The validity of a patent and the prima facie case of infringement must be established independently of the patent grant, and the balance of convenience should be considered in granting a temporary injunction.

( 1 ) THE first appellant claims to be the inventor of patent No. 165069/10414, dated 7-7-1987 used as ultrasonic metal hardness tester (for short umht) and the second appellant is given the exclusive licence to exploit the said patent. The second appellant claims to be manufacturing and selling the said hardness tester for several years. The second respondent is stated to be an employee with the second appellant and had access to the confidential information in relation to the said hardness tester. After the second respondent ceased to be the employee of the second appellant, the second respondent attempted to utilise the said information or use the same contrary to the terms of the contract of service in developing other hardness tester. Inasmuch as the appellant could not file any suit until the patent was sealed, he applied for such sealing on 7-7-1987 and the patent was actually sealed on 23-2-1990 as provided under Section 24 of the Patents Act, 1970 (for short the act ). The respondents having infringed the said patent, the appellants filed a suit in the city civil court at Bangalore, wherein an ex parte temporary injunction was granted till the next date of hearing and respondents-1 and 2 filed a counter-claim and therefore the suit came to be transferred to this court as provided under Section 104 of the act. Cause of action having arisen in durg and coimbatore also in regard to the infringement of the patent in question by reason of the sale of umht, the appellants filed two suits one at durg and another at coimbatore and in both those suits ex parte temporary injunction had been granted on 13-12-1991 and 5-9-1991 respectively. When these orders of temporary injunction were in operation, the Supreme Court transferred on a petition by the respondents all the original suits to this court ultimately to be tried by a single judge.

( 2 ) THE appellants filed an application before the learned single judge under order 39, Rule 2-a, C. P. C. for disobedience of the injunction orders in force. An application also had been filed before the learned single judge to call for an opinion from a scientific adviser as contemplated under Section 115 of the Act, as the matter involves complicated questions of technical nature. However, before consideration of those applications, the order under appeals came to be passed vacating the injunction granted earlier.

( 3 ) THE appellants contended that once the patent is sealed exclusive right vests with a patentee and in view of Section 108 of the act injunction in favour of the patent holder in addition to damages or on account of profits should be granted. It is claimed by the appellants that they have demonstrated the difference between the patent of the appellant and also established the similarities between the product of the appellants in respect of which patent had been obtained and product of respondents-1 and 2. It is claimed that the appellant's patent is an invention and is in use.

( 4 ) ON behalf of the appellants it is contended that the learned single judge failed to consider that the second respondent was an ex-employee of the second appellant and as such was very much aware of the development of the patent in question and an equity lies in their favour for grant of temporary injunction. It is urged that the learned single judge ought to have considered the application filed under Section 115 of the act for appointment of the scientific advisor and not calling for a report from such advisor has resulted in miscarriage of justice. The learned single judge did not apply his mind to the technical aspects of the matter, which is necessary in the case of infringement to appreciate whether there is prima facie case or not. It is contended that there was no basis for the conclusion that the appellants are not manufacturing the product in relation to which the patent had been granted nor has it been sold. The learned single judge misconstrued the scope of an actio