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[Cites 5, Cited by 0]

Gujarat High Court

Hind vs Shree on 21 August, 2007

Author: Jayant Patel

Bench: Jayant Patel

  
	 
	 
	 
	 
	 
	 
	 
	 
	 
	

 
 


	 

CS/1/2007	 35/ 35	ORDER 
 
 

	

 

IN
THE HIGH COURT OF GUJARAT AT AHMEDABAD
 

 


 

CIVIL
SUITS No. 1 of 2007
 

 
 
=========================================================


 

HIND
MOSAIC AND CEMENT WORKS & 1 - Plaintiff(s)
 

Versus
 

SHREE
SAHJANAND TRADING CORPORATION & 1 - Defendant(s)
 

=========================================================
 
Appearance : 
MR
MIHIR THAKOR, SR. ADVOCATE WITH MR YJ TRIVEDI for
Plaintiff(s) : 1 - 2. 
None for Defendant(s) : 1, 
MR
PARTHASARATHY WITH MR PRANAV S TRIVEDI for Defendant(s) :
2, 
=========================================================


 
	  
	 
	  
		 
			 

CORAM
			: 
			
		
		 
			 

HONOURABLE
			MR.JUSTICE JAYANT PATEL
		
	

 

 
 


 

Date
: 21/08/2007 

 

 
ORDER
BELOW APPLICATION FOR INTERIM INJUNCTION
 

 


 

 


 
	  

The
	plaintiffs who are claiming right as patentee preferred Regular
	Civil Suit No.1432/07 in the Court of City Civil Judge at Ahmedabad
	for the relief inter alia to declare that the defendants, their
	persons, Directors, servants, employees, distributors, officers,
	etc. are not entitled to manufacture, sell, use or offer for sale
	the impugned products, pipes and fittings produced with the list,
	manufactured by the defendants which as per the plaintiffs is
	infringement of the plaintiffs' patent registered under No. 203004
	and the plaintiffs have also prayed for a permanent injunction
	against the defendants, their persons, Directors, agents and
	distributors, stockists, servants, employees, officers, etc. based
	on the very patent.  It is also prayed in the suit that the
	defendants be directed to give the true and correct accounts of the
	products manufactured and marketed by the defendants and it is
	further prayed to order the defendants to pay the amount of profit
	earned by them with interest @ 18% from the date of suit till
	realisation.
	 


	  

The
	plaintiffs have also prayed to direct the defendants to handover the
	impugned product, advertisement material, sales promotion material,
	etc.  In the said suit, the interim application has been preferred
	by the plaintiffs seeking temporary injunction restraining the
	defendants, their persons and Directors, agents, distributors,
	stockists, employees, officers, etc. from manufacturing, selling,
	using and offering for sale the impugned product based on the
	infringement of the plaintiffs' patent.  
	
	 


	  

The
	learned City Civil Judge, Ahmedabad, on the date of institution of
	the Suit, i.e. 02.07.2007, passed the order below Notice of Motion
	by way of a temporary ex parte injunction as prayed by the
	plaintiff.  It appears that simultaneously, the application was also
	made by the plaintiff to appoint Court Commissioner for making
	inventory of the factory premises etc. of the defendant below which
	the learned City Civil Judge also passed the order on the very day
	for appointment of the Commissioner as prayed.
	 


	  

The
	Commissioner did make the inventory.  It appears that as per the
	plaintiffs, the defendant No.2 is the manufacturing unit against
	whom, principally, there is allegation of infringement of the patent
	and defendant No.1 was described as the stockist/agent/authorised
	representative of defendant No.2.  The Commissioner did submit the
	report and as per the report, not a single product of the defendant
	No.2 is found to be in the inventory and as stated by defendant No.1
	before the Commissioner, the defendant No.2 had contacted for sale
	of the product and therefore, advertisement was issued, but there
	was no response and no product of defendant No.2 is either brought
	or sold by defendant No.1.  
	
	 


	  

In
	response to the process issued below application for temporary
	injunction, the defendant No.2 submitted reply by resisting the
	application for temporary injunction including on the ground of
	jurisdiction. However, the pertinent aspect is that simultaneously,
	the counter claim is also filed by defendant No.2 seeking revocation
	of the patent No. 203004 (hereinafter referred to as ýSthe patentýý
	for short).  In view of the counter claim seeking revocation of the
	patent, the suit is transferred to this Court in view of Section 104
	of the Patent Act vide order dated 20.07.2007 of the learned City
	Civil Judge and as the ad interim injunction was granted by the
	learned City Civil Judge, the same continued pending the hearing of
	the application for temporary injunction by this Court.
	 

 
	
	  

I
	have heard Mr. M.J. Thakor, learned Senior Advocate appearing with
	Mr. Trivedi for the plaintiff and Mr. Parthasarathy with Mr. Pranav
	S. Trivedi, the learned advocates appearing for the defendant No.2.
	 


	  

The
	scope of judicial scrutiny in an interim application for temporary
	injunction in a suit including as that of seeking rights as patentee
	hardly requires to be stated.  The principles are being made
	applicable for grant of temporary injunction as that of prima facie
	case, balance of convenience, and irreparable injury would apply
	even at the time when interim application for temporary injunction
	is to be decided in a suit seeking right based on the patent.  Since
	in any case, the temporary injunction itself is an equitable relief,
	the principles of equity and good conscience, i.e. as that of
	whether the plaintiffs have come with clean hands or bonafide
	attempt to seek the rights under law etc. would also be applicable
	to the exercise of powers by this Court while granting temporary
	injunction.  At this stage, the reference may be made to the
	decision of the Delhi High Court in the case of Bilcare Ltd.
	Vs. Supreme Industries Ltd. decided on 20th March, 2007
	in 2007(34) PTC 444(Delhi) wherein, based on the English
	Court Judgement in patent cases, such principles are reiterated. 
	
	 


	  

Therefore,
	the first aspect that deserves to be considered is as to whether
	there is a prima facie case for a valid patent or is it a prima
	facie case for revocation of such patent?  To examine the aforesaid
	aspects, the factual background deserves to be stated and the same
	appears to be as under.

 

 

 
	  

It
	appears that earlier, there were two patent registered, one in U.K.
	on September, 1955, where threads in the pipe was registered as a
	patent.  The essential function of the threads in the pipe was to
	bind and/or joint two piece of pipes into one with strength.
	Thereafter, on 12.04.1966, another patent is registered in USA for
	coupling in pipes having wire locking system.  Each wire lock is to
	join, may be upper or lower piece of the pipe with the coupling.  In
	the year 1968, for threads in the pipe, there is ISI specification
	being IS4694, 1968, providing basic dimensions for square threads as
	against the uneven or rounded threads. Such square threads will give
	more strength to the joint and such effect is obvious to a person
	skilled in the art.  In the year 1985, there is another ISI
	specification being IS5382, 1985, for rubber sealing rings for gas
	means, water means and sewer pipelines.  Therefore, rubber sealing
	rings in a pipeline is already provided by ISI specification and
	known to the public at large. On 05.04.1988, another patent is
	registered in USA for a coupling for a stainless
	steel well casing including the squared thread in order to
	lock two pipes, may be upper or lower in rigid relationship.  In
	1999, a product is introduced in the market being CERTA-LOK Drop
	Pipe in which there is no threading between two pipes or coupling,
	but there is groove and spline design which allows the upper and
	lower pipe to rotate for assembling and dissembling.  The
	said product also provided that the screw may be applied half to one
	full turn or only snug so as to tighten  and reduce the
	movement, but in such application of the screw, over tightening was
	to result into leakage or coupling failure.  The coupling is a part
	which joints upper and lower pipe.  The aforesaid was and is in
	existence.
	 


	  

According
	to the plaintiff, the field of invention is as under:

 

	
 


ýSA
threaded PVC coupling and pipe joint to join the pipes in water
discharge piping system and more particularly to the locking system
used in the threaded PVC pipe joint couplings with PVC pipes used for
submersible pump applications in bore wells to connect and support
the submersible pumps and also to act as delivery pipes to draw water
from underground for drinking and irrigation purposesýý
 

		
 
	 

Therefore,
	the only aspect to be considered is as to whether such can be said
	as invention for which the patent can be granted as per the Patent
	Act, 1970, (hereinafter referred to as ýSthe Actýý) or not?
	 


	  

The
	legislative provisions which has the relevance and the perusal
	thereof shows as under:
	 


	 

Section
	2(j) reads as under:

 

 


 


ýSýSinventionýý
means a new product or process involving an inventive step and
capable of industrial applicationýý.
 

	
 
	 

Therefore,
	invention can be treated of a new product, if such involves an
	inventive step and capable of industrial application. Section 2(ja)
	provides for inventive steps which reads as under:

 

 


 
	 

ýSýýinventive
	stepýý 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 artýý
	 


	  

Therefore,
	inventive steps must contain a feature of invention which involves
	technical advance as compared to the existing knowledge or a
	technical advance having economic significance, but in both cases,
	the invention should not be such which would be obvious to a person
	skilled in the art.  To say in other words, it should be
	extraordinary amongst the persons who are skilled in such field and
	should not be ordinary to such person applying the skill in such
	field.  The meaning of the word ýSordinaryýý or the word ýSobviousýý
	is not to be judged from the standard of skill of an ordinary
	citizen or an ordinary person, but is to be judged from the standard
	of the knowledge of the person who is skilled or regularly dealing
	with such art.
	 


	  

All
	inventions are not patentable as per the Act prevailing in India.
	Inventions not patentable are provided under Chapter II of the Act. 
	The various things are not inventions within the meaning of this
	Act, but relevat in the present case is Section 3(f) which reads as
	under:  
	

 


ýSWhat
are not inventions:
 

	(a)...
 

	(b)...
 

	(c)...
 

	(d)...
 

	(e)...
 


   (f)	the
mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known wayýý
 

 


 
	  

Therefore,
	as per the provisions of the Act, if Sections 2(j) & 2(ja) are
	read with Section 3(f), mere arrangement or rearrangement of known
	devices, each functioning independently of one another in a known
	way is not to be treated as an invention for grant of patent.  
	
	 


	  

It
	appears that the alleged product of the plaintiff is a combination
	which can be classified as arrangement or rearrangement of that
	known devices.  The thread in the pipe as well as in the coupling
	were known devices prior to the application for patent.  The rubber
	sealing in a coupling was also a known device. The wire locking
	system was also the known device.  Therefore, the contention is that
	the combination of (1) thread;(2)rubber seal;and(3) wire locking
	system in a coupling as per the plaintiffs can be described as
	invention, whereas, as per the defendant No.2, it cannot be
	described as invention. Even if the contention of the plaintiffs as
	well that of the defendant No.2 are considered, the fact remains
	that the product of the plaintiffs is a combination of a known
	devices.  The functioning of the threads is to joint two pipes
	together which is a known device.  Even if the claim is considered
	further to the extent of squared threads, then also, squared threads
	were already a known device as per the above referred ISI
	specification of 1968.  Sealing of rubber ring in a pipe or coupling
	was also a known device as per the above referred ISI specification
	of 1985.  The wire locking system was also a known device as per
	1988 US Patent. CERTA-LOK was also a known device.  Therefore, the
	alleged invention of the plaintiffs appears to be a combination of
	known device by arrangement of square threads, rubber seal and the
	wire locking.  
	
	 


	  

The
	learned counsel for the plaintiffs contended that such a combination
	was not obvious to the persons skilled in the art and had it been
	such obvious, there would have been a product available in the
	market prior to the application made by the plaintiffs for
	registration of the patent and therefore, he contended that it is an
	inventive step which is not obvious to the person skilled in the
	said art.  
	
	 


	  

As
	such, on conjoint reading of Section 2(j) and 2(ja) with Section
	3(f) of the Act, it appears that Section 3 carves out an exception
	to Section 2(j) read with Section 2(j)(a) of the Act. Therefore,
	even if the contention is considered for the sake of examination,
	all inventions are not patentable if such invention falls in the
	category of classes as defined in Section 3 and more particularly in
	the present case, Section 3(f). Therefore, even if such invention is
	not obvious to the persons skilled in the art but is a mere
	arrangement or rearrangement of a known device, each functioning
	independently, it would not be an invention which is patentable,
	since, such inventions would fall in the category of exceptions or
	are expressly not to be treated as invention for grant of patent by
	the legislature.  Therefore, the mere ground of no such combined
	product found or such combination not found in the market uptil now
	is no sufficient ground to consider the product of the plaintiffs as
	invention for which the patent can be granted.
	 


	  

The
	learned counsel for the plaintiffs further contended that it is not
	a mere combination of a known device, but is a combined effect of a
	product where various devices are functioning conjointly.  Per
	contra, the learned counsel for defendant No.2 contended that there
	is no conjoint functioning of the known devices in a coupling.  It
	was also further contended that if a combination is to create a
	synergistic effect or synergistic result, then only such combination
	would be outside the scope of Section 3(f), and therefore invention,
	for which the patent can be granted. It was submitted by the learned
	counsel for the plaintiffs that it does create a synergistic effect
	or result, whereas the learned counsel for the defendant No.2
	contended that it does not create synergistic effect or result and
	therefore, not an invention which is patentable.
	 


	  

Before
	the aforesaid contentions are examined, certain reference to the
	case laws would be appropriate.
	 


	  

The
	learned counsel for the plaintiff has relied upon the decision of
	the Bombay High Court in the case of Lallubhai Chakubhai
	Jariwala Vs. Chimanlal Chunilal & Co. reported in AIR 1936
	Bombay 99, which in any case was prior to enactment of the
	present Act.  Further, in the said decision, at page 105, it has
	been observed that ýSa mere collocation of two or more things
	however without some exercise of the inventive faculty in combining
	them is not subject-matter for a patentýý.    
	
	 

 
	
	 

In
	case of an application for a patent by I.G.Farben Industries
	decided on 26.01.1929 reported at XLVI RPC page 271, it was
	found by the English Court that ýSthe known vulcanizing process
	applied to the known material products was a better tyre than before
	and further, on page 273, at line No.35, it was specifically
	observed that ýSphysical properties  were entirely different and
	applicants were the first to discover that by vulcanising the
	product they could produce in substance an elasticity which made it
	even more suitable than ordinary rubber for the manufacture of
	tyresýý.
	 

 
	
	 

In
	the case of Albert Wood and Amcolite Ld. v. Gowshall Ld.
	reported at LIV page 37, the Court of Appeal of UK recorded
	on page 39 at line No.35 that ýSeven if it is assumed that the
	existence of Swan glass was a matter of common knowledge, the Bench
	found that we do not think that it can be said in a relevant sense
	to be obvious to use it in a reverse way to that indicated by its
	inventorýý.
	 

  
	
	 

In
	the case of Non-Drip Measure Coy.,Ld. V. Stranger's Ld., &
	Ors. Reported at LX RPC page 135, the House of Lords in the
	said decision at page 141 line No.45 onwards found that ýSany
	workman told to adapt Newland to upward pressure would commence by
	discarding one of the leading features of the device. If he did he
	would not be adopting existing device; he would be making another
	one.ýý
	 


	
	 


	In
	the matter of application by James Yate Johnson for a patent
	reported at LII RPC page 61, it was recorded by the Patent
	Appeal Tribunal of U.K. in the said decision at page 64 at line
	No.10 onwards that ýSit is a new way of stablising the potential
	difference at the two ends and the arc and it is in my opinion, a
	new method of attaining the desired stabilityýý.  It was found
	by the Tribunal that ýSit is bringing together of an alternating
	current rectifier and an arc is to control its own supply from the
	grid of the rectifierýý.   
	
	 


	
	 


	In
	the case of Cleveland Graphite Broze Coy. & Ors. V.
	Glacier Metal Coy. Ld. reported at LXVIL RPC page 149.  It
	was recorded at page 156 above line 5 by the House of Lords of U.K.
	that ýSthere was improvement in liners and there was radical
	departure from all accepted standardsýý.  In the said decision,
	the phrases used by the witness above line No.25 were ýSa new
	conceptionýý, ýSa Godsendýý and a ýSradicalýý or a
	ýSrevolutionaryýý departure.  
	
	 


	
	 


	In
	the case of Martin & Biro Swan Ld. V. H. Millwood Ld.
	reported in 1956 RPC (73 RPC), page 125, it was observed by
	the House of Lords of U.K. in the said decision at page 136, at line
	No.25 that ýSin this combination of integers there is at least
	one which by itself was not obviousýý.  
	
	 


	
	 


	Therefore,
	the aforesaid decisions relied upon by the learned counsel for the
	plaintiffs goes to show that in the facts of that case, the English
	Courts found that such combination or product for which the patent
	was granted was a novelty or was not obvious to the persons in the
	skill.
	 


	
	 

In
	the case of KSR International Co. Vs. Teleflex Inc.,
	decided by the U.S. Supreme Court on April 30,  2007, at page 550,
	US__2007, after taking into consideration various earlier 
	U.S. Supreme Court decisions on the law of patent, it was observed
	inter alia as under:

 

 


 


ýSThe
principles underlying these cases are instructive when the question
is whether a patent claiming the combination of elements of prior art
is obvious.  When a work is available in one field of endeavor,
design incentives and other market forces can prompt variation of it,
either in the same field or a different one.   If a person of
ordinary skill can implement a predictable variation, likely bars its
patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is
beyond his or her skill.(Emphasis supplied) Sakraida and
Andersoný"s-Black Rock are illustrative-a court must ask whether the
improvement is more than the predictable use of prior art elements
according to their established functions. Following these principles
may be more difficult in other cases than it is here because the
claimed subject matter may involve more than the simple substitution
of one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement.  Often,
it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.ýý
 


 
 


 


The
U.S. Supreme Court further observed at page 23, last para as under:
 


ýSWe
build and create by bringing to the tangible and palpable reality
around us new works based on instinct, simple logic, ordinary
inferences, extraordinary ideas, and sometimes even genius. These
advances, once part of our shared knowledge, define a new threshold
from which innovation starts once more.   And as progress beginning
from higher levels of achievements is expected in the normal course,
the results of ordinary innovation are not the subject of exclusive
rights under the patent laws. Where it otherwise patents might
stifle, rather than promote the progress of useful arts.ýý(Emphasis
supplied)
 


 
 


 


And
ultimately, it was found in the said case that mounting a modular
sensor on a fixed pivot point of the Asano pedal was a design step
well within the grasp of a person of ordinary skill in the relevant
art and therefore, the summary rejection Judgement of the District
Court upon a patent was confirmed.
 


 
 


 


In
the case of Sabaf Spa Vs. MFI Furniture Centres Ltd. reported
at 205 RPC page 10, House of Lords of UK at para 18 while
examining the combination of features, the statement of principles
inter alia observed as under as under:
 


	
 


ýSIn
other words, the interactions of individual features, must produce a
synergistic effect.  If no such synergistic effect exists, there is
no more than a mere aggregation of features.ýý
 

 


 


In
the case of Peterson Portable Sawing Systems Ltd.& Anr. V.
Rex Cameron Lucas reported at 2006 NZSC page 20, the Supreme
Court New Zealand has reaffirmed the principles as adopted in England
for considering the combination as patent if it creates synergistic
effect or result.
 

 


 
	  

If
	the matter is examined in light of the aforesaid case laws with the
	facts of the present case, it does appear that the claim of the
	plaintiffs comprises of the combined effect of a square thread,
	rubber seal, and a wire lock in a coupling pipe joint.  The
	functions of squared thread was known and is also specified by ISI
	specification as back as in the year 1968.  The function of square
	thread in a pipe or coupling is to joint one another.  There is no
	additional function made in the alleged invention of the plaintiffs.
	 Further, the rubber sealing in a coupling of a pipe is also known
	as per the ISI specification as back as in the year 1985.  The
	function of rubber seal is to protect against leakage and sealing of
	the gap and there is no addition made in the alleged invention.  The
	shutter lock system is also known as back as in the year 1999 with
	the plastic wire.  The lock is to retain the pipe with which the
	coupling is connected. Whether used by a plastic wire or metallic
	wire does not add to its functioning.  It functions as lock. 
	Therefore, in the alleged invention of the plaintiffs, no additional
	functioning is added to the wire lock system.  Further, it appears
	that though combined devices known prior to the application of the
	plaintiffs are included in one coupling by way of combination, there
	is no element of interconnected functioning of such device.  Each
	device can exist independently in the coupling and would function as
	per the normal expectations in absence of other device, may be as
	that of square thread or rubber seal or a wire lock.  As there is no
	interconnected or interrelated functioning to each device in the
	alleged invention of the plaintiffs, it cannot be said that it
	creates any synergistic effect. If the meaning of the word
	ýSsynergicýý and ýSsynergistýý and  is to be considered, it
	reads as under:
	 

Synergic:
	Acting or working together, as when several muscles cooperate in the
	performance of a movement.
	 


	 

Synergist:
	A medicament which supplements the action of another, often to such
	an extent that the combined action is greater than the sum of
	effects of the two drugs independently administered. 
	

 

 


 

 


 
	  

As
	the muscles in the body work in an interrelated, interconnected and
	interwoven manner, so could be the functioning in a combination to
	equate the same as outside the category of Section 3(f) of the Act
	and to be treated as invention-patentable.  Therefore, in view of
	the aforesaid, it appears that the invention for which the patent is
	granted, would fall in the category of Section 3(f) being exception
	to Section 2(j) and 2(ja) of the Act, and therefore, the invention
	not patentable as per the provisions of the Act and hence, liable to
	be revoked. 
	
	 


	  

It
	may also be mentioned that the plaintiff in the affidavit has relied
	upon Patent Cooperation Treaty(PCT) report of ISA/US Commissioner of
	Patents Alexanderia, Virginia, in response to plaintiffs'
	application No. PCT/IN 04/000147 for contending that as per the said
	PCT report, as it is a novelty and inventive step since as per the
	plaintiff, all claims narrated by the plaintiff from 1 to 12 are
	accepted being novelty and being inventive steps.  The plaintiff in
	the said affidavit has not even whispered of any application made
	for similar PCT report to any other country of the world. It is only
	when the learned counsel for the defendant No.2 during the course of
	hearing after searching in the website of WIPO, placed the report of
	another PCT of Austrian Patent office at Vienna in response to the
	application of the plaintiff No. PCT/IN2004/000147(both common
	number and the common date, appears to be one made to PCT at US,
	Virginia and another to PCT at Austria, Vienna) that the claim of
	the plaintiffs is not a novelty nor inventive step, the plaintiffs
	admitted during the course of the hearing before the Court through
	the learned counsel Mr. Thakor that the application was made to PCT,
	Austria.  However, the submission was made that the report is not
	received by the plaintiffs. 
	
	  

Leaving
	aside the aspects of the conduct on the part of the plaintiffs,
	which may be dealt with hereinafter in the subsequent paragraph
	appropriately. It deserves to be recorded that the opinion of PCT,
	either at US, Virginia or Austria, Vienna, is not binding to this
	Court.  Further, it is not known as to whether Section 3(f) of the
	Act, which exist in the statute book and law prevailing in our
	country is considered or not.  In any event, one PCT report of one
	country Austria, Vienna found as not a novelty or not an invention
	and the other PCT report of US, Virginia found a novelty or an
	invention and therefore, the reliance placed by the plaintiffs upon
	the only report of PCT, US, Virginia cannot be accepted, and rather
	can be said as misleading to the Court by giving only one-sided
	version and suppressing the other relevant circumstance of PCT
	report of Austria, Vienna.
	 


	  

Therefore,
	in view of the above observations, there is no prima facie case at
	all on merit for sustaining the patent, but on the contrary, the
	prima facie case is for revocation of the patent, since the
	legislature expressly has barred such invention to be made as
	patentable.
	 


	  

Even
	on the aspects of equitable consideration, as observed earlier, the
	PCT report of US, Virginia, which was pressed in service as an
	expert opinion, is a part truth put forward by the plaintiffs by
	suppressing the other part of the truth which was against the
	plaintiffs.  Such conduct on the part of the plaintiffs can
	disentitle the plaintiffs to seek an equitable relief of temporary
	injunction.
	 


	  

Further,
	in the plaint, at para 11, vide Sr. No.2, in describing the
	inventive steps, it is mentioned at last four line as under:

 

 


 


ýSThese
threads have been designed for the first time in the world by the
plaintiff company.ýý
 


 


 

 


 
	  

As
	recorded hereinabove, square type of threads was already in
	existence as back as in the year 1968 as per ISI specification.  The
	dimension as such is not specifically claimed in the patent, but in
	any case, the dimensions would not substantially and materially
	alter the functioning of a device of a square thread.  The said
	statement made is contrary to known existing devices of square
	thread as specified by ISI specification as back as in the year
	1968. So is the case in item No.3.  In the last line, the statement
	made is that:

 

	
 

ýSThese
types of combination rings have been designed for the first time by
the plaintiffýS
 

 


 
	 

Whereas,
	such combination rings were already in existence as per ISI
	specification of rubber seal as back as in the year 1985. 
	
	 


	  

The
	learned counsel for the defendant No.2 appears to be right in
	contending that the aforesaid two statements as claimed by the
	plaintiffs that ýSfor the first time innovated in the worldýý are
	not only misleading, but false and it may have misled the Court of
	the learned City Civil Judge to grant ex parte order.
	 


	  

The
	aforesaid conduct on the part of the plaintiffs would go against the
	plaintiffs to disentitle them to seek an equitable relief of
	temporary injunction.
	 


	  

In
	absence of any prima facie case in favour of the plaintiffs and the
	existence of prima facie case for revocation of the patent would
	clearly go to show that a legal irreparable injury would be to
	defendant No.2 if the temporary injunction is granted.  If there is
	no lawful right with the plaintiffs to sustain the patent and
	consequently the infringement, any injunction continued or granted
	would cause irreparable injury to the person facing the injunction,
	i.e. the defendant No.2 herein.  The ex parte injunction granted by
	the learned City Civil Judge is to stop the production and further
	action of the defendant No.2 for the alleged patented product. 
	Therefore, if the suit is subsequently dismissed or petition is
	revoked, the loss caused including that of by putting the production
	activity to a total grinding halt by the temporary injunction would
	create an irreparable injury to the defendant No.2 and therefore,
	keeping in view the principles of irreparable injury, it is a case
	of not granting an injunction against the defendant No.2.
	 


	  

Even
	on the aspects of balance of convenience, the claim made by the
	defendant No.2, is that it is manufacturing the product since more
	than two years. Therefore, if the temporary injunction granted is
	continued, the manufacturing activity of the defendant No.2 shall be
	put to grinding halt though there being no prima face case on merits
	with the plaintiffs. Further, even if the plaintiffs succeed in the
	suit, ultimately, the second relief of damage and the profit by
	compensating in terms of money can be granted. Therefore, the
	principles of balance of convenience are also against the plaintiffs
	for not continuing with the ex parte injunction and/or for grant of
	temporary injunction as prayed.
	 


	  

Much
	has been argued by the learned counsel for the defendant No.2 on the
	aspects of jurisdiction alleging that the defendant No.1 is the
	person of the plaintiffs and not at all an agent or authorized agent
	of defendant No.2. It was also submitted that with a view to invoke
	the jurisdiction of the City Civil Court at Ahmedabad, the defendant
	No.1 is projected and the advertisement is published though the
	report of the Commissioner not at all supports the case of the
	plaintiffs.  Further, the suit is filed on 02.07.2007.  The alleged 
	advertisement is dated 05.06.2007 on the name of the person who is
	not the authorized agent or representative of the defendant No.2 and
	the alleged bill produced for so called purchase of the pipe
	fittings is dated 03.07.2007, i.e. of the next date to the date of
	filing of the suit and in the bill, there is no description as to
	whether the product which was being manufactured and marketed by the
	defendant No.2 is sold or not.  Therefore, it was submitted on
	behalf of the defendant No.2 that the statement made in the plaint
	and in the rejoinder are only to attract the jurisdiction in
	Gujarat, though the plaintiff No.2 as well as defendant No.2 both
	are working at Banglore, and therefore, prima facie creates doubt on
	the bonafide conduct of the plaintiffs.
	 


	  

Whereas
	on behalf of the plaintiffs, it was asserted that the advertisement
	was given by the defendant No.2, not only in the local newspaper but
	also in the magazine and as the infringement was found reported in
	Ahmedabad, the jurisdiction is rightly invoked.  It was also
	submitted that the defendant No.2 has surrendered to the
	jurisdiction of this Court by filing the counter claim for
	revocation of the patent and therefore, now it does not lie in the
	mouth of the defendant No.2 to contend that there is no jurisdiction
	or the jurisdiction is wrongly invoked.  It was submitted that the
	defendant No.2 is debarred or estopped from raising the contention
	on the point of jurisdiction.
	 


	  

In
	my view, even if it is considered for the sake of examination that
	invoking of the jurisdiction of the City Civil Court at Ahmedabad at
	the first instance by the plaintiffs was doubtful, the law on the
	subject is that for invoking the jurisdiction of the Court,
	averments in the plaint are to be considered at the initial stage,
	unless established on facts otherwise.  Further, the defendant No.2
	has surrendered to the jurisdiction by filing counter claim for
	revocation of the patent. Therefore, in view of the present
	circumstances, it is not a case of rejection of the application on
	the ground that the Court which granted ex parte injunction or this
	court has no jurisdiction to entertain the suit or the interim
	application for temporary injunction therein.
	 


	  

In
	view of the aforesaid observations and discussions, even if on the
	point of jurisdiction, the contention of the plaintiffs is accepted
	on the aspects of temporary injunction, as there is no prima facie
	case for sustaining of the patent and as there is a prima facie case
	for revocation of the patent, and as the principles of irreparable
	injury and balance of convenience are against the plaintiffs and in
	favour of the defendant No.2, the ex parte injunction granted
	deserves to be vacated and as there is no case for temporary
	injunction as prayed, the application for interim injunction is
	vacated.  Hence, ordered accordingly. 
	
	 


	  

However,
	it is clarified that all rights and contentions of both the sides at
	the time of final disposal of the suit or counter claim, as the case
	may be, shall remain open on the basis of evidence as may be
	available on record before this Court at the time of final disposal
	of the suit or the counter claim as the case may be and the
	observations made in the present order are prima facie to decide
	application for temporary injunction only.

 

							
  (JAYANT PATEL, J.)
 

 


 


ORAL
ORDER 

21.08.2007 After the pronouncement of the order, Mr. Thakor, learned counsel for the plaintiff prayed that the operation of the ex-parte order be continued for some time, so as to enable the plaintiffs to approach before higher forum.

Considering the facts and circumstances and more particularly in view of the reasons recorded in the order, the said request is declined.

(JAYANT PATEL, J.) *bjoy