for revocation. If the grant of a patent is not determinative and does not yield an injunction for the asking, it must follow that the mere pendency of a CounterClaim, oppositions or revocation applications cannot defeat an injunction claim either.
81.5 Where a patent has been granted on the patentee disclaiming a Page 67 of 164 C/CS/2/2017 ORDER particular integer, i.e., by saying it is not essential to his product, then the addition of that non essential integer does not, per se, defeat the claim for infringement. It must be shown that the additional integer is essential, required and returns a result that is as or more efficient than that produced by the patent. Adding something superfluous to the essential integers does not defeat an infringement claim. It must be shown that what is added is also essential and that it satisfies the previous tests of interdependency, producing as good a result or a new and improved result.
81.6 The patent must be read in a purposive manner to determine what constitutes its 'pith and marrow'.
81.7 At an interim stage, a Court is not required to examine the validity of a patent so much as its vulnerability; and this is to be tested not on a mere sayso, but with the aid of cogent and persuasive technical and scientific material, including reliable expert opinions and other data.
81.8 The fact that a patent has been granted is not wholly immaterial at an interim stage. While the grant is not a complete answer to a charge of prima facie invalidity or vulnerability, it is still a factor to be considered and given appropriate weight; just how much is factdependent.
86. Where lies the balance of convenience? The answer suggests Page 68 of 164 C/CS/2/2017 ORDER itself: it cannot possibly lie with Sergi, and the fact that it has been allowed to continue with the DTL tender (on noninfringing terms) is now not as material as the question once might have been. The Notice of Motion is in wider terms. Sergi cannot possibly be permitted to continue with what I have found to be a clear case of infringement. That being said, there is to my mind an overwhelming prima facie case, and it is difficult to see how CTR might be able to recoup its losses by a decree in damages; those losses are possibly beyond computation.
87. The Motion succeeds. There will be an interim order in the following terms, broadly in keeping with of prayer clauses (a), (b) and (e) of the Notice of Motion:97 that pending the hearing and final disposal of the suit:
(a) Defendants Nos. 1 and 2 shall not, directly or indirectly, or through any party or person acting on their behalf, infring the Plaintiff's patent No.202302 by making, using, offering for sale, or selling either the impugned Sergi 3000 product or any other similar infringing product that contains the identical or substantially similar system of a principal of a Differential Relay and a Buchholz Relay (oil surge feature);
(b) Defendants Nos. 1 and 2 are not to infringe the Plaintiff's Patent No. 202302 by using the method provided under that Patent by Page 69 of 164 C/CS/2/2017 ORDER manufacturing, selling or offering for sale either the impugned Sergi 3000 product or any other product that infringes the Plaintiff's patent and from using, offering for sale or selling any product that is obtained directly by the method provided under Plaintiff's Patent.
(c) the 1st and 2nd Defendants shall not circulating and submitting to any third parties, including purchasers, lessees or persons inviting tenders (and including government bodies) any technical brochures, literature, pamphlets, fliers, drawings, specifications or other printed or audiovisual material that displays and shows the identical or substantially similar method as that of the Plaintiff's Patent No.202302, i.e., the principal of the Differential Relay and the Buchholz Relay (oil surge method) as set out in the Plaintiffs' patent."
69. In the case of CTR Manufacturing Industries Limited Vs. Sergi Transformer Explosion Prevention Technologies Pvt. Ltd., vide order dated 16.12.2015, the Hon'ble Supreme Court has observed thus: "On going through the order of the Division Bench it transpires that the Division Bench has not looked into the merits of the respective contentions of the parties and has only gone by the fact that insofar as grant of patent in question to Page 70 of 164 C/CS/2/2017 ORDER the appellant is concerned, the respondent has filed objections thereto under Section 25(2) of the Patents Act which are pending before the Controller of Patents and on this ground alone the order passed by the learned Single Judge is stayed.
We also find that on an earlier occasion the respondent had come to this Court in Civil Appeal Nos. 47914792 of 2012 which were disposed of by this Court vide order dated 25.05.2012 inter alia with the following directions:
"....
....
(5) Till the Notice of Motion (Exhibit 5) and other applications are not disposed of by learned Single Judge, the appellant (defendant in the Suit) will continue manufacture and sale of its products as per its patent but without infringing the patent of respondent No.1 plaintiff of the suit, in accordance with the undertaking already given by it before learned Single Judge on 15th November,2011."
After hearing the learned counsel for the parties, we are of the opinion that since the appeal is pending before the Division Bench of the High Court, it would be appropriate that the said appeal is disposed of by the Division Bench as expeditiously as possible and preferably by 28th February, 2016.
In the meantime, we are of the Page 71 of 164 C/CS/2/2017 ORDER opinion that the parties should continue to be governed by the directions contained in the order of this Court dated 25.05.2012 in Civil Appeal Nos. 47914792 of 2012. Direction No. 5 thereof is already reproduced. The order of the Division Bench granting interim orders (ii) & (iii) is set aside and substituted by direction no. 5 contained in the order of this Court dated 25.05.2012."
70. In the case of Aloys Wobben & Anr. Vs. Yogesh Mehra & Ors., (2014) 15 SCC 360, it has been observed thus: "26. In cases where the "infringement suit(s)" was/were filed by the appellant herein (as plaintiff in the "infringement suit"), before the "revocation petition(s)" was/were filed by the respondents (as defendants in the "infringement suit"), the respondents had the right to file "counterclaim(s)" to seek revocation of the patent, under the strength and authority emerging from Section 64(1) of the Patents Act. Having once filed a "counterclaim", in response to the "infringement suit(s)", on the same analogy as has been recorded above, it would not be open to the respondents herein (the defendants in the "infringement suits") to file "revocation petition(s)", as they would likewise be barred by the rule of res judicata. As such, "revocation petitions" filed later in point of time, than the institution of the "infringement suit", would be Page 72 of 164 C/CS/2/2017 ORDER unsustainable in law. In such cases, the prayer for revocation of the patent shall be adjudicated, while disposing of the "counterclaim"
filed by the respondents. Therefore, in the above situation, while the "counterclaim" will have to be permitted to be pursued, the "revocation petition" cannot be permitted to be continued.
27. Having examined the four contentions advanced at the hands of the learned counsel for the appellants (delineated in paragraph 9 of the instant judgment) and the fifth contention (noticed in paragraph 21 of our instant determination), we are of the view that the following conclusions emerge therefrom:
27.1 Firstly, if "any person interested" has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a "revocation petition"
in the capacity of "any person interested" (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a defendant through a "counterclaim" (also under Section 64(1) of the Patents Act).
27.2 Secondly, if a "revocation petition" is filed by "any person interested" in exercise of the liberty vested in him under Section Page 73 of 164 C/CS/2/2017 ORDER 64(1) of the Patents Act, prior to the institution of an "infringement suit" against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an "infringement suit"
has been filed against him) through a "counterclaim". This denial of the remedy granted to him by way of a "counterclaim" under Section 64(1) of the Patents Act, is based on the principle of law narrated in paragraph 24 above."
71. In the case of GarwareWall Ropes Ltd. Vs. Techfab India & Ors., vide CAV judgment dated 25.4.2008 rendered in O.J. Appeal no.82 of 2006, this Court has observed thus: "12. Mr. Trivedi has further submitted that although mere grant of a Patent does not guarantee the conclusive validity of the Patent so granted, the grant of a Patent raises a prima facie case of validity of the Patent or carries some weightage at the temporary injunction stage. Such prima facie weightage in favour of the validity of the Patent is of course subject to proper rebuttal by the respondent, by cogent and convincing evidence on record, that the Patent so granted is prima facie invalid. Hence, the onus of making out a prima facie case of infringement of the appellant's Patent by the respondents is on the appellant and the onus of making out a prima facie case of invalidity of the appellant's patent is on the respondents.
Page 74 of 164 C/CS/2/2017 ORDER40. We have heard at length learned counsels appearing for the respective parties and considered their submissions oral as well as written, very minutely, carefully and in their true perspectives. We have perused the voluminous records , evidence and materials produced before the learned Single Judge as well as before us. We have also given our anxious thoughts to the relevant statutory provisions contain in the Patent Act as well as Rules framed thereunder and various authorities cited before us. We have also gone through the two Civil Applications moved by the respondentsdefendants, one for seeking permission to produce additional evidence and another for seeking direction to the appellants plaintiffs to produce certain documents on record. We have neither allowed these applications nor rejected them at the very threshold as we are hearing an appeal against an interim order and the suit is still pending before the learned Single Judge. We, therefore, allow the parties to make their respective submissions either in favour or against of these two applications. Despite the fact that evidence and documents referred to in these applications were not before the learned Single Judge and still the interim relief was refused. The contents of these documents and facts revealed therefrom coupled with all other materials already on record, prima facie persuaded us to take the view that the learned Single Judge has not committed any error either in law or on facts in refusing to grant Page 75 of 164 C/CS/2/2017 ORDER interim relief as prayed for by the appellantsplaintiffs, which require any interference by us while exercising our appellate jurisdiction, that too, in an interim order.
52. Even if it is assumed that it is not incumbent to the plaintiff to wholly and completely disclose the existing prior art and such non disclosure does not amount to suppression or that, it is no ground for revocation of the patent by itself, what needs to be appreciated is that the Controller of Patent had no occasion to consider whether the improvement made in such a technological advance which would merit grant of patent and secondly whether to limit the grant of patent only to such improvements or grant patent as an invention of a new product. Obviously, Controller had no occasion to examine the claim made by the plaintiff as an improvement over the existing art and uphold the claim for patent made by the plaintiff. This aspect will be considered for the first time in the revocation proceedings. There is, therefore, a serious triable issue on decision of which legality and validity of the patent depends namely whether the features claimed to be a novelty or a technical advance as compared to the known prior art, not obvious to the persons skilled in the art."
72. In the case of Raj Parkash Vs. Mangat Ram Chowdhry & Ors., vide judgment dated 25.3.1977 rendered in Regular First (OS) Appeal no.2 of Page 76 of 164 C/CS/2/2017 ORDER 1973, the Hon'ble Delhi High Court observed thus: "(12) We have, therefore, to read 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 partics who claim to be patentee or alleged violaters. (See Birmingham Sound Reproducers Ld. v. Collaro Ld. and Collaro Ld. v. Birmingham Sound Reproducers Ld.. 1956 R.P.C. 232)(2). It is not necessary that the invention should be anything complicated. The essential thing is that the inventor was the first one to adopt it. The principle, therefore, is that every simple invention that is claimed, so long as it is something which is novel or new, it would be an invention and the claims and specifications have to be read in that light, as, was observed in the famous hairpin case, reported as Hinde v. Osberne, 1885 R.P.C. 65(3). To quote from another well known decision of the Court of Appeal in R.C.A. Photo phone Ld. v.
GaumontBritish Picture Corporation Ld. and British Acoustic Films Ltd., 1936 R.P.C. 167(4). 'The specification must be construed in the first instance as a written instrument and without regard to the alleged infringement: ....".
(13) Sometimes people fall into error Page 77 of 164 C/CS/2/2017 ORDER 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 specifications or the claims. In Breraton and Another v. Richardson, 1884 R.P.C. 165(5), 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 mcans 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 Page 78 of 164 C/CS/2/2017 ORDER 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 have their rights settled for the future, without reference to any question of that sort, that being a comparatively immaterial question........"
(16) The invention for which patent is claimed may be a product or an article or a process. In the case of an article the patent is in the end product or the article; in the case of a process, the patent docs not lie in the end product, but only in the process by which it is arrived at. Section 5 of the Patents Act, 1970, speaks of inventions where methods or processes of manufacture are patentabic but also speaks of inventions claiming substances intended for the use, or capable of being used, as food or as medicine or drug which may also be patentable. Regarding other substances the law continues to be the same as before and any invention so long as it does not fall within Section 3 of the Patents Act, 1970, is patentable. Vimada lal, J in Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius and Bruning a Corporation etc. v. Unichem Laboratories and others, held that the main function of the Page 79 of 164 C/CS/2/2017 ORDER court is to construe the claims (stated at the end of specifications in the patent) which are alleged to have been infringed without reference lo the body of the specifications and to refer to the specification only if there is any ambiguity or difficulty in the construction of the claims in question. He further observed that where one of the claims in respect of which infringement is alleged is wide enough to cover all methods for achieving particular result, the question is not as to the method actually followed by the plaintiffs but is whether the method followed by the defendants is covered by the claim in the plaintiffs' patent. The onus as to the invalidity of a plaintiff's patent and the grounds of insufficiency of description, want of novelty, absence of inventive steps and want of utility was rightly placed on the defendants. The learned Judge further observed that in an action for infringement of patent to meet the defense under Section 29(2) read with Section 26, that the patent was invalid due to insufficieney of description, the claim in the specifications of the patent need only be as clear as the subject admits, and the patentee need not so simplify his claim as to make it easy for infringers to evade it. The patentees duty is not to prevent all possible argument as to whether there is or is not infringement in particular cases, but to enable the courts lo formulate the questions of fact to be answered. The complete specification must describe "an embodiment" of the invention claimed in each of the claims, and the Page 80 of 164 C/CS/2/2017 ORDER description must be sufficient to enable those in the industry concerned to carry it into effect ''without their making further inventions", and the description must be fair i.e. it must not be unnecessarily difficult to follow. We arc in respectful agreement with these observations.
(24) The effect of the grant of a patent is quid pro quo. quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. Section 12of the Patents and Designs Act, 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making, selling and using the invention throughout India and of authorising others so to do. This is the quo. The quid is compliance with the various provisions resulting in the grant of the patent. The very simple device upheld in John Lord Hinde v. Osborne Garrett, and Co., 1884(1) R.P.C. 221. (11) and an infringing hairpin was held as piracy of the plaintiff's invention with the following observations : "THE inventor says, I ask you, the public, or rather I ask the Crown, to give me a monopoly for a certain number of years, and in consideration of their giving me that monopoly I will tell them in my specification the nature and manner of using the invention I claim, and therefore, at the expiration of the time that is guaranteed for my monopoly the public will be the gainers because Page 81 of 164 C/CS/2/2017 ORDER they learn how to do this. If a man obtains a patent, and thus obtains a monopoly, it makes no difference that somebody case who has not got a patent has thought of the same thing and has used it. He is not permitted to do that where the monopoly has been secured to an inventor."
This law is codified in India by the provisions already referred to.
(25) The patented article or where there is a process then the process has to be compared 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 hairpin case. abovereferred 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. Suffiee 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 (12) : Page 82 of 164 C/CS/2/2017 ORDER "THE evidence here shows that in making hetacillin in the United States the defendants use a principal part of the processes which 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 docs, 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."
(27) The infringement having been proved and admitted by defendants 1 and 2, an order of injunction and accounts must follow. The law on this point must first be noticed."
73. In the case of TVS Motor Company Limited Vs. Bajaj Auto Limited, vide judgment dated 18.5.2009 rendered in O.S.A. nos. 91 and 92 of 2008, the Hon'ble Madras High Court has observed thus: Page 83 of 164 C/CS/2/2017 ORDER "69. When we refer to the various decisions relied upon by the learned senior counsel for the respective parties the following principles emerge viz.,
(i) The validity of a patent can be challenged in a suit on various grounds of revocation as set out under Sections 64 and 107 of the Patents Act.
(ii) For the grant of interim injunction in a patent matter, the prima facie validity of the patent should be shown and also the prima facie infringement should be proved apart from the availability of balance of convenience and irreparable loss.
(iii) If the patent is a new one, mere challenge at the Bar would be quite sufficient for the refusal of an interim injunction as compared to a fairly old patent.
(iv) Even in IPR cases, apart from prima facie case, balance of connivence and irreparable injury, the mere registration of the patent alone would not be sufficient and the Court must look at the whole case i.e. the strength of the case of the plaintiff and the strength of the defendant.
(v) Irrespective of the examination and investigation made under Sections 12 and 13 of the Patents Act, no presumption can be drawn as to the validity of the patent and whether the application for revocation of patent is pending and when serious controversy exist as regards the existence of an invention based on prior art, the Court should be slow Page 84 of 164 C/CS/2/2017 ORDER in granting the injunction.
(vi) There can be no infringement if the opponent has proved the same result by a different combination of different elements.
(vii) The general rule in regard to the construction of the validity of a patent is, that construction which makes it valid should be preferred rather than the construction which rendered it invalid.
(viii) Patent specification should intend to be read by a person skilled in the relevant art but their construction is for the Court and to do so it is necessary for the Court to be informed as to the meaning of the technical words and phrases and what was the common general knowledge i.e., the knowledge that the notional skilled man would have.
(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.
(x) While analysing a claimed invention, it is relevant to examine as to whether the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result and there by converting a comparatively defective apparatus into a efficient and useful one which, taken as a whole, is novel.
(xi) Though the grant of patent by itself does not guarantee its validity, it should be given some weight and significance while Page 85 of 164 C/CS/2/2017 ORDER considering the question of prima facie case and it is always open to the defendant to question the validity of the patent.
(xii) Though the claimed invention may consist of known factors, known integers i.e. if by combination of such known integers if a new use has been discovered that should be construed to have displayed inventive steps by way of ingenuity and skill."
74. In the case of Standipack Private Limited & Anr. Vs. M/s. Oswal Trading Co. Ltd., vide judgment dated 26.5.1999 rendered in I.A. no. 11829 of 1998 and allied matters, the Hon'ble Delhi High Court observed thus:
14. Section 13(4) of the Patents Act provides that the examination and investigations required under sections 12 & 13 shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon. Thus, grant of patent in any manner does not guarantee the validity of the patent. Reference may also be made to the provisions of Section 64 of the Patents At which deals with revocation of patents. It provides that a patent whether granted before or after the commencement of the Act, may, on the petition of any person interested or of the Central Page 86 of 164 C/CS/2/2017 ORDER Government or on a counterclaim in a suit for infringement of the patent, be revoked by the High Court on the ground that the subject of any claim of the complete specification is not an invention within the meaning of this Act or 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 or 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.
15. It has been held in a series of judgments that no presumption of validity attaches to a patent granted by the Controller under the Act notwithstanding examination and investigation made under Sections 12 and 13. In this connection reference may be made to a decision in Bishwanath Prasad Vs. Hindustan Metal Industries; , Hindustan Lever Ltd. Vs. Godrej Soaps Ltd. and M/s. Niky Tasha India Pvt. Ltd. Vs. M/s.
Faridabad Gas Gadgets Pvt. Ltd. reported in AIR 1985 Delhi 136 at
138. In Surendra Lal Mahendra Vs. M/s. Jain Glazers & Others, reported in ILR 1981(1) Delhi 257, the Delhi High Court relying upon the judgment in Smith Vs. Grigg Ld., 41 RPC 149(1) held that despite all the safeguards and circumspection contemplated in Page 87 of 164 C/CS/2/2017 ORDER various provisions of the Act against grant of patent in respect of a spurious, purloined or fake invention, the Legislature minced no words in clarifying its intendment that no presumption of validity would attach to a patent granted by the Controller under the Act, notwithstanding examination and investigation made under Sections 12 & 13 thereof.
16. When the conditions referred to in Section 64 are examined and applied to the facts and circumstances of the present case in the light of the observations made herein before, it is clear that the use of the pouches for packaging purposes of the nature of the one used by the plaintiff and in respect of which patent has been granted was widely prevalent. The same is also an admitted position when the plaintiff has stated that the storage of liquid products other than liquid in a pouch does not constitute a novel idea. Some of the defendants have filed applications for revocation of the patent granted in favour of the plaintiff under section 64 of the Patents Act.
There are cases where it is held that when an application is filed seeking for revocation of the patent and questioning the validity of the patent the court should not grant an injunction. It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed. In this connection reference may be Page 88 of 164 C/CS/2/2017 ORDER made to a decision of the Madras High Court in V. Manicka Thevar Vs. M/s. Star Plough Works, , wherein it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant. In M/s. Niky Tasha India Pvt. Ltd. Vs. M/s.
Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136 at 140 (supra) it was observed by this court that no injunction should be granted when there is a serious question of the validity of the design to be tried in the suit and an application for cancellation has been made."
75. In the case of B. Braun Melsungen AG & Ors.
Vs. Rishi Baid & Ors., vide judgment dated 15.4.2009 rendered in I.A. no.1234 of 2008 in CS (OS) no.186 of 2008, the Hon'ble Delhi High Court observed thus: "37. I may also note that the learned counsel for the defendants had referred to several decisions. One of them was the decision of the Supreme Court in the case of B.P. Radhe Shyam v. Hindustan Metal Industries: 1979 (2) SCC 511. In that decision the Page 89 of 164 C/CS/2/2017 ORDER Supreme Court observed that the fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. The Supreme Court further observed that it is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was already known before the date of the patent. Elaborating further on the subject, the Supreme Court observed that it is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an inventive step. Mere collocation of more than one integer or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent. It is obvious that this decision was cited in the context of prior art. It is directed as a challenge to the validity of the plaintiffs‟ patent No. 210062. This gains relevance in the context of Section 64 of the Patents Act, 1970 which deals with revocation of patents. SubSection (1) thereof provides that subject to the provisions contained in the Act, a patent, whether granted before or after the commencement of the Act, may, on the petition of any person interested or of the Central Government or "on a counterclaim in a suit for infringement of the patent", be revoked by the High Court Page 90 of 164 C/CS/2/2017 ORDER on any of the grounds specified therein. One of the grounds is that the subject of any claim of the complete specification is not an invention within the meaning of the Act. Another ground is 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 Indian 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.
38. In the present case the defendants have preferred a counter claim and sought the revocation of the plaintiffs‟ patent. At this juncture, it was also be pertinent to note Section 107 of the Patents Act, 1970, which relates to defences, etc, in suits for infringement. Sub section (1) stipulates that in any suit for infringement of a patent every ground on which it may be revoked under section 64 shall be available as a ground for defence. Therefore, all the pleas which may be taken for seeking the revocation of a patent are also available as a defence in an infringement suit.
41. Having examined the arguments advanced by the counsel for the parties and the case law submitted by them, I am of the view that the plaintiffs are not entitled to an ad interim injunction as prayed for by them. It is clear that the registration of the patent per se does not IA 1234/2008 in CS(OS) 186/2008 Page No.32 of 35 entitle the Page 91 of 164 C/CS/2/2017 ORDER plaintiffs to an injunction. The defendants‟ case is also to be examined and it is only after the entire case as a whole is considered that the Court can come to a decision as to whether the plaintiffs are entitled to an injunction or not. In the present case the patent is a recent one and, prima facie, there is a serious challenge to the validity of the patent. This has been amply demonstrated by the learned counsel for the defendants in the course of his arguments noted above. I have also noted that the revocation of a patent can be sought under Section 64 of the Patents Act, 1970 by a defendant in an infringement suit by way of a counterclaim. The defendants have already preferred such a counterclaim. Apart from this, under Section 107 of the said Act all the pleas available for revocation of a patent are also available as a defence in a suit for infringement. The question of validity of the plaintiffs‟ Patent No. 210062 is not free from doubt at this prima facie stage. There are more reasons than one for entertaining such doubts. One of the most important reasons is the existence of prior art. By way of illustration, I have already referred to U.S Patent No. 5,135,504. In fact, there are other such patents which were placed before this Court and find place in the documents filed by the defendants. Prima facie, the defendants have been able to show that, first of all, the field of I.V. catheters is a crowded one. Secondly, needle guards, in one form or the other, have been used for decades by Page 92 of 164 C/CS/2/2017 ORDER several companies. Thirdly, the IA 1234/2008 in CS(OS) 186/2008 Page No.33 of 35 defendants‟ safety I.V. catheter/ cannula is somewhat different from the plaintiffs‟ Patent No. 210062."
76. In the case of Ten XC Wireless Inc & Anr. Vs. Mobi Antenna Technologies (Shenzhen) Co. Ltd. vide judgment dated 4.11.2011 rendered in CS (OS) nos.1989 of 2010, the Hon'ble Delhi High Court observed thus: "32. It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is a presumption in favour CS(OS) Nos.1989/2010 & 1993/2010 Page 39 of 78 of the validity of the patent, cannot be accepted."
(Emphasis Supplied) 7.2 In M/s. Niky Tasha India Pvt. Ltd. v. F.G. Gadgets Pvt. Ltd., AIR 1985 Delhi 136, the Division Bench of this Court held that the registration of a patent does not establish a conclusive right in favour of the Page 93 of 164 C/CS/2/2017 ORDER plaintiffs to be entitled to an injunction and the plaintiffs have to establish before the Court that the patent is valid. Where the patent is of a recent date, no injunction should be granted. More so, when there is a serious question as to the validity of the patent to be tried. The patent has to be tried and tested in the laboratory of the Courts. The Courts lean against monopoly as a general rule unless there are special circumstances to overcome it. The findings of this court are reproduced hereunder:
"9. In England, as in India, it is open to a plaintiff at any time after the institution of the suit to move for an interlocutory injunction to prevent the defendant from infringing his design between then and the date of trial. In Smith v. Grigg Limited (1924) 41 RPC 149(3), it was held that same principles apply to the case of a design as are applicable in the case of a patent. The plaintiff must show that he has a prima facie case, both that his design is valid and that it has been infringed by the defendant. The mere fact that the plaintiff is in possession of a patent or of a registered design is not of itself necessarily prima facie evidence of validity. On the contrary, where it appears that the design has only recently been registered, and where it appears that there is a substantial issue to be tried, an interlocutory injunction will not be granted.
22. I cannot accept the argument that the plaintiffs on the strength of the Page 94 of 164 C/CS/2/2017 ORDER registration certificate have absolute right, a right which is good even against independent designers.
"The Court is not in the habit of granting injunctions until the title has been established". "The Court leans against monopolies". The certificate does not establish a conclusive right. It has to be tried and tested in the laboratory of courts. We must not forget that the registered design of the plaintiffs is of a very recent date. In case of a recent monopoly which is seriously disputed on various grounds such as prior publication, lack of originality trade variation etc. it will not be proper to grant an injunction. There is a serious question to be argued as to whether the design is valid or not, and on the facts l am not satisfied that the balance of convenience requires an interim injunction, particularly in view of the undertaking which the defendants are prepared to give.
53. The plea of the plaintiff that since there is a multi layered, multilevel examination of the opposition to the grant of patent it should accorded the highest weightage, is not entirely correct. The contention that there is a heavy burden on the defendant to discharge since it has to establish that it has a stronger prima facie case of the plaintiff is contra indicated of the decisions in the context of Section 13(4). Reference may be made to the decisions in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444 : PTC (Suppl) 731 (SC), Standipack Pvt. Ltd. v. Oswal Trading Co.Page 95 of 164 C/CS/2/2017 ORDER
Ltd., AIR 2000 Delhi 23 : 1999 PTC (19) 479 (DEL), Bilcare Ltd. v. Amartara Pvt. Ltd., 2007 (34) PTC 419 (Del), Surendra Lal Mahendra v. Jain Glazers, (1979) 11 SCC 511. In Beecham Group Ltd. v. Bristol Laboratories Pty Ltd., (196768) 118 CLR 618 and Australian Broadcasting Corporation v. O'Neill, (2006) 229 ALR 457 it was held that the defendant alleging invalidity bears the onus of establishing that there is "a serious question" to be tried on that issue.
In Hexal Australai Pty Ltd. v. Roche Therapeutics Inc. 66 IPR 325 it was held that where the validity of a CS(OS) Nos.1989/2010 & 1993/2010 Page 48 of 78 patent is raised in interlocutory proceedings, "the onus lies on the party asserting invalidity to show that want of validity is a triable question." In Abbot Laboratories v. Andrx Pharmaceuticals Inc. decision dated 22nd June 2006 of the U.S. Court of Appeals for the Federal Circuit 05 1433 the Court of Appeals followed its earlier ruling in (Helifix Ltd. v. BlokLok Ltd. 208 F.3d 1339 where it was held (at 1359): In resisting a preliminary injunction, however, one need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself. (emphasis supplied) In Erico Int'll Corprn v. Vutec Corprn (U.S. Court of Appeals for the Federal Circuit, 20071168) it was held that the Page 96 of 164 C/CS/2/2017 ORDER "defendant must put forth a substantial question of invalidity to show that the claims at issue are vulnerable.
7.4 In M/s Standipack Pvt. Ltd. v. M/s Oswal Trading Company Ltd., AIR 2000 DELHI 23, the plaintiff sought an injunction against the defendants from manufacturing or using the patented pouch for storing/dispensing liquids which was defended on various grounds inter alia that the claimed invention was not novel and the application for revocation was pending. The injunction application was dismissed by this Court. Dr. M.K. Sharma, J., as he then was of this Court, held as under: "15. It has been held in a series of judgments that no presumption of validity attaches to a patent granted by the Controller under the Act notwithstanding examination and investigation made under Sections 12 and 13. In this connection reference may be made to a decision in Bishwanath Prasad v. Hindustan Metal Industries, reported in (1979) 2 SC 511 at p.521: AIR 1982 SC 1444 : 1979 All LJ 290 at p.296, Hindustan Lever Ltd. v. Godrej Soaps Ltd., reported in AIR 1996 Cal 367 at p.381 and M/s. Niky Tasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., reported in AIR 1985 Delhi 136 at p.138. In Surendra Lal Mahendra v. M/s. Jain Glazers & Others, reported in ILR 1981 (1) Delhi 257, the Delhi High Court relying upon the judgment in Smith v. Grigg Ltd. 41 RPC 149, held that despite all the safeguards and circumspection contemplated in Page 97 of 164 C/CS/2/2017 ORDER various provisions of the Act against grant of patent in respect of a spurious, purloined or fake invention, the Legislature minced no words in clarifying its intendment that no presumption of validity would attach to a patent granted by the Controller under the Act, notwithstanding examination and investigation made under Sections 12 & 13 thereof.
16. When the conditions referred to in Section 64 are examined and applied to the facts and circumstances of the present case in the light of the observations made herein before, it is clear that the use of the pouches for packaging purposes of the nature of the one used by the plaintiff and in respect of which patent has been granted was widely prevalent. The same is also an admitted position when the plaintiff has stated that the storage of liquid products other than liquid in a pouch does not constitute a novel idea. Some of the defendants have filed applications for revocation of the patent granted in favor of the plaintiff under section 64 of the Patents Act. There are cases where it is held that when an application is filed seeking for revocation of the patent and questioning the validity of the patent the court should not grant an injunction. It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed. In this connection reference may be made to a decision of the Madras High Page 98 of 164 C/CS/2/2017 ORDER Court in V. Manicka Thevar v. M/s. Star Plough Works, AIR 1965 Mad 327 at p.328, wherein it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant CS(OS) Nos.1989/2010 & 1993/2010 Page 52 of 78 from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant. In M/s. Niky Tasha India Pvt. Ltd. Vs. M/s. Faridabad Gas Gadgets Pvt. Ltd. AIR 1985 Delhi 136 at p.140 (supra) it was observed by this court that no injunction should be granted when there is a serious question of the validity of the design to be tried in the suit and an application for cancellation has been made."
85. The principles for grant of injunction have been succinctly discussed in American Cynamide Co.'s case (supra) which have been accepted and followed in the case of Franz Xaver Huemer v. New Yash Engineers, AIR 1997 Delhi 79 wherein it was held in paras 28, 31 and 32 as under:
It is true that earlier, in the well known case in American Cyanamid v. Ethican (interlocutory) 1975 RPC 513 (at 541, 542), it was observed that it was sufficient if a 'triable issue' was there. According to Lord Diplock, the Court must also be satisfied if there is a "serious Page 99 of 164 C/CS/2/2017 ORDER question to be tried": therefore it should not try to assess relative merits by looking into prima facie case in the affidavit evidence but CS(OS) Nos.1989/2010 & 1993/2010 Page 56 of 78 should instead turn at once to the balance of convenience; if damages to be awarded at the trial can adequately compensate plaintiff and the defendant could pay them, injunction could be refused; if not, injunction could be refused; if not, injunction could be granted; if defendant could be compensated by way of damages later by plaintiff, injunction by way of damages later by plaintiff, injunction could be granted; where there is doubt about the adequacy of damages to one or both ; any factor which may affect balance of convenience is to be considered. If the balance is even, the relative strength of the case is to be considered.
31. It is said that in the law of patents, it is not sufficient merely to have registration of a patent. The Court must look at the whole case, the strength of the case of the patentee and the strength of the defence such as those falling under Section 107 read with Section 64.
32. The need to establish prima facie has been emphasized in recent cases in England and in India. The Court has to consider whether there is prima facie proof of infringement (Lord Denning M.R. & Megaw LJ Hubbard v. Vosper(1972) 1 All ER 1023. Prima facie proof of validity is different from prima facie proof of infringement as stated by Sultan Page 100 of 164 C/CS/2/2017 ORDER Singh, J. in NRDC Co. v. DCM Ltd. AIR 1980 Delhi 132. In that case, the learned Judge quoted Terrel on the law of Patents (12th Ed. Para 830) :
(at p 135 of AIR):
The plaintiff must first establish such facts as will satisfy the Court that there are strong prima facie reasons for acting on the supposition that the patent is valid. The most cogent evidence for this purpose is either that there has been a previous trial in which the patent has been held to be valid, or that the patentee has worked and enjoyed the patent for many years without dispute or may be that as between the CS(OS) Nos.1989/2010 & 1993/2010 Page 57 of 78 parties the plaintiff is relieved from the onus of establishing validity, as where the defendant has admitted it or is so placed in his relationship to the plaintiff as to be estopped from denying it."
87. As I have already stated that the defendants have raised substantial, tenable and credible challenge to the patent which raises a triable dispute, therefore, the plaintiff has failed to make out a prima facie case for the grant of ad interim injunction. Considerable doubt has been raised by this Court about the working of the patent in commercial sense and on the other hand, the defendants are stated to be in the business of manufacturing mirrors since the year 1993."
(iii) If the patent is a new one, mere challenge at the Bar would be quite sufficient for the refusal of Page 101 of 164 C/CS/2/2017 ORDER an interim injunction as compared to a fairly old patent.
(iv) Even in IPR cases, apart from prima facie case, balance of connivence and irreparable injury, the mere registration of the patent alone would not be sufficient and the Court must look at the whole case i.e. the strength of the case of the plaintiff and the strength of the defendant.
(v) Irrespective of the examination and investigation made under Sections 12 and 13 of the Patents Act, no presumption can be drawn as to the validity of the patent and whether the application for revocation of CS(OS) Nos.1989/2010 & 1993/2010 Page 60 of 78 patent is pending and when serious controversy exist as regards the existence of an invention based on prior art, the Court should be slow in granting the injunction.
7.10 The well settled principles for grant of interim injunction in patent matters laid down by the Courts in the aforesaid judgments are summarized as under: 7.10.1 The registration of a patent per se does not entitle the plaintiffs to an injunction. The certificate does not establish a conclusive right.
7.10.2 There is no presumption of validity of a patent, which is evident from the reading of Section 13(4) as well as Sections 64 and 107 of the Patents Act.
7.10.3 The claimed invention has to be tested and tried in the laboratory Page 102 of 164 C/CS/2/2017 ORDER of Courts.
7.10.4 The Courts lean against monopolies. The purpose of the legal regime in the area is to ensure that the inventions should benefit the public at large.
7.10.5 The plaintiff is not entitled to an injunction if the defendant raises a credible challenge to the patent. Credible challenge means a serious question to be tried. The defendant need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage whereas the validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself. 7.10.6 At this stage, the Court is not expected to examine the challenge in detail and arrive at a definite finding on the question of validity of the patent. That will have to await at the time of CS(OS) Nos.1989/2010 & 1993/2010 Page 62 of 78 trial. However, the Court has to be satisfied that a substantial, tenable and credible challenge has been made. 7.10.7 The plaintiff is not entitled to an injunction, if the patent is recent, its validity has not been established and there is a serious controversy about the validity of the patent."
77. In the case of Bajaj Auto Ltd. State of Maharashtra Vs. TVS Motor Company Ltd. vide judgment dated 16.2.2008 rendered in O.A. no. 1357 of 2007, the Hon'ble Madras High Court Page 103 of 164 C/CS/2/2017 ORDER observed thus: "18. Normally, in cases of interlocutory injunction, including any patent action, the principle is the same, viz,
(i) the plaintiff must prove/show prima facie case that the patent is valid and infringed;
(ii) balance of convenience is in favour of plaintiff; and
(iii) irreparable loss that may be caused to the plaintiff by not granting an order of injunction.
19. Undoubtedly, these are the normal principles to be decided in any interlocutory injunction applications. However, the learned senior counsel appearing for the applicant Mr. C.A. Sundaram, has raised a point that after the Act 38 of 2002, by which Section 48 of the Patents Act, 1970 was amended by way of substitution, the patentees right is better protected than what was in existence in the said provision before the amendment.
According to him, after the said amendment and as Section 48 of the Patents Act, 1970 stands today, it should be treated that once a patentee files a suit for infringement based on the patent granted to him, it should be prima facie presumed to be valid until the same is revoked or set aside in the manner known to law either by revocation under any one of the grounds under Section 64 of the Patents Act, 1970 or in any other manner. Therefore, it is relevant to Page 104 of 164 C/CS/2/2017 ORDER extract Section 48 of the Patents Act, 1970, which was in existence before the Act 38 of 2002, which came into force with effect from 20.05.2003 and the Section as it stands after the amendment. Before the amendment, Section 48 of the Patents Act, 1970 stood as follows:
Section 48. Rights of patentees.(1) Subject to the other provisions contained in this Act, a patent granted before the commencement of this Act, shall confer on the patentee the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute the invention in India. (2) Subject to the other provisions contained in this Act and the conditions specified in Section 47, a patent granted after the commencement of this Act shall confer upon the patentee
(a) Where the patent is for an article or substance, the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute such article or substance in India;
(b) where a patent is for a method or process of manufacturing an article or substance, the exclusive right by himself, his agents or licensees to use or exercise the method or process in India.
20. After amendment with effect from 20.05.2003, Section 48 stands as on date is as follows:
Section 48. Rights of patentees. Subject to the other provisions contained in this Act and the conditions specified in Section 47, a Page 105 of 164 C/CS/2/2017 ORDER patent granted under this Act shall confer upon the patentee
(a) where the subjectmatter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that produce in India;
(b) where the subjectmatter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
21. The difference in the said provision before the amendment and after the amendment is that before the amendment, by Act 38 of 2002, the patentee was conferred an exclusive right to use himself or through agents or through licencees and also to exercise or sell or distribute the inventions in India. The patent to which the patentee was entitled to the exclusive user related to article or substance and to a method or process of manufacturing or substance. . After amendment, the right of the patentee in respect of product and in respect of the process is conferred on the patentee, an exclusive right to prevent third parties from using or selling etc.
24. The general tendency regarding interlocutory injunctions in patent cases has been that the onus in showing a prima facie case in justifying the grant of injunction is Page 106 of 164 C/CS/2/2017 ORDER heavy on the plaintiff and it is comparatively easy for the defendant to establish a defence. Even though it can be contended that Section 13(4) of the Patents Act, 1970 stating that the validity of patent is not warranted is in relation to the examination of application for patent and search for anticipation made by the examiner regarding previous publication and prior claim, the effect of Section 13(4) has been clearly held by the Hon'ble Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries in the following words.
33. It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz., the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is a presumption in favour of the validity of the patent cannot be accepted.
25. Therefore, by virtue of the amended provision of Section 48 as stated above, one can only come to a conclusion that while deciding about the prima facie case, even though no presumption of the validity of the patent can be drawn, certainly the patent obtained after the amendment Page 107 of 164 C/CS/2/2017 ORDER is having more significance.
Therefore, the patent obtained by the patentee can be given more weight for deciding the prima facie case, however, the onus of proving prima facie case about the validity of the patent and its infringement is still on the plaintiff and the amendment to Section 48 by Act 32 of 2002 has not made any significant change on the celebrated principle of prima facie case to be proved by the plaintiff before granting an order of injunction pending disposal of the suit.
26. Therefore, we have to proceed on the basis of the materials available to decide the triple test of an interim injunction, viz., prima facie case; balance of convenience; and inadequacy of compensation.
45. The next aspect to be considered is about the product of the applicant, which has been patented and its value. It is the specific case of the applicant that the product invented by it is not known earlier and the invention is having economic significance, apart from not being "obvious". Ever since the date of provisional specification, which was on 16.07.2002 and even after the applicant has introduced the product, viz., Bajaj Pulsar motor cycle in the open market in1 the year 2003, the respondent has not raised objection at any point of time and the applicant has in fact stated that in the year 20032004, the share of "DTSi Technology", which is the invention patented in this case in respect of Bajaj Pulsar was 9.8%/ Page 108 of 164 C/CS/2/2017 ORDER which got increased in the year 2004 2005 to 26.98%; in 20052006 to 36.54%; 20062007 to 38.96% and 2007 2008 (AprilNovember) 54.25%. In such circumstances, there is no difficulty to come to the conclusion that prima facie the product of the applicant for which the patent was granted as invention has found a special place in the market.
46. On the other hand, it is the clear conduct of the respondent, who has not objected to the product of the applicant ever since the year the patent application was made in 2002, has chosen to file a revocation petition under Section 64 of the Patents Act, 1970 before the IPAB, challenging the patent granted to the applicant for the first time on 24.08.2007. It is also significant to note that immediately within six days from the date of filing of the revocation petition, the respondent has chosen to introduce its products, including 125CC motor cycle called "FLAME". This certainly cannot be taken as a bona fide conduct of the respondent, by looking into the over all factual situation in this case.
47. The patent granted to the applicant relates back to the date of application, viz., 16.07.2002 or in any event from the date of introduction of the product by the applicant, viz., Bajaj Pulsar "DTSi Technology", which was in the year 2003 and the same is valid for a period of 20 years as per the provisions of the Patents Act, 1970. By referring to the amendment introduced by Act 38 of 2002, it was held in K. Ramu v. Adyar Ananda Bhavan Page 109 of 164 C/CS/2/2017 ORDER Muthulakshmi Bhavan 2007 (34) PTC 689 by S. Rajeswaran, J. that when issuance of a patent right is an admitted fact and the same is valid for a period of 20 years, the plaintiff is deemed to have discharged its initial responsibility of proving that they are protected by the certificate issued by the competent authorities under the Patents Act and therefore, it should be presumed to be a prima facie case on the strength of the certificate. The operative portion of the judgment is as follows:
16. It is an admitted fact that the Plaintiff has been issued with patent rights for both process and product.
The process is for preparation of low glycemic sweets for a term of twenty years from 13th February, 2003. Similarly, they are also entitled to patent for the product for twenty years from July, 2004. Thus, the plaintiff has discharged his initial responsibility by proving that they are protected by the certificate issued by the authorities under the Patents Act, 1970. Inother words, the Plaintiffs have established a prima facie case on the strength of their two certificates. In such circumstances, Section 48 of the Patents Act, 1970 will hold the field according to which a patent granted under, this Act shall confer upon the patentee, the exclusive right to prevent third parties from the act of making , using, selling or importing that product in India if the subject matter of the patent is a product. Similarly, if the subject matter of the patent is a process, the patentee has the exclusive right to prevent Page 110 of 164 C/CS/2/2017 ORDER third parties from the act of using the process for sale, selling for those purpose the product obtained directly by that process in India. Therefore, the plaintiff having obtained the patent for both the process and product under the Patent Act, 1970 has got the statutory right to prevent third parties from infringing those rights.
17. When third parties infringe the rights granted under the Patent Act then Section 108 of the Act will come into operation according to which, in case of infringement the Court may grant the reliefs including injunction and ordering the goods to be seized, forfeited or destroyed.
49. As far as the revocation application filed by the respondent under Section 64 of the Patents Act, 1970, it cannot be said that by mere filing of such application, presumption should be drawn against the validity of patent, while it is true that the grant of patent itself will not certify the validity of the same. As it is incorporated under Section 13(4) of the Patents Act, 1970. Certainly, under Section 64 of the Patents Act, when a revocation petition is filed under anyone of the grounds stated therein, the same can be operative only after a final decision is rendered by the authority competent to decide the same and in the meantime, it cannot be said that the patent validly granted should be presumed to be suspicious. The validity or otherwise of the patent depends upon the complexity of issues involved while arriving at a Page 111 of 164 C/CS/2/2017 ORDER conclusion as to whether there has been an inventive step or as to whether the invention of the patentee was a prior art or whether it was obvious that the person possessed of average skill or average knowledge of the art to which the invention relates and on going through the specification would be able to accomplish, or whether there was a false suggestion or representation; these are all matters involving complexity of trial and at this stage it is only the prima facie view which can be taken into consideration.
50. The fact that the patent creates a statutory monopoly, of course, protects the patentee against any unlicensed user of the patented devise enabling the patentee to get an order of injunction, and considering that a patent has been in existence for more than 5 years, the patentee must be treated as actual user and there is a presumption of its validity. In this connection it is relevant to refer to the judgment of a Division Bench of Delhi High Court in Telemecanique & Controls (I) Ltd. v. Schneider Electric Industries SA 2002 (24) PTC 632 (Del) wherein it has been held as follows:
29. Mr. Mukul Rohatgi, learned Counsel for the respondent, has also relied upon National Research Development Corporation of India, New Delhi v. The Delhi Cloth and General Mills Co. Ltd. and Ors. AIR 1980 Delhi 132, to contend that if the patents are more than 6 years old and there has been actual user, there must be presumption of validity of patent. In the present case the patents have existed unchallenged for a period of Page 112 of 164 C/CS/2/2017 ORDER 8 years. It has been further contended by Mr. Rohatgi that it is not required in case of a violation of the patent that the person violating the patent knew about it in view of the monopoly having been created in favour of the appellant.
30. It has to be appreciated that undoubtedly patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device. Thus once a violation is established in case of a registered patent, subject of course, to the patent being used, it will not be permissible to contend that the said patentee is not entitled to an injunction. A monopoly of the patent is the reward of the inventor. It is also to be appreciated that law of the patent is slightly different from the law of copyright and trademark as the patent is granted only for a period of 14 years....
Applying the said yardstick in the present case, it is not in dispute that from 2003 till date the applicant has been marketing its products, which has been patented with "DTSi Technology" and the same has obtained a significant place in the market, since the number of products sold by the applicant throughout the world in these years is steadily increasing and the same has not been denied with any material and therefore, certainly the applicant has proved the prima facie case in its favour.
55. The effect of patent granted under the Act and its consequential user apart from a third person using Page 113 of 164 C/CS/2/2017 ORDER the patented product in the substance equivalent to the patented article has been dealt with by the Division Bench of Delhi High Court in Raj Prakash v. Mangat Ram Choudhary and Ors. , which is as follows:
24. The effect of the grant of a patent is quid pro quo. Quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. Section 12 of the Patents and Designs Act, 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making, selling and using the invention throughout India and of authorising others so to do. This is the quo. The quid is compliance with the various provisions resulting in the grant of the patent. The very simple device upheld in John Lord Hinde v. Osborne Garrett and Co. 1884 (1) R.P.C 221, and an infringing hairpin was held as piracy of the plaintiff's invention with the following observations: The inventor says, I ask you, the public or rather I ask the Crown, to give me a monopoly for a certain number of years and in consideration of their giving me that monopoly I will tell them in my specification the nature and manner of using the invention. I claim, and therefore at the expiration of the time that is guaranteed for my monopoly the public will be the gainers because they will learn how to do this. If a man obtains a patent, and thus obtains a monopoly, it makes no difference that somebody else who has not got a patent has thought of the same thing and has used it. He is not permitted Page 114 of 164 C/CS/2/2017 ORDER to do that where the monopoly has been secured to an inventor.
This law is codified in India by the provisions already referred to.
25. The patented article or where there is a process, then the process, has to be compared 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 to, 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 Ltd. v. Bristol Laboratories Ltd. 1967 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 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 Page 115 of 164 C/CS/2/2017 ORDER 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.
Therefore, it is clear that the applicant has made out a prima facie case for injunction against the respondent.
57. While considering about the grant of interim injunction under Order XXXIX Rule 1 and 2 of Code of Civil Procedure, in the light of the Designs Act, 1911, a Full Bench of the Delhi High Court in Metro Plastic Industries (Regd.) v. Galaxy Footwear, Delhi AIR 2000 Del. 177 FB, has considered the Division Bench judgment in Niky Tasha India Private Ltd. v. Faridabad Gas Gadgets Private Ltd. AIR 1985 Delhi 136, where the Division Bench held that every ground on which a design may be cancelled under the Act should be available by way of defence to a suit for infringement and that on the strength of a recent design, the plaintiff can claim absolute restrain against everyone else from carrying on his business unless and until the plaintiff's design is cancelled in Page 116 of 164 C/CS/2/2017 ORDER appropriate proceedings by the competent court of law and Another. Division Bench judgment of the Calcutta High Court in Rotomac Pens Ltd. v. Milap Chand & Co. IPLR 1999 April, 149, wherein the Division Bench of the Calcutta High Court while dealing with the Designs Act has held, comparing the Indian and English laws on the subject that Section 53 of the Designs Act gives statutory right to a registered owner to sue for protection of his exclusive right, finally held that even if a registered design is of recent in nature, Section 53 of Designs Act confers a power on the proprietor to restrain others unlike in UK. Ultimately, the Full Bench of the Delhi High Court has not accepted both the above decisions, by harmoniously construing Sections 51 and 53 of the Designs Act, in the following words:
33. Therefore, in our view, neither the extreme view taken in Nicky Tasha's case or in Rotomac Pen's case are correct.
61. The test of balance of convenience has been aptly explained by the Court of Appeal in Corruplast Ltd. v. George Harrison (Agencies) Ltd. 1978 RPC 761 as follows:
In so regarding the matter, in my opinion the learned judge was taking too narrow a view upon the question of balance of convenience. If the plaintiffs are right about infringement, they are entitled to be protected by their patents against competition by the defendants until those patents expire. They are Page 117 of 164 C/CS/2/2017 ORDER struggling to establish a new market and to establish themselves in that market; they are, or they appear to be, at a crucial stage of that development, and if the defendants are allowed to compete with the plaintiffs, not only will the plaintiffs' present efforts be hindered, but also at the expiry of their patents, when other competitors may come on the market as well as the defendants, they will find that instead of being the only known and established suppliers in this country, they will have to compete with the defendants, who may by then have built a significant bridgehead in the market, giving them an advantage over other suppliers, and the plaintiff company will find itself confronted by stronger competition than would otherwise be the case.
...
...In every case of this kind the function of the court must, I think, be to consider which course, either the granting or withholding of an injunction, is the one which is likely to make it most easy for the trial court, when the issues in the action have been decided, to adjust the rights of the parties and do justice between them; and in the present case it seems to me that the balance of convenience is substantially in favour of granting an injunction.
Therefore, prima facie when it is made clear that the applicant/plaintiff is in the market and its patent is for a limited period and it is in a crucial stage Page 118 of 164 C/CS/2/2017 ORDER of development, the respondent/defendant cannot be permitted to interfere, especially when the defendant is a strong competitor to the plaintiff.
62. More over, on the factual position in this case, the applicant has come up in the world market by sale of its product as stated above and its period is only for 20 years and there is every possibility for a new invention in the field by bringing the new product even before the time of expiry of patent granted to the applicant and such invention may be brought by the applicant itself and hence, the quantum of damages which the applicant may suffer in not granting injunction cannot be ascertained in monetary sense. On the other hand, the respondent claiming itself to be a licensor of AVL products has not even marketed its product. On the face of the validity of the patent, prima facie proved by the applicant, certainly, the applicant is entitled to prevent any competition and that is the test of balance of convenience as laid down by the English Court as stated above.
64. In the context of the facts and situation of the present case, I am of the considered view that the contention that triable issues against the patent must be found out by the Court before granting an order of injunction is not sustainable, in the light of the amended provision of Section 48 of the. Patents Act, 1970 (Amended Act 38 of 2002 with effect from 20.05.2803), by which a patentee Page 119 of 164 C/CS/2/2017 ORDER is given a exclusive right to prevent third parties from using its patent and product.
65. It is relevant, as correctly pointed out by the learned senior counsel for the applicant, to find out the reason for such change in the legal position, which can be culled out from the Statement of Objects and Reasons for the said Amendment Act 38 of 2002, which has come into effect from 20.05.2003. The Statement of Objects^ and Reasons refers to the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and states that one of the salient features of the said Bill was to,
(c) to align rights of patentee as per Article 28 of the TRIPS Agreement;
The relevant portion of the Objects and Reasons in this regard is, The law relating to patents is contained in the Patents Act, 1970 which came into force on the 20th April, 1972. The Act was last amended in March, 1999 to meet India's obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which forms part of the Agreement establishing the World Trade Organisation (WTO). Apart from the aforesaid amendment, the Act has not undergone any change so far.
Since 1972, there has been considerable technological innovations and development of knowledge and the concept of intellectual property as a resource for knowledge based industries has become well recognised the world over. Development of technological capability in India, coupled with the need for integrating the intellectual Page 120 of 164 C/CS/2/2017 ORDER property system with international practices and intellectual property regimes, requires that the Act be modified into a modern, harmonised and userfriendly legislation to adequately protect national and public interests while simultaneously meeting India's international obligations under the TRIPS Agreement which are to be fulfilled by 31st December, 1999.
Keeping in view the Statement of Objects and Reasons stated above and also the salient features of the Bill, Section 48 has been amended to give better rights to the patentees and the entire aspect has to be looked into in that angle also. Since the purpose is the concept of globalisation and for the development of the " intellectual property system in India on par with international practice, such rights are given. On the other hand, the triable issue against patent sought to be raised on behalf of the respondent is that the specifications in various stages differ and therefore, the applicant itself is not aware of its invention, which prima facie I have found as not correct. In such factual situation, the question of raising a triable issue against the patent granted to the applicant at this stage does not arise.
67. The last and final test regarding the grant of interim injunction is about the payment of damages, whether the same can compensate the parties while granting or not granting an interlocutory order of injunction.
68. As I have stated earlier, the Page 121 of 164 C/CS/2/2017 ORDER test is as to whether the plaintiff should be made to face the adverse effect of competition. Further, a contention was raised by the learned Counsel for the respondent in these applications, viz., that the applicant is capable of being ascertained with an amount of calculated damages, with reasonable certainty, ultimately when the applicant succeeds in the suit, since the amount of applicant's sales will be known and the sales in the previous year can be taken into consideration for the purpose of measurement of damages to be quantified on royalty basis. A similar contention was rejected by the Court of Appeal in Netlon v. BridportGundry Ltd. 1979 FSR 530. While granting injunction at the appellate stage, the Court of Appeal has answered as follows:
I must now proceed to consider the question of damages. The respondents say that any damage that the appellants would suffer by not obtaining an injunction, if they ultimately prove right at the trial, is capable of being calculated with reasonable certainty and so damages are an adequate remedy. They say that the amount of the respondent's sales will be known, so also will those of Netlon in previous years, so that the measure of the diminution of business as the result of their activities can be ascertained and the damages quantified by calculation on a royalty basis. For my part, I am unable to accept this argument. The first year would be a buildingup one so that one would have to look at least to the second, but then, I Page 122 of 164 C/CS/2/2017 ORDER think, it would be impossible * to distinguish sales due to the early start with the assistance of the patented material and sales which the respondents would have made anyway. The truth, in my judgment, is that it is quite impossible to calculate the adverse effect upon the appellants of their having to face competition a yearearlier than they would have to do if the respondents had to wait for supplies of unquestionably unoffending material.
71. In any event, the test of "obviousness" which forms part of the term "inventive step" under Section 2(ja) of the Patents Act, 1970 will have to be decided only in an appropriate manner in a fullfledged trial. Suffice it to say now at this stage, prima facie there is novelty which means an invention and the same has been registered under the Patents Act with priority date and the enablement of novelty has been on the face of it proved by the applicant by marketing the product in such large extent and also without objection fairly for long 5 years and it is not proved that so far the product of the applicant is "obvious". I am therefore of the considered view that the concepts of prima facie case, balance of convenience and inadequacy of damages lean largely towards the applicant/plaintiff and the necessary conclusion can only be the grant of injunction in favour of the applicant/plaintiff."Page 123 of 164 C/CS/2/2017 ORDER
78. In the case of F. HoffmannLa Roche Ltd. & Ors. Vs. Cipla Ltd., vide judgment dated 27.11.2015 rendered in RFA (OS) no.92 of 2012 and 103/2012, the Hon'ble Delhi High Court observed thus: "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).
RFA (OS) Nos.92/2012 & 103/2012 Page 32 of 106
(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 Page 124 of 164 C/CS/2/2017 ORDER 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).
(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 RFA (OS) Nos.92/2012 & 103/2012 Page 33 of 106 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 Page 125 of 164 C/CS/2/2017 ORDER 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 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; RFA (OS) Nos.92/2012 & 103/2012 Page 34 of 106
(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 Page 126 of 164 C/CS/2/2017 ORDER 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 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)]."
79. In the case of Mariappan Vs. A.R. Safiullah & Ors. vide judgment dated 30.6.2008 rendered in O.S.A. nos.263 and 283 of 2006, the Hon'ble Madras High Court observed thus:
36. In AIR 1978 Delhi 1 Raj Prakash vs. Mangat Ram Choudhary and others. the effect of grant of patent has been discussed, which runs as follows: "The effect of the grant of a patent is quid pro quo, quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. S.12 of the Patents and Designs Act, 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making, selling and using the Page 127 of 164 C/CS/2/2017 ORDER invention throughout India and of authorising others so to do. This is the quo. The quid is compliance with the various provisions resulting in the grant of the patent. The very simple device upheld in John Lord Hinde v. Osborne Garrett, and Co., 1884 (1) R.P.C. 221 and an infringing hairpin was held as piracy of the plaintiff's invention with the following observations: "The inventor says, I ask you, the public, or rather I ask the Crown, to give me a monopoly for a certain number of years, and in consideration of their giving me that monopoly I will tell them in my specification the nature and manner of using the invention. I claim, and therefore at the expiration of the time that is guaranteed for my monopoly the public will be the gainers because they will learn how to do this. If a man obtains a patent, and thus obtains a monopoly, it makes no difference that somebody else who has not got a patent has thought of the same thing and has used it. He is not permitted to do that where the monopoly has been secured to an inventor."
This law is codified in India by the provisions, already referred to. The patented article or where there is a process, then the process, has to be compared 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 hairpin case, abovereferred to, and is indeed, always done. Unessential features in Page 128 of 164 C/CS/2/2017 ORDER 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 them 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 Ltd. v. Bristol Laboratories Ltd. 1967 R.P.C. 406: "The evidence here shows that in marking hetacillin in the United States the defendants use a principal part of the processes which 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 Page 129 of 164 C/CS/2/2017 ORDER that it is in substance the same as ampicillin."
39. In 2002 (24) PTC 632 Delhi (DB) Telemecanique & Controls (I) Limited vs. Schneider Electric Industries SA, it has been held that undoubtedly, patent creates a statutory monopoly preventing the patentee against any unlicensed user of the patent device. Thus once a violation is established in case of a registered patent, subject of course, to the patent being used, it will not be permissible to contend that the said patentee is not entitled to an injunction. A monopoly to the patent is the reward of the inventor and therefore in the said decision, the order of the learned single Judge in granting interim injunction has been upheld.
53. It is a settled position of law for granting an order of adinterim injunction including the infringement of Designs, Copyrights and Patent, the applicant/plaintiff must prima facie establish that balance of convenience lies clearly in his favour and irreparable loss that may be caused to him on account of non granting of an order of adinterim injunction.
62. It is an admitted fact that the application for patent was submitted by the applicant/plaintiff on 29.8.2000 and the latter patent No.198079 was granted to him on 20th January, 2006 with effect from 29th August 2000 in terms of Section 45(1) of the Patents Act of course is a subject matter of challenge in pre Page 130 of 164 C/CS/2/2017 ORDER and post grant oppositions filed by the 4th respondent/4th defendant. Therefore, prima facie, and as on date, patent is in force in favour of the applicant/plaintiff. On earlier occasions prior to grant of patent, the applicant/plaintiff got registered the design of artificial laminated banana paper under Designs Act there were infringers. Hence, the applicant/plaintiff instituted suits against the defendants 1 to 3 in various courts and got interim orders and later on he came to know that the 4th respondent/4th defendant is a dealer of defendants 1 to 3 and according to him, he is selling spurious artificial banana leaves manufactured by defendants 1 and 2.
63. Admittedly, the 4th respondent/4th defendant is not a registered design holder in respect of artificial banana leaf and moreover his pre and post grant oppositions to the grant of patent are pending adjudication before the appropriate authorities and as long as the patent is in force, the applicant/plaintiff who is the patent holder is entitled to some protection. Therefore, it is not difficult to come to the conclusion that prima facie, the product of the applicant/plaintiff namely artificial banana leaf for which patent was granted as found a special place in the market and is also evidenced by the fact of much volume of business conducted by him. In the judgment reported in (2007)2 MLJ 907 K.Ramu vs. Adayar Ananda Bhavan, Chennai, all the earlier decisions were referred to on that point and it has been held that issuance of patent right is an Page 131 of 164 C/CS/2/2017 ORDER admitted fact and the same is valid for a period of 20 years, the plaintiff is deemed to have discharged his initial responsibility of proving that they are protected by the certificate issued by the competent authorities under the Patents Act and therefore, it should be presumed to be a prima facie case on the strength of a certificate.
64. Under Section 108 of the Patents Act, when third parties infringe the right granted under the Patents Act, Court may grant reliefs including injunction and ordering the goods to be seized, forfeited or destroyed.
67. We further hold that under Section 108 of the Patents Act, the applicant/plaintiff is entitled to maintain the suit under Patents Act.
68. As regards the maintainability of application under Order 39 Rule 1 and 2 C.P.C. even without invoking the said provision, the Court in appropriate cases by invoking Section of 151 C.P.C. can grant such reliefs.
70. The applicant/plaintiff has not given the details of process under which he is manufacturing the laminated artificial banana leaf. Admittedly, even prior to the year 2000, the applicant/plaintiff is manufacturing the said product and marketing it and therefore, is having goodwill and trade name for his product and unless the 4th respondent/4th defendant is restrained by way of an interim measure from selling or marketing the said product, the applicant/plaintiff is bound to suffer irreparable loss Page 132 of 164 C/CS/2/2017 ORDER and grave hardship and also financial loss. Therefore, prima facie appears that the balance of convenience is in favour of the applicant/plaintiff. Therefore, the interim order granted by the learned single Judge in O.A.No.495 of 2006 is sustained and accordingly, O.S.A.No.263 of 2006 filed by the 4th respondent/4th defendant challenging the vires of the said order, is dismissed.
However, in the circumstances, there will be no order as to costs."
80. In the case of Ashwinkumar K. Patel Vs. Upendra J. Patel & Ors. (1999) 3 SCC 161, it has been observed thus: "11. The case of the owners further was that the agreement dated 16.7.1991 set up by defendants 15 to 19 was not true and valid and that the power of attorney dated 16.7.1991 in favour of defendants 15 and 28 stood revoked so far as the 11th defendant was concerned, as the 11th defendant died on 25.2.1994. The trial Court also held that the power of attorney was prima facie not an irrevocable one. It also held that the agreement entered into by the owners in favour of the plaintiff on 14.10.1980 and 6.4.1996 and also the agreement by the power of attorney agents defendants 15 and 18 dated 16.7.1991 in favour of defendants 15 to 19 was invalid for breach of the provisions of the Tenancy Act. The Court Commissioner in the special suit 293 of 1996 filed by the plaintiff earlier on 25.2.1996 got a panchnama done and had stated that, Page 133 of 164 C/CS/2/2017 ORDER on physical verification, the plaintiff was found to be in possession (vide para 45 of the judgment of the trial Court). The trial Court also observed that the mere fact that the defendants 15 to 19 and 28 produced some bills, receipts, cash memos xerox copies as evidence of purchase of construction material did not establish the possession of the said defendants 15 to 19. It held that the original owners' possession as per the compromise dated 26.4.80 in Suit No.1384 of 1988 between defendants 1 to 14 and defendants 20 to 25, must be treated as subsisting inspite of the agreement between the owners and the defendants 15 to 19 dated 16.7.1991 and inspite of the possession receipt in favour of defendants 15 and 28. There is some force in the contention of the appellant before us that even if the Compromise in Suit 1384/88 dated 26.4.1990 was recorded on 14.8.92, the defendants 20 to 25, who accepted plaintiff's possession on 26.4.90 would not have failed to bring it to the notice of the Court on 14.8.1992 when the compromise was recorded, if the plaintiff was not in possession. The High Court did not even refer to the case of the plaintiff regarding the agreement dated 14.10.1980 said to have been executed by the defendants 1 to 14 in favour of the plaintiff initially and the various payments upto Rs.5,75 lakhs made thereunder, and to Rs. 1 lakh paid under the modified agreement dated 6.4.1996. In their written statement, the owners supported the plaintiff's possession even as on date of suit.
Page 134 of 164 C/CS/2/2017 ORDERThe FIR filed by the plaintiff is also some evidence of a claim to possession of plaintiff and the attempt of defendants 15 to 19 to dispossess the plaintiff. Above all, the finding of the Court Commissioner in special suit No.293 of 1996 that plaintiff was in possession is of considerable importance. Further, several of defendants 1 to 14 filed affidavits in the trial Court stating that they have not entered into any agreement with defendants 15 to 19 and that they did not receive any cheques from defendants 15 to 19 and from defendants 20 to 27 and that plaintiff was in possession.
12. A reading of the judgment of the trial Court shows that though the agreement of sale executed in favour of the plaintiff was, according to the said Court, invalid because of its being in breach of the Tenancy Act still, in view of the compromise decree and the subsequent admission of the defendants 1 to 14 and report of the Court Commissioner in special suit No.293 of 1996, the trial Court held that plaintiff was in "permissive possession" as this was accepted by the owners. It held that a possessory right was sufficient to permit the plaintiff to have an order of temporary injunction in his favour."
81. In the case of Amarben @ Samarben Legal Heirs & Wd/o of Dec. Ramjibhai Manekbha Vs. Laxmanji Bhikaji Thakore & Ors., 2014 SCC OnLine Guj 7158, it has been observed by this Court as Page 135 of 164 C/CS/2/2017 ORDER under: "11. After hearing the submissions made at bar in this regard, the Court is of the opinion that the learned trial Judge has rightly refused equitable relief of temporary injunction in favour of the plaintiff on the ground of delay and laches. It requires to be noted that one Mr. Kantilal Joitaram filed Special Civil Suit No.47 of 2004 against defendant Nos.3 to 6 and in the said proceedings, the Court appointed Court Commissioner and the Court Commissioner in the said proceedings, categorically observed that defendant Nos.3 to 6 are in possession of the suit land. It is true that present plaintiff was not party in the said proceedings, nonetheless, such observations though recorded by the Deputy Collector in the proceedings initiated under section 79A of the Bombay Land Revenue Code and when the same were part of the record before the trial Court and not challenged by the plaintiff, it disproves the plaintiff's case, inasmuch as she was in possession till January, 2011. Under the circumstances, this Court finds that the plaintiff has made misstatement of fact about her possession and thus, suppressed the material facts before the trial Court. This conduct of the plaintiff disentitles her to have any discretionary relief in her favour.
82. In the case of Mathew V. Mathew Vs. Premier Enterprises, vide judgment dated 8.6.2009 rendered in O.S. No.1 of 2000(A), the Hon'ble Page 136 of 164 C/CS/2/2017 ORDER Kerala High Court observed thus: "21. Ext.A5 (a) is an advertisement at page 23 of the Ext.A5 Malayala Manorama Daily dated 17.08.1999. The said advertisement pertains to three products marketed by Anns Marketing and manufactured by Premier Enterprises (1st defendants). The first product is a thermal rice cooker and the second product is a pressure cooker and the third product is a kero gas stove. It was this advertisement which compelled the plaintiff to institute the suit after noticing that the kero gas stove was a deceptive or a colourable imitation of the plaint schedule patented product of the plaintiff. Ext.A6 is the brochure issued by the plaintiff pertaining to the plaintiff's product, the twin gas stove. The table stove marketed under the brand name "Stoman" is shown in Ext.A6 operation manual. Ext.A7 is the brochure issued by the defendants in which the picture of the kerosene stove shown as Mr. Cook Kero Gas Stove is given. It is the picture of the infringing copy of the offending stove. The plaintiff had taken out a Commission, when the suit was pending before the court where it was instituted. The Advocate Commissioner deputed by that court visited the premises of the defendants situated above 2 kms. to the west of TELK Junction which is along the Aluva Angamali National Highway (NH 47). The Rough sketch of the said premises (Premier Enterprises) in Ext.C1 (a). The Advocate Commissioner has submitted Ext.C1 report in which he Page 137 of 164 C/CS/2/2017 ORDER has attached Ext.C1 (b) owner's manual published by the defendants with regard to Mr. Cook Kero Gas Stove. The pictorial representation of the kerosene gas stove shown therein bears a true resemblance of the patented product of the plaintiff occurring in Ext.A1 notification. The Commissioner has after inspecting both the patented product as well as the offending product observed as follows at page 3 of the report: "The petitioner and the first defendants firm are dealing with same type of stove. Both stoves are adopting the same principle for working the same. In both the stoves, there is a fuel regulating valve fitted at the bottom of the fuel tank wherein a hole is provided. The fuel regulating valve consists of a stopper fastened on a pin that is fixed on the tank with the help of a metallic clamp. A spring is kept in between the metallic clamp and the stopper. At the bottom of the fuel tank with fuel regulative valve a kerosene tray is fitted which is connected with fuel feed tube. The fuel feed tube is connected with burner with cylindrical wick. Even the length of those fuel feed tube with tray is similar. The main difference is that the shape of the tray. The petitioner's tray is rectangular in shape and its open portion is covered by the fuel regulating valve and the lower lid of the tank.
Whereas in the defendants's stove the tray is not covered by the tank. Evenafter putting the tank there remains same open portion. Another Page 138 of 164 C/CS/2/2017 ORDER difference to be noted is that the air hole provided in the petitioner's stove is in between the tray and sleeve rest. Whereas on the other stove it is on the opposite side of the traythere the sleeve rest is in the middle. In both stoves the system adopted is gravity feed fuel tank with cylindrical wick."
22. The Advocate Commissioner had also verified the account books, invoices, bills, vouchers and other office records of the defendants. The findings of the Commissioner fully substantiate the grievance of the plaintiff that the defendants have been manufacturing and marketing kerosene gas stoves dishonestly adopting the invention of the plaintiff. The defendants have thus adopted the plaintiff's invention. in gross violation of the rights conferred on the plaintiff under Section 48 of the Act. If so, I see no reason as to why the prayer in the plaint should not be granted. As for the defendants' claim for revoking the patent granted to the plaintiff, with the dismissal of the counter claim of the defendants in that behalf, the patent granted to the plaintiff is not liable to be revoked. These issues are answered in favour of the plaintiff."
83. In the case of Dana Ram & Ors. Vs. Civil Judge (J.D.) & Ors., vide judgment dated 27.4.2004 rendered in Civil Writ Petn. No. 7099 of 2003, the Hon'ble Rajasthan High Court has observed thus: Page 139 of 164 C/CS/2/2017 ORDER "12. In my opinion, the Court can direct status quo to be maintained in respect of disputed property and further can appoint a Commissioner to visit the site and to report with regard to actual use of the property and if the report is submitted by the Commissioner, that report should be taken into account at the stage of granting temporary injunction and if that report isprepared in presence of both the parties, its importance becomes more and even in a case where the Commissioner visits the site in defendants absence and even without giving any notice to them, that report can be looked into if the Court feels that the said report gives picture of the site in correct manner. Thus, the report of the Commissioner forms acceptable basis for passing ad interim injunction or direction though such report is not an absolute evidence at that stage and has to be scrutinised with greater care and effectiveness at the stage of trial."
84. In order to appreciate the controversy between the parties, it would be appropriate to refer to the averments made in the plaint. The plaintiffs have averred that the plaintiffs are seeking protection against infringement of the Suit Patent granted to plaintiff no.1. It is further claimed by the plaintiffs that by their machine in question which is the Suit Patent, 4 C's i.e. Clarity, Colour, Cut and Carat of a rough diamond is visualized and the Page 140 of 164 C/CS/2/2017 ORDER flaws and inclusions which are found in rough diamonds are identified in 3 dimensions. In the Suit, it is claimed by the plaintiffs that the Suit Patent relates to an apparatus and a method for determining substantially reliable findings of the positions of inclusions within the structure of a gemstone which can be a rough (uncut), irregular or semicut or partially polished stone or can be a finished stone. It is further claimed that the inclusion refers to "flaws" or "defects" within a gemstone which affect the clarity (internal perfection) of the gemstone as more particularly, averred and explained in Paragraph 19 of the plaint. It is mentioned in the plaint that the Suit Patent comprises in total 39 claims of which claims no. 1 to 17 relate to an apparatus for the determination of the position of inclusions within the gemstone and claims no.18 to 39 relate to a method of evaluation of a gemstone in order to determine the position of inclusions therein.
85. It is the case of the plaintiffs that the defendants have, unlawfully and in utter disregard and violation of the provisions of the Act, started manufacturing, selling and using certain machines which directly infringe the Suit Patent as averred in the plaint. It is alleged by the plaintiffs that the Page 141 of 164 C/CS/2/2017 ORDER defendants, in collusion and connivance with one another, have manufactured or otherwise procured one or more duplicate versions of such galaxy machines or otherwise provide services which utilize identical or similar technology which is patented by the Suit Patent. At this stage, it would be appropriate to quote the following averments made in the plaint in Paragraphs 29, 30 and 31, which read as under: "29. In order to verify the above information which was otherwise available with the plaintiffs, the plaintiffs, through plaintiff No.2's Indian subsidiary Sarin Technologies India Pvt Ltd., had on May 05, 2017 purchased ten rough diamond stones from Shairu Gems Diamonds Pvt. Ltd., a company incorporated under the laws of India and having its principal place of business at P. No.166A/2 & 170C, Vatsa Devdi Road, Katargam, Surat395004. On May 18, 2017, the said rough diamonds were submitted with the defendant no.1 by 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. Prior to submitting these ten diamonds for inclusion scanning with the defendant no.1, the plaintiffs, through the private investigator, had gotten the said ten diamonds tested in batches for the presence of 'Selenium' by an independent laboratory in New Delhi.
Page 142 of 164 C/CS/2/2017 ORDERThe results of the report, which indicate no presence of 'Selenium', have been placed on record before this Hon'ble Court. "Selenium" is an active component used in the process of detecting inclusions in rough stones and is also an integral part of the Suit Patent, as can be clearly borne out from a perusal of the Suit Patent and the Analysis of the Suit Patent as set out hereinbefore. Thereafter, the said ten diamonds were submitted with the office of defendant no.1 for inclusion scanning. Once the inclusion scanning process was completed, the defendant no.1 returned the ten rough diamonds along with the data output of the inclusion scanning process on both, a flash drive (diskonkey) and via the defendant no.1's website for which a link, user name and password was provided by defendant no.1. A print out of the data output shared by the defendant no.1 is being placed on record before this Hon'ble Court. Pursuant to receiving the said ten rough diamonds back from the defendant no.1, the private investigator, at the plaintiffs' behest, again got these scanned diamonds tested for 'Selenium' residue at the same laboratory in New Delhi. The result of the laboratory testing after getting the diamonds scanned from the defendant no.1, clearly indicates the presence of 'Selenium' residue on each and every stone. The said report coupled with 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 Page 143 of 164 C/CS/2/2017 ORDER rough diamonds employ the Suit Patent. Five of the diamonds tested through the private investigator, the reports issued by the independent laboratory in New Delhi, including the report indicating the presence of 'Selenium' residue on the stones, and the analysis of the data output, are being placed on record in a sealed cover as prima facie proof of the infringing activities being carried out by the defendants, in active connivance and collusion with one another. The plaintiffs reserve their right to file a separate application to seek directions from this Hon'ble Court to keep the same in a sealed cover and not disclose the contents of the same to the defendants and/or public at large as the contents contain the trade secrets of the plaintiffs and is the proprietary information of the plaintiffs.
30. Additionally, a true copy of the private investigator's report, compiling all the findings of the investigation, is being placed on record before this Hon'ble Court alongwith an Affidavit in support of the said report and the aforementioned documents, which are the prima facie proof of the said infringement.
31. The plaintiffs also reserves their right to lead further evidence as to the infringing activities of the defendants and the infringing machines which incorporate the Suit Patent, using which the defendants have offered for sale their inclusion scanning services during the term of the Suit Patent without obtaining any Page 144 of 164 C/CS/2/2017 ORDER license, permission or consent from the plaintiff. However, from the documentary evidence placed on record in the sealed cover, it can be unequivocally and clearly discerned that the defendants, either directly or indirectly, are infringing the Suit Patent. As such, the defendants are liable to be restrained from continuing with their nefarious, illegal and unlawful activities forthwith."
86. It is further alleged that no modification would allow the defendants to avoid using the basic components of the claimed system and basic steps of the claimed method for determination of position of inclusion in a rough gemstone. The aforesaid averments are made the basis of the allegations that the defendants are guilty of the infringement of the Suit Patent. Even in application Exh.5 which is under consideration, the main basis is the same. It also deserves to be noted that the plaintiffs have relied upon the fact that firstly, 10 rough diamonds were purchased and through private investigator, the same were subject matter before defendant no.1 and it is found that there is presence of Selenium in the independent report of the laboratory at New Delhi, which is averred in Paragraph 29 of the plaint as quoted hereinabove.
Page 145 of 164 C/CS/2/2017 ORDER87. It deserves to be noted that thereafter, by an order dated 18.7.2017 passed by this Court (Coram: Mr. C.L. Soni, J.) in Special Civil Applications no.11240 of 2017 and 11242 of 2017, the Court Commissioner was appointed and the Court Commissioner visited the premises of the defendants and has made a report which is discussed hereinafter. The plaintiffs have heavily relied upon it in order to buttress their argument.
88. In order to appreciate the rival contentions, it would also be appropriate to refer to the Suit Patent which is granted by the Controller of Patent. Record indicates that the Patent Application was filed by the plaintiffs on 21.2.2008. After scrutinizing the provisional specifications filed by the petitioners, the Controller of Patent sent examination report dated 16.4.2014 (Mark 56/6/1), wherein various objections have been raised in the examination report. The Assistant Controller of Patent and Design raised the objection to the effect that the subject matter of the claims 14, 28, 30, 34, 35, 40 to 43, 48, 51, 54 and 56 do not constitute an invention under Section 2(1)(j) of the Act as it does not involve any inventive step for which reasons are given. It is pertinent to note that on receipt of the same, the plaintiffs through their attorneys Page 146 of 164 C/CS/2/2017 ORDER filed reply to the said objections raised in the examination report and revised claims no.1 and 18. The objection as regards US Patent is concerned, it is claimed by the plaintiffs that it can be noticed that two independent claims in the revised set of claims has the same special technical feature directed to deduction of presence of any substance different from the gemstone and inclusion in the material in which gemstone is disposed and it is further claimed by the plaintiffs that such device is not found in the U.S. Patent.
89. Ultimately, after hearing the plaintiffs/applicants as well as the objector, the Controller of Patent decided the objections vide order dated 22.2.2016, wherein it is observed thus: "Analysis:
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 3942 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 observed raised in hearing notice Page 147 of 164 C/CS/2/2017 ORDER 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 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 139 filed on 01/09/2015 annexed in schedule I and further processing of the action of grant is to be taken immediately."
90. Thereafter, the complete specification was submitted and ultimately, the patent came to be granted on 22.2.2016. Even bare reading of the certificate of grant of patent by the Controller of Patent and the patent certificate clearly mentions that the patent has been granted to the patentee i.e. plaintiff no.1 for "an invention entitled a method for evaluation of a gemstone". Thus, it Page 148 of 164 C/CS/2/2017 ORDER is clear that claims no.1 and 18 are the principal claims which were accepted by the patent authorities under the provisions of the Patents Act, 1970 on the basis of which the Suit Patent came to be granted. At the outset, it deserves to be noted that thus, the Suit Patent is granted on the basis of 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 the said material. On examination of the case of the plaintiffs, more particularly as observed in Paragraphs 29, 30 and 31 of the plaint, it is the case of the plaintiffs that the defendants are also using the same method and have alleged that presence of Selenium is found. If the aforesaid contentions are examined, Mr. Soparkar has rightly contended that the whole Suit is based on the contention that Selenium residue are found and use of Selenium by the defendants. As far as the Suit Patent is concerned, the same is not granted for use of Selenium. A method adopted by the plaintiffs is based upon claims no. 1 and 18 of the Suit Patent. Therefore, no patent is granted to the plaintiffs for the use of Selenium and as averred by the defendants, the plaintiffs themselves have filed a separate patent Page 149 of 164 C/CS/2/2017 ORDER application for use of Selenium which is yet to be granted. Therefore, the Suit Patent is not based on the use of the Selenium. On further analysis of the method based upon the claim no.18 is the principal claim which is approved by the Controller of Patent. It is a device or the apparatus which makes the machine of the plaintiffs a novelty and not the use of Selenium or any other substance. The Commissioner appointed by the Court who visited the premises of the defendants has examined each and every machine which were found in the premises the defendants. The report further states that more than 200 machines were found. However, the Commissioner has categorically stated that no vacuum pump was found. The Commissioner in his report has stated thus: "12. It was found that the Pressure in the machine was maintained between 0.250 and 1. Further there were 7 heaters to heat the Selenium in the machine which was maintained at 237 degree Celsius which is maintained by a temperature controller [Photo 10, ANNEXUREA [Colly]]. It was in the Chemical of Selenium that the diamonds are submerged and the chemical heated before taking the photographs or the scanning process by the machine. On inspection, the experts did not find any vacuum pump in the machine, however, there was an outlet valve which provided a Page 150 of 164 C/CS/2/2017 ORDER possibility of the same being installed. All the other components of the protected apparatus were found in the machines of the Defendant No.1.
13. The mechanism of the Scanning Machines found at the site during the commission was prima facie similar to that of the machines of the Plaintiff and consisted of various elements of the protected apparatus. The machines of Defendant No.1 provided for the introduction of Helium gas in the Container before the same is heated and the pressure of the gas is controlled by various valves found in the machine. The structure/body of the machine was also found to be similar. The body of the Scanning Machine of the Defendant No.1 at the site had a window in the body in order to allow the operator of the machine to see the process during its operation [Photo 11, ANNEXUREA [Colly]]. The back side of the machines had doors to allow access to the machinery and the circuit board as seen in [Photo 8 & 9, ANNEXUREA [Colly]]. The machines of the Defendant No.1 were capable of being fit with 3 different kinds of lenses with determines the measuring capacity of the machines. It was found that there were 3 different grades of machines at the site. These machines were classified as 'S', 'M' and 'L' which were used for scanning different sizes of diamonds.
14. In every machine there were 4 cables going in. Out of these 2 black ones were for power, one blue hose was for helium and a grey one was a Page 151 of 164 C/CS/2/2017 ORDER LAN cable through which the machine was connected to the server [Photo 12, ANNEXUREA [Colly]]. Machines with an older illumination mechanism were also found on the premises [Photo 16, 18, 19, 20, 21, 24 & 25 ANNEXUREA [Colly]]. The Scanning Machine also consisted of a glass covette and a cartridge which had a reddish coloured chemical residue [Photo 22 & 23, ANNEXUREA [Colly]]. It was observed that after the diamond is inserted into the machine, it gets inserted into the contained quickly at first and then at a slower pace after the Ball Valve gets compressed and thereafter at an even slower pace."
91. Though in the aforesaid report, it is recorded that other components in protected apparatus were found, the Commissioner's report has also recorded that no program which would infringe the program was found even in the computers which were checked up by the Commissioner which were 205 in number. In Paragraph 12, while describing the diamond scanning machines which were found on the 4th floor of the premises of the defendants, it is stated in Paragraph 11 that 72 diamond scanning machines were found. However, the Court Commissioner has stated that on inspection, the experts did not find any vacuum pump in the machines. However, there was an outlet valve which provided the possibility of the same being installed. Thus, even the Court Commissioner Page 152 of 164 C/CS/2/2017 ORDER did not find any vacuum pump in the machines. If the aforesaid report even if it is prima facie examined and relied upon, the presence of any vacuum pump is ruled out. Though an attempt was made that the lights were extinguished and there was a lull period for some minutes, the same would not lead to believe that in all machines which were large in number, the defendants could have removed vacuum pumps out of all machines or out of the premises belonging to the defendants which were inspected by the Court Commissioner. Such farfetch presumption is without any evidence as on date and no inference can be drawn that the defendants are also using the device for withdrawal of gas bubble i.e. vacuum pump. Considering the patent which is granted, the Suit Patent relates to a method for evaluation of a gemstone and the claims no.1 and 18 is a novel method which is developed by the plaintiffs for removal/withdrawal of gas bubbles from a gemstone. The defendants have also made a categorical statement that they do not use vacuum pump. Considering the evidence on record at this stage and the patent which is granted to the plaintiff no.1 is for the novelty which is developed by plaintiff no.1 in his machine as claimed in claims no.1 and 18 which are the principal claims. On the basis of the record of this case therefore, Page 153 of 164 C/CS/2/2017 ORDER the plaintiffs have developed a novel procedure and system which removes flaws and inclusions by way of removal of bubbles forming from a gemstone. Though the end result of the machines of the plaintiffs and the defendants may be the same, considering the method which is adopted by the plaintiffs and the method which is adopted by the defendants, it cannot be prima facie said to be the same or identical only because the end result is the same. The plaintiffs are not granted the Suit Patent for end result i.e. removal of flaws, but they are granted the Suit Patent for a particular method for apparatus which takes measures for reducing the presence within its immersion material of any substance other than inclusions having a third refractive index, said measures including withdrawal of gas bubbles from the said material and determining the position of inclusions in gemstones in all 3 coordinates by illuminating and imaging the entire gemstone. Thus, the apparatus which is found in the machine of the plaintiffs is the soul and pith and marrow of the Suit Patent and unless and until anybody copies it, the same would not prima facie constitute infringement of the Suit Patent. Even though this Court is of the opinion that the report of the Court Commissioner can be read as a relevant Page 154 of 164 C/CS/2/2017 ORDER material at the stage of deciding the present application for temporary injunction, even if the Commissioner's report is looked at, except the bare allegation that the defendants tried to throw spanners in the work of the Court Commissioner if ultimately the report is considered, it reveals that the Court Commissioner has examined the premises and the machines of the defendants and has given his report which speaks of a possibility of using such a device which is used by the defendants. It is an admitted position that the Suit Patent does not relate to use of Selenium and therefore, the contentions raised by the plaintiffs on the aforesaid aspect deserves to be negatived. In addition to this, even before the Controller of Patents, the plaintiffs have made independent claims as regards claims no.1 and 18 and have also stated that "lastly, the applicants submit that they reserve right to file one or more application for the claims withdrawn from the application".
The fact that the plaintiffs themselves have filed a separate application for patent for use of Selenium establishes the fact that use of Selenium is not part and parcel of the Suit Patent.
Page 155 of 164 C/CS/2/2017 ORDER92. Similarly, the aspect that as the revocation application is filed under Section 64 of the Act and that the counter claim is filed, the Suit should be stayed is also not necessary to be considered at this stage and in opinion of this Court, the present application can be considered by this Court and in opinion of this Court, the issue whether the revocation application can be permitted or not is also not necessary to be dealt with in this application as held by the Hon'ble Apex Court in the case of Alloys Wobben & Anr. (supra).
93. In light of the aforesaid therefore, the cumulative effect would be, whether the machines of the defendants in any way touches claims no.1 and 18 of the Suit Patent or not. The plaintiffs have prima facie not been able to show that the Suit Patent claims no.1 and 18 in any manner are being used by the defendants and have not been able to prove that the defendants' machines have also the same device of bubble removal. Even if the Court Commissioner's report is taken into consideration, except the bare assertion in the report that other components of the plaintiffs' machines are found in defendants' machines, nothing further can be taken into consideration at this stage while examining prima facie case. Even at the cost of Page 156 of 164 C/CS/2/2017 ORDER repetition, it deserves to be observed that the Suit Patent is not general in nature as it is rightly pointed out that the method leading to end result was known right from US Patent as well as other materials which are on record as documents D1 to D6. The said point is also considered by the Assistant Controller of Patents while granting the Suit Patent. Therefore, in opinion of this Court, what is protected under the provisions of the Act is the device/apparatus of the plaintiffs' machines, which is considered to be a novelty and inventive step. Hence, even considering the provisions of Section 114 of the Act, the protection is qua novelty of the plaintiffs' machines in form of claims no.1 and 18.
94. Even considering the ratio laid down by this Hon'ble Court in the case of Raj prakash (supra) decided by Delhi High Court and the judgment rendered in O.J. Appeal no. 82 of 2006 (Paragraph 67) by this Court, even if the validity of the Suit Patent is considered, in opinion of this Court, prima facie, the plaintiffs have not been able to make out a case of infringement of the Suit Patent. It is a matter of fact that the judgment rendered by the Hon'ble Madras High Court in TVS Motor Company Ltd. (supra) is not a good law. Though Mr. Shah, learned counsel appearing for the Page 157 of 164 C/CS/2/2017 ORDER plaintiffs contended that only for the sake of examining the principles on which the temporary injunction can be granted, the said judgment was referred to in facts of this case, considering the case on hand, the same is not applicable to the facts of the case and does not warrant any temporary injunction in favour of the plaintiffs as observed in this order. As held by Delhi High Court in the case of Ten XC Wireless Inc & Anr. (Paragraph 72) (supra), mere grant of patent does not tantamount to its validity and the same is not guaranteed by the grant and in facts of this case, the Suit Patent is a new patent and the validity of the same is to be examined in the Suit in the fullfledged trial and merely because the plaintiffs have been granted similar patent in other countries is of no consequences considering the provisions of the Act. In light of the aforesaid therefore, the judgment of this Court in the case of Rajnikant Devidas Shroff (supra) is not applicable to the case on hand. Even if the opinion of Anand and Anand, Advocates is ignored, in opinion of this Court, the same does not take the case of the plaintiffs any further.
95. It would also be appropriate to note that the whole plaint, as observed hereinabove, is Page 158 of 164 C/CS/2/2017 ORDER based on use of Selenium by the defendants. Selenium is a chemical element and considering the Suit Patent read with the order of Assistant Controller of Patent while rejecting the objection and grant of patent clearly provides that the plaintiffs have disclaimed the use of Selenium.
96. As such, Selenium is a chemical element which is nonmetal with properties that are intermediate between the elements sulfur and tellurium and also has similarities to arsenic. Selenium was discovered in 1817 by Jons Jacob Berzelius, who noted the similarity of the new element to the previously discovered tellurium (named for the Earth). Selenium is found in metal sulfide ores, where it partially replaces the sulfur. Commercially, selenium is produced as a byproduct in the refining of these ores, most often during production. Minerals that are pure selenide or selenate compounds are known but rare. The chief commercial uses for selenium today are glassmaking and pigments. Selenium is a semiconductor and is used in photocells. Applications in electronics, once important, have been mostly replaced with silicon semiconductor devices. Selenium is still used in a few types of DC power surge protectors and one type of fluorescent quantum Page 159 of 164 C/CS/2/2017 ORDER dot. Selenium salts are toxic in large amounts, but trace amounts are necessary for cellular function in many organisms, including all animals. Selenium is an ingredient in many multivitamins and other dietary supplements, including infant formula. It is a component of the antioxidant enzymes glutathione peroxidase and thioredoxin reductase (which indirectly reduce certain oxidized molecules in animals and some plants). It is also found in three deiodinase enzymes, which convert one thyroid hormone to another. Selenium requirements in plants differ by species, with some plants requiring relatively large amounts and others apparently requiring none (Source: Wikipedia).
97. In light of the aforesaid, presence of Selenium which is not part of the Suit Patent would not render infringement of the Suit Patent.
98. Considering the provisions of Section 2(1)(j) of the Act read with Exhs.D1 to D6 which are brought on record by the defendants in their written statement, the method for identification of flaws in gemstone was not unexplored or unknown field and therefore, in prima facie opinion of this Court, the Suit Patent is not a new product, but at the most, it is an inventive step which is in form of a Page 160 of 164 C/CS/2/2017 ORDER technical advance which can also be culled out from the examiner's report and the order passed on objections by the Assistant Controller of Patent. In light of the aforesaid therefore, in prima facie opinion of this Court, in absence of any apparatus for removal of bubbles, the Suit Patent loses its status as an invention and/or inventive step as defined under Section 2(1)(j) and (j)(a) of the Act. Again referring to the Suit Patent as granted which can be seen from the claims no.1 and 18, which are the principal claims which are granted as well as the certificate clearly mentions that the patent has been granted for an invention of a method of evaluation of a gemstone and even at the cost of repetition, it deserves to be noted that the Controller of Patent while granting the patent has opined that the prior art does not disclose apparatus which takes measures for reducing presence within its immersion material of any substance other than the inclusions having a third refractive index. It is also further opined by the Controller of Patent that the said measures including withdrawal of gas bubbles from said material and determining the position of inclusions in gemstone in all 3 coordinates by illuminating and imagine the entire gemstone. Thus, the pith and marrow of the Suit Patent is in prima facie opinion of Page 161 of 164 C/CS/2/2017 ORDER this Court, the apparatus which takes measure for reducing the presence within its immersion material. It is therefore the apparatus which makes the machine or the method of the plaintiffs an inventive step and therefore, the Suit Patent came to be granted. The Suit Patent in prima facie opinion of this Court is not granted to the end result as the said was known earlier and as observed hereinabove, the Suit Patent is invention only because of the inventive step which is found in the machine and method of the Suit Patent. Therefore, in absence of any such apparatus in any other machine, would not constitute infringement of Suit Patent.
99. Consequently therefore, the plaintiffs have not been able to prima facie prove that the machines used by the defendants amounts to infringement of the machines of the plaintiffs. It is a matter of record that the Suit Patent is new in the sense that it is granted on 22.2.2016 and its validity is yet to be adjudicated. The patents which are granted to the plaintiffs in other countries cannot be made basis of an action of infringement in India. The defendants are also in business since long and even prima facie considering the Commissioner's report, it cannot be said that any apparatus is found in Page 162 of 164 C/CS/2/2017 ORDER the machine of the defendants which would in any manner infringe the Suit Patent which is protected under the provisions of the Act by grant of patent in favour of plaintiff no.1. The same has to be tested and after considering the whole set of evidence only, it can be determined whether the same amounts to infringement of Suit Patent or not.
100. In light of the aforesaid therefore, the plaintiffs have failed to prove three essentials for grant of an interim relief i.e. prima facie case, balance of convenience and irreparable loss and injury. Considering the pleadings on record, contentions raised by both the sides as well as the judgments cited by both the sides, in facts of this case, the plaintiffs have not been able to prove the prima facie case. The defendants have declared before this Court, even during the course of argument, that they do not use any vacuum pump or any apparatus for removal of bubbles and therefore, only because the end result of the two machines is the same, the same in prima facie opinion of this Court would not constitute infringement of the Suit Patent. As discussed hereinabove, the apparatus and the method of the same is protected under the Suit Patent and not the end result.
Page 163 of 164 C/CS/2/2017 ORDER101. However, at the same time, even looking to the statement which is made orally by the learned counsel for the defendants, the defendants under such circumstances cannot be permitted to use any apparatus or device which would infringe the Suit Patent. Though the prayers prayed for in the injunction application is not granted, the defendants are hereby directed to maintain separate account for sale of any machines manufactured and/or sold by any of the defendants till final disposal of the Suit. The defendants are also further restrained from using any device for bubble removal in their machines till final disposal of the Suit. In view of the concussion arrived at, the other contentions as regards the Court Commissioner's report, the report kept in a sealed cover is not necessary to be dealt with at this stage which can be considered at the stage of fullfledged trial.
102. The application is thus disposed of. However, there shall be no order as to costs.
(R.M.CHHAYA, J.) mrp Page 164 of 164