Gujarat High Court
Sonani Industries Pvt. Ltd (Formerly ... vs Galactica Processing Technologies Llp on 19 July, 2024
Author: Biren Vaishnav
Bench: Biren Vaishnav
NEUTRAL CITATION
C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 139 of 2023
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2023
In R/APPEAL FROM ORDER NO. 139 of 2023
With
CIVIL APPLICATION (FOR PRODUCTION OF ADDITIONAL EVIDENCES)
NO. 1 of 2024
In R/APPEAL FROM ORDER NO. 139 of 2023
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR. JUSTICE BIREN VAISHNAV
and
HONOURABLE MR. JUSTICE DEVAN M. DESAI
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1 Whether Reporters of Local Papers may be allowed No
to see the judgment ?
2 To be referred to the Reporter or not ? No
3 Whether their Lordships wish to see the fair copy No
of the judgment ?
4 Whether this case involves a substantial question No
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
==========================================================
SONANI INDUSTRIES PVT. LTD (FORMERLY KNOWN AS SONANI
JEWELS PVT. LTD.)
Versus
GALACTICA PROCESSING TECHNOLOGIES LLP & ORS.
==========================================================
Appearance:
MR.SAURABH SOPARKAR Ld.Sr. ADVOCAT WITH JWALIT B
SONEJI(7895) for the Appellant(s) No. 1
MR ARJUN M JOSHI(11247) for the Respondent(s) No. 1,6,7
MR.JAY SAVLA Ld.Sr. ADVOCATE WITH MR.BHASH H MANKAD(6258) for
the Respondent(s) No. 2,3,4,5
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NEUTRAL CITATION
C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024
undefined
CORAM:HONOURABLE MR. JUSTICE BIREN VAISHNAV
and
HONOURABLE MR. JUSTICE DEVAN M. DESAI
Date : 19/07/2024
CAV JUDGMENT
(PER : HONOURABLE MR. JUSTICE DEVAN M. DESAI)
1. By way of the present Appeal From Order, the appellant - original plaintiff has challenged the order below Ex.5 dated 18.05.2023 passed by the learned Additional District Judge-11, District & Sessions Court, Surat in Commercial TM C.S.No.1 of 2023.
2. Heard learned Senior Counsel Mr.Saurabh Soparkar with learned advocate Mr.Tarun Khurana, learned advocate Mr.Ahhijeet Deshmukh and learned advocate Mr.Jwalit Soneji for the appellant, learned advocate Mr.Arjun M. Joshi for respondent Nos.1, 6 and 7 and learned Senior Counsel Mr.Jay Savla with learned advocate Mr.Robin Chacko and learned advocate Mr.Bhash Mankad for respondent Nos.2, 3, 4 and 5. Page 2 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined
3. Brief facts of the case are summarized as under:-
3.1 The plaintiff has prayed for in Injunction Application that pass an interim injunction in favour of the plaintiff and against the defendants, their affiliates, subsidiaries, related parties/officers, directors, representatives, agents distributors, assigns, nominees, and customers restraining them from directly or indirectly, jointly or severally, manufacturing having manufactured, procuring selling, offering for sale any machine/device or service that infringes the Suit Patent as well as any future machine/devices that incorporates the Suit Patent No.IN398302, so as to result in the infringement of the said Suit Patent, and has also prayed for ex-parte Ad-
interim and interim reliefs in terms of aforesaid prayers. 3.2 The Plaintiff is a supplier of CVD-grown diamonds. The Plaintiff also manufactures and supplies microwave reactors for CVD diamond production. The Plaintiff offers diamonds and jewellery, which are all lab- Page 3 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined grown and is a global distributor of all types of fancy- coloured diamonds and jewellery. The plaintiff has developed devices for High Pressure High Temperature treatment ("HPHT treatment") of diamonds and for this, the plaintiff has invented DIAMOND HOLDING DEVICES FOR HPHT TREATMENT OF DIAMONDS (Diamonds Holding Devices).
3.3 Plaintiff was granted First Patent (Patent No. IN328437) on 07.09.2020. The Diamond Container is a device, which holds the diamonds during HPHT Treatment. During HPHT Treatment, diamonds are exposed to extreme pressure @ 5 GPa-11 GPa and Temperature @ 1100'C- 3500'C. To derive optimum results out of HPHT Treatment it is cardinal to maintain accurate pressure and temperature over the diamonds, and in achieving such accuracy the structure of the diamond container plays cardinal importance. Plaintiff configured a unique structure of Diamond Container which can withstand extreme Page 4 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined pressure and temperature during the treatment with a minimum level of damage to the diamonds. The modern state-of-art not only requires uniformity in application of accurate temperature and pressure during HPHT Treatments but to make the venture commercially viable and exploitable, a diamond container requires such structuring that can hold a maximum number of diamonds, so that the maximum number of diamonds can be processed at the same time, resulting into cost efficiency and uniformity in colour profile of the diamonds. During HPHT treatment, pressure @ 5GPa-11GPa and temperature @ 1200C-3500C are applied to diamonds. The diamonds are placed in a graphite chamber, which is supported by a cylindrical member, a heating ring, an insulating ring, a conductive plate, and an outer body. This entire structuring is basically what is called a Diamond Container. This diamond container is mounted between two faces of a die, which in turn is mounted between Page 5 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined anvils of high-pressure apparatus and thereby, high pressure and high temperature are applied. The structure of the diamond container must enable transmission of pressure and temperature inside the graphite chamber and must also prevent it from being released. The suit patent not only increases the volume of cells to accommodate a large number of diamonds for HPHT Treatment, but at that time, the temperature and pressure transacted to the diamond holding device remain constant which yields the desired outcome. The structure of diamond container of the plaintiff includes- an outer body (3) with a hole; a cylindrical member (4) adapted to be received in the hole; a pair of backing assembly (12) adapted to be received in the cylindrical member (4), defining a cavity for receiving a pressure and heat transmitting (PHT) medium (11) with one or more diamonds embedded therein; a pair of conductive plates (9) adapted to be received in the cylindrical member (4) and to be fitted on the pair of Page 6 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined conductive plates (9); and a pair of insulating plates (5) configured to be received, a least in part, within the inner circumference of the conductive rings (6), each of the insulating plates (5) being of the convex outer surface. 3.4 Defendant No.2 is a partnership firm incorporated by Defendant No.3 and Defendant No. 5 as Partners in the firm. Defendant No. 2 is engaged in HPHT diamond processing technology.
3.5 Defendant No.3 is a former "Production Manager" of the Plaintiff, who had joined the Plaintiff's company in the year 2011. He joined as a Researcher and was also looking after day-to-day operations and production at the Plaintiff's premises. The plaintiff's long relationship/association with Defendants No. 3 to 5 also turned into amplitude trust. They resigned from the Plaintiff's Company in the year 2017. During their engagement with Plaintiff, Defendants Nos.3 to 5 were aware of Plaintiff's know-how, technical details and Page 7 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined proprietary rights and information. Defendant No.1 is a Limited Liability Partnership. Defendant No.6 and Defendant No.7 are partners of Defendant No.1 firm. 3.6 During the tenure of their job with the Plaintiff, Defendant Nos.2 and 3 were taught/trained with the entire technological process and realization of the process and were provided with all the trade secret information regarding the HPHT technology by Plaintiff through the Ukraine scientists with an obligation that the said information shall not be disclosed and to be used solely for the benefit of the Plaintiff.
3.7 Plaintiff in the year 2020 was aware that Defendants started rendering similar services as that of Plaintiff. Defendants had left their jobs and in connivance with each other had misappropriated the proprietary information, technical know-how, and copyright of Plaintiff. So, the Plaintiff has filed a Commercial Suit TM C.S. No. 38 of 2021 before the learned Commercial Court, Page 8 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined Surat. Plaintiff has also filed a Commercial Suit TM C.S. No.39 of 2021 before the learned Commercial Court, Surat against the infringement of Patent No. IN328437 by Defendant No. 2 to 5. A Local Commission was appointed at the Defendant No.2's premises and during the commission incriminating evidence have been found for both the suits as is evident from the Local Commissioner Report.
3.8 Aggrieved by the Respondent's malicious acts of infringing the patents coupled with a breach of obligations of confidentiality and breach of trust, the plaintiff preferred this Commercial Suit on 17.01.2023 for Permanent and Mandatory Injunction restraining infringement of registered patent No.IN398302, Rendition of Accounts, Damages, and Delivery up and further directions under the provisions of the Patents Act, 1970. Defendants have appeared and filed their respective Written Statements. The learned trial Court after hearing Page 9 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined and after considering voluminous documents, rejected appellant's Injunction Application, against which, plaintiff
- appellant is before this Court.
Submissions of the Appellant - plaintiff
4. The plaintiff is engaged in the business of manufacturing and treatment of natural and CVD diamonds. The plaintiff is the list of top suppliers of CVD grown diamond in India. Plaintiff is also a manufacturer and suppliers of microwave reactors for CVD diamond production. Plaintiff offers diamond and jewelry which are all lab grown in nature and is a global distributor of all types of fancy coloured diamonds and jewelry to optimize the process of HPHT treatment of diamonds, plaintiff has invented 'Diamond Holding Devices for HPHT treatment of diamonds'. Plaintiff was granted two Patents being Patents Numbers IN328437 and IN398302. The Suit Patent No. IN398302, which was granted by the learned Controller on Page 10 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 01.07.2022.
4.1 Defendant No.1 - present respondent No.1 is a Limited Liability Partnership. Defendant No.1 was originally a Private Limited Company named as Galactica Processing Technologies Pvt. Ltd. which was later on converted into Limited Liability Partnership Firm on 20.01.2022. Defendant No.2 - present respondent No.2 is a partnership Firm formed by defendant Nos.3 to 5 as partners. Defendant No.2 is a directly dealing with the identical business as that of plaintiff. Defendant Nos.3, 4 and 5 were former Production Manager, agent/representative respectively of the plaintiff, who joined plaintiff company in the year 2011 and 2006 respectively. Defendant No.3 joined as a Researcher and was looking after research and development work of the plaintiff and resigned from the plaintiff's company in the year 2017. Defendant No.4 was engaged in Page 11 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined operations/manufacturing/production division and left the plaintiff's company in December, 2017. Defendant No.5 was engaged in maintaining plaintiff company's HPHT Collection Office and left the plaintiff's Company in December, 2017. Defendant Nos.6 and 7 are the partners of defendant No.1 firm.
4.2 Plaintiffs have procured the trade secrets regarding Diamond Holding Devices under the Suit Patents No.IN328437 from industry experts by investing huge amount of money over the year. The plaintiff has invested time and efforts including financial resources to develop and improvise the Diamond Holding Devises for HPHT Treatment of diamonds and technology, which is a result of a combination of confidential information, Trade Secrete Patented Technology and Copyrighted Software. 4.3 Defendant Nos.2 to 5 have misappropriated Page 12 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined confidential information and trade secrets of the plaintiff, for which, the plaintiff has filed a Commercial Suit TM C.S.No.38 of 2021 before the learned Commercial Court, Surat and Commercial Suit TM C.S. No.39 of 2021 against the infringement of Patent No.IN328437 by defendant Nos. 2 to 5.
4.4 To overcome the damage to the diamonds undergoing HPHT treatment owing to amorphization, graphitization and breakage of diamonds, plaintiff invented/developed a diamond container that is configured to hold a diamond/gemstone for colouring of diamond. Since, the plaintiff during the experimentation noted that diamond container/cell of IN328437 alleviates the problem of damage to the diamonds undergoing HPHT treatment, the container of IN328437 while holding large number of diamonds because of higher temperature and or pressure resulting into variation in coloure profile of HPHT treated Page 13 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined diamonds. For maintaining substantially a uniform temperature and pressure across the interior volume of the diamond container, plaintiff invented diamond container and the structure/construction of said diamond container. The diamond container is in integral part of complete HPHT apparatus that comprises a toroid ring, a diematrix and a HPHT press machine that together facilitated to put diamond pressure under HPHT which resultnatly put the diamond position in the diamond container under high pressure and high temperature. The Suit Patent provides and improved diamond holding device that has capacity to hold higher number of diamonds to ensure uniform distribution of temperature and pressure. Non uniformity of pressure and or temperature in the diamond cell results in variations in the coloure profile of the diamonds owing to differential HPHT treatment received by diamonds within the diamond container. Which may resulted into huge financial loss.
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NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 4.5 It is submitted that plaintiff is a sole registered owner of Patent bearing No.IN398302 in India. It is further submitted that this being an invention that as the potential to literally to change the entire diamond industry to obtain optimum colour or to obtain colourless diamonds with minimum loss and damage during the process of HPHT. The plaintiff offers services to diamond manufactures related to HPHT treatment of diamonds and other jemstone. The plaintiff has found the solution to process the diamond with minimal damage while undergoing HPHT treatment. Plaintiff has established a brand name in the diamond industry. Plaintiff has thus exclusive right to prevent third party, who do not have any express consent for using, offering for sale which incorporate the technology covered under the Suit Patent in India. 4.6 Defendant Nos.3 to 5 since they were previously working with the plaintiff's company, having full Page 15 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined knowledge regarding the development or trial of the technology have manufactured, assembled, procured duplicate version of devices by utilizing identical or similar technology that of Suit Patent. Defendant No.2, through defendant Nos.3 to 5, has provided complete HPHT technology and confidential information of the plaintiff including Diamond Holding Devices which is protected under the Suit Patent. Defendant Nos.1 and 2 have assembled and or commissioned machines for colouring of diamonds through HPHT device and also using diamond holding device of the plaintiff. Such activities/services are being rendered related to diamond colouring to their customers.
4.7 It is further submitted that as per the Affidavit of Mr.Vipul Arjanbhai Dhameliya, one of the Director of Galactica Processing Technologies Private Limited has submitted that Defendant No.1 was approached by Page 16 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined defendant No.2 for sharing the technical information of the plaintiff. Upon such divergence of information, defendant No.1 was provided two variations of diamond holding devices one of which is suit patent to defendant No.2. 4.8 It is further submitted that the defendants in connivance with each other are manufacturing and or providing services using duplicate and infringing device for commercial purposes. It is submitted that the defendants have in collusion misused and misappropriated plaintiff's confidential information and have indulged themselves in manufacturing identical machines with identical components, and that of plaintiff, without taking permission/license from the plaintiff. Defendants have infringed upon the suit patent as the technologies/device under the suit patent.
4.9 It is submitted that the Bakul Patent (D4)clearly discloses use of a vertically oriented heater sleeve/cylindrical Page 17 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined heating element/member/heater for sideways application of heat, which is completely opposite to the teaching of the Suit Patent and fundamentally opposed to the construction being proposed under the suit patent. It is further submitted that the learned trial Court erred in relying upon Korean Patent Publication No. 10-2004 dated 10.05.2004 while wrongly holding in Para No. 5.15 that the Korean Patent "reveals very high degree of similarity with the Suit Patent". In a Patent Infringement case, the defence made by the Respondents has to be credible and merely because a Post Grant. 4.10 It is further submitted that the Reply from ISM Bakul was already wrongly relied upon by the Ld. Trial Court since ISM Bakul failed to map the backing assembly and the overall construction of the instant Suit Patent with the Bakul Patent in any manner whatsoever, and further failed to show if these parts/components exist in public document including but not limited to their own patent, and have gone ahead in Page 18 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined making a generic statement without any technical basis or mapping. Furthermore, while assessing Novelty and Inventive Step, it is not appropriate to dissect the claimed invention in piece meal to arrive at any conclusion. 4.11 It is further submitted that the Suit Patent is a categorical improvement over the over the conventional containers by way of which a better article diamond container has been claimed, inasmuch as, the Appellant herein has, with the help of comparative experimental data, established that the Diamond Container of the Suit Patent having heating mechanism configured as coplanar ring/plate above and below the PHT medium results in maintaining uniform temperature across the PHT medium resulting in dramatic improvement in the color change of the Diamond as compared to the conventional containers having cylindrical / vertical heater. Page 19 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 4.12 Learned senior counsel for the appellant has relied upon the following decisions:-
(i) Bishwanath Prasad Radheshyam Vs Hindustan Metal Industries (1979 2 SCC
511).
(ii) Bristol-Myers Squibb Holdings Ireland Unlimited Company & Ors. Vs. BDR Pharmaceuticals International Pvt. Ltd. & Anr.
[CS(COMM) 27/2020].
(iii) Avery Dennison Corporation vs. Controller Patents and Design [C.A. (COMM.IPD-PAT) 29/2021 ]
(iv) Pharmacyclics, LLC vs. Controller General of Patents, Design, Trademarks and Geographical Indications[OA/46/2020/PT/DEL] (Intellectual Property Appellate Board)
(v) In re Clay 966 F2d 656
(vii) CDE Asia Limited vs. Jaideep Shekhar and Ors. [CS (COMM) 124/2019] High Court of Delhi at New Delhi.
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(viii) CTR Manufacturing Industries Ltd. vs. Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. & Ors. 2013 (1) Mh.L.J.) Manu/MH/2895/2015 (Bombay High Court)
(ix) Galatea vs. Diyora & Bhanderi Corporation C/AO/109 of 2018.
(x) CTR Manufacturing Industries Pvt. Ltd. vs. Sergie Transformer Explosion Prevention Technologies Pvt. Ltd. & Ors. SLP (C) No. 34749- 34751/2015.
(xi) Cipla Limited v. Novartis A.G. & Anr. [2017 SCC OnLine Del 7393] (High Court of New Delhi).
(xii) Farbewerke Hoechst Aktiengesellschaft Vormals Miester Lucius & Bruning a Corporation and Ors. Vs. Unichem Laboratories and Ors. [AIR 1969 Bom 255] (Bombay High Court).]
(xiii) F. Hoffmann-LA Roche Ltd. & Anr. Vs. Cipla Limited (High Court of Delhi at New Delhi).
(xiv) Novartis AG and Another Vs. Natco harma Limited 2021 SCC OnLine Del 5340 :
(2022) 89 PTC 1
(xv) Astrazeneca AB & Anr. vs. Intas Pharmaceuticals Ltd. IA 8826/2020 in CS (Comm) 410/2020 (xvi) SJS Business Enterprises (P) Ltd. vs. State of Bihar & Ors. (2004) 7 SCC 166 Page 21 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined (xvii)Groz-Beckert KG Versus Union of India and Others [2023 SCC Cal 111] (High Court of Calcutta) (xviii) Biomoneta Research Pvt. Ltd.; Versus Controller General of Patents Designs and Another (High Court of New Delhi) [2023 SCC Del 1482 (xix) Strix Ltd vs Maharaja Appliances Limited[2009 SCC Del 2825] (High Court of New Delhi) (xx) Strix Ltd vs Maharaja Appliances Limited[2009 SCC Del 2825] (High Court of New Delhi).
Submissions of Respondent Nos.1, 6 & 7 - Defendants
5. Learned Senior counsel vehemently submitted that the decision rendered by the learned trial Court below Exhibit 5 is in complete consonance with the prima facie evidence available on record. It is submitted that in absence of prima face case, the learned trial Court has rightly rejected the injunction application of the Plaintiff. Page 22 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined It is submitted that the plaintiff has suppressed the material document and placed on record incomplete document and obtained Ad-interim ex-parte injunction against the defendants. Since the plaintiff has not come with the clean hand, plaintiff is not entitled to an equitable relief of injunction. One of the reasons for rejection of the injunction application has been suppression of the complete document. 5.1 It is submitted that the allegations of the plaintiff in the injunction application are such that unless a full fledged trial is undergone, the plaintiff cannot have an equitable relief of injunction at this stage. Even the prayer, sought for, in the plaint as well as prayer, sought for, in the injunction application, are identical and if at this stage, plaintiff's injunction application is granted, defendants would suffer irreparable injury as it would amount to decree the suit before trial. Page 23 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 5.2 Defendant Nos.1, 6 and 7 entered into a Contract 13-70 dated 7th June, 2022 with 'V.Bakul Institute for Superhard Materials NAS of Ukraine' (hereinafter referred to 'Bakul' for short) for transfer of Know-How, whereby a design of a reactionary cell/container was provided to defendants. Bakul was already having a brand patent being UA79716 C2 which was published on 07.10.2007. The diamond container cell is nothing but replica of the said reactionary cell/container which has been certified by Bakul. Defendants have right to use the said design of diamond container cell in India for which the plaintiff has illegally obtained suit patent. Defendant No.4 has already filed post grant opposition to the suit patent on 13.02.2023.
5.3 Defendant Nos.6 and 7 have a family business of trading of diamonds which includes buying and selling both rough diamonds and processed diamonds. Defendant Page 24 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined Nos.1, 6 and 7 have business relations of defendant No.2 and Pii Scientific. Defendant No.3 is the proprietor of Pii Scientific.
5.4 Defendant No.1 imported various second hand equipments being 06 Hydraulic Press Machines and accessories for the purpose of processing diamonds. They are imported from Czech Republic on 13.05.2021. After procuring/importing other parts and accessories for the said imported equipment, since defendants lack the technologies thereof, defendant No.3 approached defendant Nos.1, 6 and 7 for taking the said imported equipment on lease for using it for HPHT treatment for diamonds. A Machine Lease Agreement dated 18.04.2022 was executed between defendant Nos.1, 6, 7 and defendant No.3. Defendants also came to know that the used/second hand press machines were easily available in the market in Europe and other countries.
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NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 5.5 It is further submitted that Bakul also transferred the technical documentations containing various Know- How, process, specifications of machine, equipment toroid
- belt press, components including Diematrix, Block Matrix, Inner and outer rings, Pressure Plates, Cooling Assembly, Pressforms for molding, container assembly components, method of assembly. Defendants also sought clarification from Bakul on various issues alongwith the issue of suit patent and Patent No.IN328437. Vide email reply dated 08.02.2023, Bakul inter alia, explained that the contract No.K13/43 with Tenth Diamond Planet Private Limited has expired in the year 2014 and on the date of signing contract 13-70 with defendant No.1, there was no obligations of Bakul with any third party in India. It is further submitted that the suit patent is made in full accordance with the drawing and specifications of the Page 26 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined design that Bakul patent have previously disclosed in the year 2006. The Bakul patent have already expired and is in public domain.
5.6 It is submitted that the alleged copyrights illegally obtained by the plaintiff by concealment of materials fact and misstatement. The reliance which has been placed by the plaintiff on the Affidavit of Mr.Vipul Arjanbhai Dhameliya raises number of questions. Mr.Dhameliya was a Promoter-Director of Galactica Processing Technologies Private Limited from 13.01.2021 till 01.09.2021, and on 01.09.2021, Mr.Dhameliya left from the post of Director, Mr.Dhameliya has no technical understanding of HPHT components. Much reliance has been placed by the plaintiff on the Affidavit of Mr.Dhameliya and the cause of action for filing the suit is based upon the information gathered from Mr.Dhameliya. Page 27 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 5.7 It is further submitted that the Suit Patent has been obtained in violations of provisions of Patents Act, 1970 and is liable to be revoked as per Section 64 read with Section 107 of the said Act. It is urged that plaintiff alleges that suit patent discloses an invention. Under a claim of earlier priority being the patent of the plaintiff company being patent No.IN328437 dated 09.01.2019, was exactly the same as the one received by the plaintiff company from Bakul in the year 2010. Thus, the suit patent granted in violation of Section 64(a) of the Patents Act, 1970. The claim of complete specification of suit patent is not in an invention within the meaning of Act. The suit patent is not a new and the same was publicly known and was publicly used in India before the priority date of the claim by plaintiff company since 2010. 5.8 Defendants are using the device designs that has been provided by Bakul as per the terms of the Contract Page 28 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 13-70 and the technical documentations. 5.9 It is further submitted that t he Court has analysed published material and prior arts produced on record by the Respondents, to accurately break down the backing assembly as comprising of an inner plate, an intermediate plate and an outer ring, out of which any of the rings act as heat generating mechanism. The elements of the backing assembly are common components of any diamond container. These materials also perform the same function as found in any other device using the HPHT treatment.
5.10 It is the case of the Respondents that the process of sintering/growing diamonds is identical to colouring of diamonds. It is also undisputed that colouring of diamonds is the subject-matter of the Appellant's first patent IN382437. The Appellant has Page 29 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined materially failed to disclose that it has obtained the technology of its Suit Patent from ISM Bakul. As is evident from the Appellant's own Suit Patent specifications that the process to grow/sinter diamonds and change the colour of diamonds by HPHT treatment is the same and is known, and the only claim of the Suit Patent only claims to increase volume. 5.11 It is further submitted that the appellant suppressed the last page of the Opposition Board Report from the Ld. Trial Court. This page contained a Joint Recommendation, which noted "Based on the request by both the parties an opportunity for hearing may be provided to clarify and submit further evidences if any, before taking a final decision on this case". Later, the Respondents had produced the entire Opposition Board Report. In the impugned order, the Ld. Trial Court records that the Appellant produced an incomplete Page 30 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined document, while also noting that an attempt was made to mislead the Court. It is submitted that the Appellant failed to show that prior art taught against direct contact between the PHT medium or against the placement of heaters in a top and bottom manner. The Appellant's choice of horizontal heating is a workshop improvement, not a novel concept. The Suit Patent is a mere combination of known elements and that hindsight analysis should not be used to assess inventive step. All prior arts presented were publicly available before the priority date of the Suit Patent, establishing its lack of inventive steps and obviousness.
5.12 Learned senior counsel for respondent Nos.1, 6 and 7 has relied upon the following decisions:-
(i) Shyam Sel & Power Ltd. Vs. Shyam Steel Industries Ltd. reported in (2023) 1 SCC 634
(ii) Ram Narain Kher Vs. M/s. Ambassador Industries New Delhi & Ors. reported in AIR Page 31 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 1976 Del 87
(iii) Standipack Pvt. Ltd. vs. M/s. Oswal Trading Co. Ltd. & Ors. reported in AIR 2000 Del 23
(iv) Galatea vs. Diyora & Bhanderi Corporation AO109 of 2018
(v) Chelton (Poppits) 1957 RPC 17
(vi) Garware-Wall Ropes vs. Techfab India & Ors.
reported in 2008 SCC Online Guj 80
(vii) Arif Abdul Kader Fazlani vs. Hitesh Raojibhai Patel & Ors. reported in 2011 SCC Online Guj 4077
(viii) Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal Industries reported in (1979) 2 SCC 511.
(ix) F. Hoffman La Roche. Vs. Cipla Ltd. reported in 2015 SCC Online Del 13619
(x) F. Hoffman La-Roche vs. Cipla Ltd. reported in 2009 SCC Online Del 1074
(xi) Bowaters Lloyd Pulp and Paper Mills reported in 1954 RPC LXXI
(xii) Monsanto Company By Their Patent Agent De Penning And De Penning Versus Coramandal Indag Products (P) Limited reported in (1986) 1 SCC 642 Page 32 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined
(xiii) Indian Vacuum Brake Co. Ltd. Vs. E.S.Luard reported in ILR 1925 (LIII) 306
(xiv) Bristol-Myers 1968 RPC (5) 146
(xv) J. Mitra & Co. (P) Ltd. vs. Controlloer of Patents and Designs reported in (2008) 10 SCC 368 (xvi) Dr.Aloys Wobben Vs.Yogesh Mehra reported in (2014) 15 SCC 360 5.13 Learned Senior counsel for respondent Nos.1, 6 and 7 has relied upon the decision of Delhi High Court in the case of Hoffmann-La Roche Ltd. and Anr. Vs. Cipla Ltd. reported in (2009)40 PTC 125 (DB). In para Nos.37, 39, 40, 53, 85, the Hon'ble Delhi High Court has observed as under:-
"37. Had the Controller of Patents been cognizant of this fact when he considered the application for the grant of the suit patent, he would have had to address the issue whether it was the combination of Polymorphs A and B or Polymorph B alone which satisfied all the patentability tests vis-a-vis Section 3
(d). He would have asked to examine in some detail what was in fact claimed and stated in U.S.'498 and U.S.'221. It may be noted that the application for U.S.'498 was made on 28th May 1996 and granted on 5th May 1998. The application for U.S.'221 was Page 33 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined made on 9th November 2000 and granted on 31st May 2005. So by the time Patent No. 196774 was granted on 23rd February 2007 to the plaintiffs, the facts concerning U.S.'498 and U.S.'221 were already known to the plaintiffs. The failure by the plaintiffs to bring the above facts to the notice of the Controller of Patents at the time of consideration of their application for patent for the compound of a combination of Polymorphs A and B was not consistent with the requirement of a full disclosure.
The plaintiffs cannot be heard to say that after all the applications for grant of patent in respect of Polymorph B were pending before the Controller of Patents and he should have known that fact any way. It is perfectly possible that the Controller of Patents might not know, unless his attention is drawn to the fact, of other pending applications concerning the derivatives and forms of the product in question. It is also possible that the pre-grant opposer is not aware of them. Certainly the applicant would, as in this case, know how many more applications it has filed which are pending consideration. It would know what statements it made in the corresponding patents granted to it elsewhere. This would be relevant not only for the tests of novelty and obviousness but of efficacy as well.
39. The effect of non-disclosure of the above facts by the plaintiffs in their plaint in the suit will be considered next. Admittedly the plaintiffs did not disclose the above facts even while they asserted that Patent No. 196774 covered the product being marketed by them as Tarceva. The plaintiffs should have been candid and disclosed to the Court that they had filed separate applications for Polymorph B. They may have taken the plea, as they did Page 34 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined repeatedly before this Court, that the subsequent application for Polymorph B was out of abundant caution and that Polymorph B was subsumed in the compound which was a combination of Polymorphs A and B. However, this was not done and this Court has had no valid explanation offered by the plaintiffs for this non-disclosure. Also, it may be recalled that the plaintiffs also did not disclose the complete specification of the product till the defendant filed an application seeking the information. There could well be a situation where the plaintiffs were pressing for an ex parte ad interim injunction. The effect of the failure to disclose the complete specification of the product and the facts concerning the pending applications for Polymorph B would be that the learned Single Judge would not have the occasion to consider if in fact the suit patent covered Tarceva. This, in the considered view of this Court, is sufficient ground to hold that the plaintiffs in fact failed to demonstrate before the learned Single Judge and even before this Court that notwithstanding the pending applications in respect of Polymorph B which wholly corresponded to the tablet Tarceva, they had a prima facie case.
40. This Court holds that in an application seeking ad interim injunction in a suit for infringement of patent, it would be incumbent on the plaintiffs to make a full disclosure of the complete specification of the product whose patent is claimed to have been infringed. The plaintiffs will also have to disclose to Court the x-ray diffraction data of the product, particularly if it is a pharmaceutical drug. The plaintiffs have to make an unequivocal disclosure that the patent they hold covers the drug in question; whether there are any other pending applications seeking the grant of patent in respect Page 35 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined of any derivatives or forms of the product for which they already hold a patent and the effect of such applications on the suit patent. Short of the above details, the Court being approached for the grant of an ad interim relief will be unable to form a view on whether the plaintiff has made out a prima facie case. Otherwise it would be a case of suppression of material facts that would have a bearing on the question.
53. 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. Blok-Lok 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, 2007-1168) it was held that the "defendant must put forth a substantial question of invalidity to show that the claims at issue are vulnerable."
Summary of conclusions
85. To summarise our conclusions:
(i) .......
(ii) ....Page 36 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
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(iii) In an application seeking ad interim injunction in a suit for infringement of patent, it would be incumbent on the plaintiffs to make a full disclosure of the complete specification of the product whose patent is claimed to have been infringed. The plaintiffs will also have to disclose to Court the x- ray diffraction data of the product, particularly if it is a pharmaceutical drug. The plaintiffs have to make an unequivocal disclosure that the patent they hold covers the drug in question; whether there are any other pending applications seeking the grant of patent in respect of any derivatives or form of the product for which they already hold a patent and the effect of such applications on the suit patent.
(iv) The failure by the plaintiffs to disclose the complete specification of the product and the facts concerning the pending applications for Polymorph B led to the learned Single Judge not having the occasion to consider if in fact the suit patent covered Tarceva. Had these facts fully disclosed in the plaint and the entire specification of the patent held by the plaintiff together with X-ray diffraction data of Tarceva and Erlocip filed along with the plaint, it is possible that the plaintiff may have had difficulty in showing that the patent held by it (No. 196774) covered Tarceva as well.
(v) To the extent that the defendant has raised a serious doubt whether the plaintiffs in fact hold a patent for the product sold in the tablet form as Tarceva, the plaintiffs must be held not to have been able to cross the first hurdle of showing that they have a prima facie case in their favour for grant of an order restraining the defendant from marketing Erlocip. The plaintiffs therefore ought to have been refused injunction for their failure to make out a prima facie case.
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(vi) Notwithstanding the above, assuming that the plaintiffs held a patent for the product which was the subject matter of the suit for infringement, the grant of such patent to the plaintiffs will not ipso facto entitle them to an interim injunction if the defendant is able to satisfy the court that there is a serious question to be tried as to the validity of the patent. In the present case, the defendant has raised a credible challenge to the validity of the patent by raising a serious triable and substantial question that renders it vulnerable to challenge. 5.14 By relying upon the aforesaid decision, learned Senior counsel for the respondents submitted that when the limitation period as prescribed Sub-section 2 of Section 25 of the Patents Act has not expired, the Suit Patent has not achieved finality. Once, the defendants establish their exists a case that met the suit patent vulnerable in the eyes of law it being a credible defence, injunction is not granted in favour of the plaintiff. In absence of scientific data, in an application seeking ad-interim injunction in a suit for infringement of patent, no injunction can be granted in favour of the plaintiff.
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NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 5.15 The suit patent is totally based on the designs of Bakul and the agreement to use Know-How from Bakul has already expired in the year 2014. The modifications are workshop improvements on the Bakul Patent. The defendants Nos.1, 6 and 7 are not in the business of change of clolours of diamonds. Defendants are using second hand machine to process diamonds like many other small and medium sized enterprises in Surat. The intellectual property of Bakul has already been transferred to defendant No.1 in perpetuity in terms of Contract 30-
70. Defendant Nos.1, 6 and 7 neither processed nor used any diamonds. Processed diamonds are received from defendant No.2/Pii Scientific alongwith fragments of processing materials used for treatment of diamonds. Submissions of respondent Nos.2 to 5 - Defendants 6 Learned Senior counsel Mr.Jay Savla submitted Page 39 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined that the present appeal does not inspire any confidence for the reason that the observations made by the learned trial Court while deciding Exhibit 5 has taken into consideration the Prima facie case and Balance of Convenience. From the material available on record, the learned trial Court has prima facie held that the plaintiff has failed to establish that Suit Patent is unique or novel. The Know-How Agreement between plaintiff and Bakul has expired in the year 2014. However, plaintiff kept in using and manufacturing process based on the Know-How under the Know-How Agreement. It is submitted that the Suit Patent is not a new invention but based on numerous prior arts exits including Bakul Patent. Plaintiff has not been able to establish, prima facie that any novelty and or inventive steps are involved in making the Diamond Container Device.
6.1 It is submitted that defendant No.2 and Pii Page 40 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined Scientific process diamond provided by defendant No.1 and after completion of the processing of diamonds, the same are returned back to defendant No.2 for further sell. A Machine Lease Agreement dated 18.04.2022, is also executed between defendant No.1 and Pii Scientific for lease of various second hand/used machinery which defendant No.1 had imported from Czech Republic. 6.2 It is further submitted that defendant No.4 has already filed post grant opposition dated 13.02.2023. As per the say of plaintiff the suit patent was granted on 01.06.2022 and was published on 03.06.2022. Section 25(2) of the Patents Act provides limitation for opposition. The limitation is before the expiry of a period of one year from the date of publication of grant of a Patent. On the date of suit, the rights of the plaintiff were not crystallized and hence, no injunction can be granted in favour of the plaintiff against the defendants. The test of novality is to Page 41 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined compare to design of defendant Nos.2 to 5 Diamond Container Device with the designs of existing prior arts available in the public domain. The YouTube video are giving complete HPHT process using Toroid Type Die Matrix is available online in public domain in its website:
https://www.youtube.com/watch?v=kO6shelL2sg.
Such material clearly shows the 'Backing Assembly', which is claimed to be a Novel Features to establish Novelty over the Suit Patent. The video was uploaded in the year 11th December, 2014 by 'Sintercer Project' by the Institute of Advanced Manufacturing Technology. The video contains positioning of Diamond Container Cell and is showing the entire HPHT process using the exact assembly of components, Backing Assembly, Heat Distribution, etc. that is claimed as Trade Secrete and/or Confidential information by plaintiff. It is further submitted that the Diamond container device used by defendant Nos.2 to 5 are freely available for use in the public domain.Page 42 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024
NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined 6.3 Learned Senior counsel for respondent Nos.2 to 5 has relied upon the following decisions:-
(i) Novartis AG Vs. Union Of India and Others reported in (2013) 6 SCC 1
(ii) Dhanpat Seth Vs. Nil Kamal Plastic Crates Ltd. reported in 2006 (0) AIJEL-HP 702689.
(iii) KSR INTERNATIONAL CO. Vs. TELEFLEX INC [No. 04-1350], United states Supreme Court
(iv) Lintech Electronics (P) Ltd. & Anr V. Marvel Engg. Co. & Anr. reported in 1995 SCC OnLine Del 681
(v) Bilcare Limited V.M/s The Supreme Industries Ltd. reported in 2007 SCC Online Del 466.
(vi) Hindusthan Lever Ltd. V. Godrej Soaps Ltd. and Ors. reported in AIR 1996 Cal 367
(vii) Rajeev Indravadan Modi & Ors. V. Instance Laboratories Pvt. Ltd. & Anr. reported in 2001 SCC OnLine Guj 516
(vii) Mariappan v. A.R. Safiullah reported in 2008 SCC Online Mad 423.
(ix) Gujarat Bottling Co. Ltd. & Ors. v. Coca-Cola Company & Ors. reported in AIR 1995 SC 2372 Page 43 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined
(x) Vifor International Ltd. & Ors. v. Biological E Limited Neutral Citation: 2023/DHC/6864
(xi) Bayer Healthcare LLC v. NATCO Pharma Ltd. Neutral Citation: 2023/DHC/4458
(xii) Wander Ltd. & Ors. v. Antox India P. Ltd. reported in 1990 (Supp) SCC 727
(xiii) Skyline Education Institute (Pvt) Ltd Vs S.L. Vaswani and Ors reported in 2010 (2) SCC 142
(xiv) F. Hoffmann-LA Roche Ltd. & Anr. Vs. Cipla Limited (High Court of Delhi at New Delhi).
(xiv) Dr.Aloys Wobben v Yogesh Mehra reported in (2014) 15 Supreme Court Cases 360
(xv) J. Mitra & Company Private Limited Versus Assistant Controller Of Patents reported in (2008) 10 Supreme Court Cases 368) (xvi) F. Hoffman-LA Roche vs. Cipla Ltd. reported in 2009 SCC Online Del 1074.
7. We have considered the rivals submissions and the material placed before the Court, the challenge by way of this appeal is whether the learned trial Court has committed any error in rejecting injunction application Exhibit 5.
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NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined The cardinal principles to be taken into account while deciding an application for injunction are Prima facie case, Balance of Convenience and irreparable injury to succeed in injunction application, plaintiff has not only to establish prima facie case but also has to establish that the Balance of Convenience tilts in favour of the plaintiff and if the injunction as prayed for is not granted in favour of the plaintiff, plaintiff would suffer irreparable loss which cannot be compensated in terms of money.
8. All throughout it is the case of plaintiff that the diamond container is a device which holds the diamond during HPHT treatment and to get the optimum result out of the treatment given to the diamonds which are put in the device by applying accurate pressure and temperature over the diamond and to achieve such accuracy, plaintiff has invented a Diamond Holding Device for HPHT Page 45 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined Treatment for Diamond. The patent applications which were filed by plaintiff before the Controller, against which, two patents were granted vide Patent No.IN328437 and IN398302. The Suit Patent is IN398302. ISM Bakul had entered into a contract with Tenth Diamond Planet Private Limited under Contract K13/43 on 02.08.2010 under which ISM Bakul had transferred Know-How "Thermobaric Treatment (HPHT Treatment) of Diamond Monocrystals". The said Contract expired in the year 2014 and there was no further renewal or fresh agreement of Know-How between ISM Bakul and Tenth Diamond Planet Private Ltd. Defendant Nos.1, 6 and 7 under the contract titled 'the Know-How for implementation of the process crystallization of diamond single crystals of type (Ib), (IIa) and (Iib) weighing upto 3.0 carats using hydrolic pressess with a force of 25.00 Megha Neutons (MN) at pressures upto 6.5 Gpa and temperatures upto 1700°C executed contract 13-70 dated 7th June, 2022 with 'V. Bakul Page 46 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined Institute for Superhard materials NAS of Ukraine' for transfer of know-how. Defendant No.1, 6 and 7 imported various second hand equipment which were primarily use for the purpose of processing diamonds. The imported equipments were taken on lease by defendant No.3 as a sole proprietor of Pii Scientific and agreement dated 18.02.2022 between defendant No.3 and defendant Nos. 1, 6 and 7 also entered into for workshop improvisation for imported equipments for HPHT treatment of diamonds.
9. It is the rival contentions of plaintiff and defendants that the technology which is being used to alleviate the shortcomings of the conventional devices that led to damage to the diamond undergoing HPHT treatment is an invention or not. The diamond holding devices for HPHT treatment of diamond has been invented by the plaintiff after undergoing rigorous research and after investing time and huge amount of money. Whereas the Page 47 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined defendants' say is that the so called invention is just a workshop improvement on the ISM Bakul patent. When the controversy reached ISM Bakul, vide email dated 08.02.2023, ISM Bakul stated inter alia replied that it had obtained a patent title Patent No.UA79716 C2 was published on 07.10.2007 and the contract with Tenth Diamond Planet Pvt. Ltd. has come to an end 2014. It also transpires from the said reply that ISM Bakul did not have any previous relationship with the plaintiff. ISM Bakul did not consent to apply for suit patents by the plaintiffs.
10. Plaitniff has relied upon the Affidavit of Mr.Vipul Arjanbhai Dhameliya, who was an Ex-Promoter- Director of Galactica Processing Technologies Pvt. Ltd. The averments made in the Affidavit are to be tested during the Cross-examination of Mr.Vipul Arjanbhai Dhameliya. Looking to the nature of dispute and the controversy, the Affidavit of Mr.Vipulbhai Arjanbhai Dhameliya is not a Page 48 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined conclusive piece of prima facie evidence in determining the prima facie case in favour of plaintiff.
11. Admittedly, when the suit was filed, the suit patent which was published on 3 rd June, 2022, one year which is contemplated under Section 25(2) of the Patents Act for giving notice to the opposition to the Controller was not completed. Defendant No.3 had filed opposition before the Controller against the granting the suit patent. During the course of hearing, it was pointed out by learned Senior advocate Mr.Soparkar that the opposition which was filed by the defendant came to be rejected on 12.12.2023. The learned trial Court has considered the aforesaid aspect and held that no prima facie case is made out by the plaintiff. We are of the view that whether the suit patent is a novel invention and whether plaintiff has invented the diamond holding devices for HPHT treatment for diamond is available in the market or not is a question Page 49 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined to be tried during the trial and after parties are put to strict proof in respect of their rival contentions. The material which is placed before us is not sufficient to establish prima facie case in favour of plaintiff - appellant. The learned trial Court has taken into consideration the entire material placed before him and come to a conclusion that there exits no prima facie case in favour of plaintiff.
12. Moreover, the grievance voiced out by the plaintiff that defendant Nos.2 to 5 have misappropriated the confidential information and trade secrets of the plaintiff, is a matter of evidence whether the information which is claimed to be confidential by the plaintiff is in its strict sense a confidential information or not and the same cannot be gone into at the premature stage of the trial. Whether such information is freely available in the market or not can only be decided after putting the Defendants to Page 50 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined the strict proof of evidence. In our view, plaintiff has not been able to establish prima facie that the suit patent is an improved diamond holding device that has capacity to hold higher number of diamonds while ensuring uniform distribution of temperature and pressure. We have carefully gone through the decisions relied upon by learned Advocate for appellant and learned advocates for respondents. The decisions relied upon by the appellant are not applicable in absence of a prima facie case being established by the plaintiff. In the decisions which has been relied upon by the appellants. It has been observed that prima facie case was established by the plaintiff in obtaining an equitable relief of injunction. The decision relied upon the respondents are applicable to the present case on the ground of prima facie case.
13. In the present case, when the learned trial Court after considering the material placed before him has come Page 51 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024 NEUTRAL CITATION C/AO/139/2023 CAV JUDGMENT DATED: 19/07/2024 undefined to a conclusion that a plaintiff has not been able to establish prima facie case, injunction application was rejected. However, the learned trial Court has struct the balance by rightly directing the defendants to maintain accurate accounts regarding revenue generated by use of the disputed technology. Even the periodical accounts are directed to be submitted by defendants to the Court below every three months. We do not find any reason to interfere in finding of fact which has been considered by learned trial Court in detail. The observations made by the learned trial Court are based on material placed before him.
14. Thus, in the result, this Appeal fails. No order as to costs.
15. Accordingly, Civil Applications stand disposed of.
(BIREN VAISHNAV, J) (D. M. DESAI,J) MANOJ Page 52 of 52 Downloaded on : Thu Jul 25 20:35:31 IST 2024