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High Court Of Delhi
SANJAY KISHAN KAUL
BILCARE LIMITED - Appellant
Versus
AMARTARA PRIVATE LIMITED - Respondents
CS (OS) 1847 Of 2006
Decided On : 03/20/2007
PATENT - INFRINGEMENT - VALIDITY OF PATENT - NOVELTY - INVENTIVE STEP - MOSAICING - INTERIM INJUNCTION - BALANCE OF CONVENIENCE - CONTEMPT.
Fact of the Case:
The plaintiff, a registered proprietor of a patent for metallized packaging films, filed a suit for permanent injunction to restrain infringement of its patent by the defendant. The defendant contested the claim of the plaintiff by filing a written statement and a counterclaim, seeking vacation of the stay.
Finding of the Court:
The court held that the patent was not novel and did not involve an inventive step, as the individual components of the invention were known and the combination thereof was also known. The court also held that the plaintiff had failed to make out a prima facie case for the continuation of the interim injunction, as the balance of convenience was in favor of the defendant and the plaintiff could be protected by directing the defendant to keep accounts of the sales of the film in question during the pendency of the suit.
Issues: 1. Whether the patent was novel and involved an inventive step. 2. Whether the plaintiff had made out a prima facie case for the continuation of the interim injunction.
Ratio Decidendi: 1. The court held that the patent was not novel and did not involve an inventive step, as the individual components of the invention were known and the combination thereof was also known. The court relied on the principles of novelty and inventive step as laid down in various judgments, including Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511. 2. The court held that the plaintiff had failed to make out a prima facie case for the continuation of the interim injunction, as the balance of convenience was in favor of the defendant and the plaintiff could be protected by directing the defendant to keep accounts of the sales of the film in question during the pendency of the suit.
Final Decision: The court dismissed the plaintiff's application for an interim injunction and allowed the defendant's application to vacate the stay. The court also directed the defendant to keep accounts of the sales of the film in question during the pendency of the suit.
SANJAY KISHAN KAUL, J.
( 1 ) IA No. 10848/2006 (U/order 39 Rs 1 and 2 of CPC BY THE PLAINTIFF)IA No. 11160/2006 (U/order 39 R 4 of CPC BY THE DEFENDANT)IA No. 13971/2006 (U/order 39 R 2a of CPC BY THE PLAINTIFF)The claim of the plaintiff of patent violation by the defendant in respect of metallized packaging film patent of the plaintiff has given rise to the present litigation.
( 2 ) THE plaintiff is a registered proprietor of the patent bearing no. 197823 in respect of the said metallized packaging films in pursuance to a patent granted on 12. 04. 2006 as per an application of the plaintiff dated 03. 03. 2004 The patent comprises of 21 claims of which there is a parent claim and there are twenty dependent claims depending directly or indirectly on the parent claim. The description of the invention as per the parent claim is as under: "a multilayer, thermoformable, translucent food and pharmaceutical packaging film" consisting of a core layer of 100-1000 microns thickness of food grade polyvinyl chloride (PVC), devoid of plasticizers having vinyl monomer less than 1 ppm and a global migration of additives less than 60 ppm, and a metallized layer of thickness 0. 02- 2 microns provided at least on one side of the said core layer and at least 0-250 microns thick food and pharmaceutical grade polymeric layer provided at least on one side of the core layer".
( 3 ) THE essentials of the claim are stated to be a film which has a core PVC layer, a metallized layer and the third polymeric layer ranging from 0-250 microns. The film is thermoformable and translucent. The invention is stated to be well suited for the food and pharmaceutical industry as it protects the same. The plaintiff is supplying this film for packing of medicines.
( 4 ) THE plaintiff has also obtained a patent in the USA bearing no. 7144619 in respect of the said invention which was granted on 15. 12. 2006. The parent claim reads as under:
"a multi-layer thermoformable, translucent pharmaceutical and food packaging film consisting of a core layer of 100 to 1000 microns thickness of food grade polyvinyl chloride [pvc], devoid of plasticizers having vinyl monomer less than 1 ppm and a global migration of additives less than 60 ppm; and a metallized layer of thickness 0. 02 to 2 microns provided at least on one side of the said core layer and at least one to 250 microns thick food and pharmaceutical grade polymeric layer provided at least on one side of the core layer. "
( 5 ) THE difference between the two patent claims as granted in India and in the usa is stated to be the thickness of the polymeric layer which in India is specified as between 0-250 microns while in the USA it is specified as 1-250 microns.
( 6 ) THE plaintiff claims that the defendant has infringed its patent by supplying identical film to pharmaceutical industry infringing its patent. Hence, the suit for permanent injunction for restraining such infringement, rendition of accounts and consequential reliefs. The plaintiff was granted ad interim ex parte order on 01. 08. 2006. The defendant has contested the claim of the plaintiff by filing a written statement and also a counter claim. The defendant has also moved an application seeking vacation of stay.
( 7 ) LEARNED counsel for the plaintiff has constructed the edifice of his submissions on the invention made which resulted in the registration of the patent. In order to substantiate this plea, the essential ingredients for successful use of metallized packaging film were set out. This is so since it is not in dispute that metallized packaging films were already existing but the ingenuity of the patent was in the manufacture of the particular variety of the metallized packaging film. These ingredients are as under:
"i) The metal should not go into the food or drug; ii)The moisture should also not get into the food or drug; iii)The cost should not be exorbitant; iv)During the manufacture and handling of the medicinal capsules, the same should not
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