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IN THE HIGH COURT OF DELHI AT NEW DELHI
SANJEEV NARULA, J.
Sotefin SA – Appellant
Versus
Indraprastha Cancer Society And Research Center & Ors.- Respondents
CS(COMM) 327 of 2021 & I.As. 8543, 8544, 11759, 16302 of 2021, 148 of 2022
Decided on : 17-02-2022
Constitution of India, 1950 - Article 20(1) - Code of Civil Procedure, 1908 - Order XXXIX Rules 1 and 2 r/w Section 151 - Patents Act, 1970 - Sections 48 108 and 53(4) - Trademarks Act, 1999 - Section 30(3) - Society’s Registration Act, 1860 - Infringement of Patent - Permanent injunction - Seeking grant of ex-parte ad- interim injunction) - Wilful breach of contractual confidential obligations - Permanent injunction for restraining infringement of Indian Patent titled ‘Carriage for horizontal transfer of motor vehicles in automatic mechanical car park - Whether Plaintiff has established a prima facie case for infringement - Whether claim specifications are to be seen as a whole, or can the sub- elements be seen individually - Is the protection to the patent any less forceful towards the end of its term?
Finding of the Court :
Scope of invention, for which protection is claimed by a patentee. As per Section 10(4) of Act, specifications of a patent should fully and particularly describe invention. The specifications should disclose invention and support features narrated in claims - The suit patent is in respect of a ‘carriage for horizontal transfer of motor vehicles in automatic mechanical car parks’. This is also referred to, by both parties, as a ‘dolly/dollies’ - Suit patent has been existing for almost close to 20 years in India without any third-party challenge to its validity at any stage, either at a pre-grant or post-grant stage – If one over-constrains a system, extra stress is put on part. The job of hinge is to reduce pressure”. Prima facie, this indicates to Court that hinge element – Court not found in Smart Dollies - is not a substantial difference in functionality, and it achieves substantially same result in substantially same way, as claimed in suit patent - Authority of patentee or by way of a compulsory license granted under law - The rights of patentee under Section 48 of Act, includes exclusive right to prevent third parties who do not have his consent from act of making, using, offering for sale, selling or from importing a product in India - Protection available under law is no less at time when patent protection is nearing its end, than what is afforded when entire term is available. The monopoly granted to exploit invention without competition, during term of patent, would apply in equal vigor, notwithstanding fact that patent is on its last legs. Sections 48 and 108 of Act would apply throughout life of patent - Section 53(4) uses expression ‘on expiry of term of patent, subject matter covered by the suit patent shall not be entitled to any protection’ which, by necessary corollary, affords protection for entire term of patent - Defendants are restrained from making, selling, exporting or from offering for sale, importing or in any manner directly or indirectly dealing with infringing products viz. Smart Dollies/ Automatic parking system that infringes suit patent till pendency of present suit.
Result: Application allowed
JUDGMENT :
SANJEEV NARULA, J.:
[VIA VIDEO CONFERENCING]
I.A. 8543/2021 (u/Order XXXIX Rules 1 and 2 r/w Section 151 of the Code of Civil Procedure, 1908 [hereinafter “CPC”] seeking grant of ex-parte ad-interim injunction)
1. The Plaintiff, on the basis of an exclusive license for right of use and exploitation in its favour, has filed the present suit seeking permanent injunction for restraining infringement of Indian Patent 214088 dated 13th March 2002 titled ‘Carriage for the horizontal transfer of motor vehicles in automatic mechanical car parks’ [hereinafter referred to as ‘suit patent’]. This invention relates to a self-propelled carriage on wheels, for horizontal transfer of motor vehicles by lifting two or more wheels, in single or multi automatic mechanical car parks. It is commonly known as a ‘Dolly’ or a ‘Silomat Dolly’ [The Plaintiff’s product shall be hereinafter referred to as the ‘Silomat Dolly’].
2. By way of the instant application, pending adjudication of the suit, Plaintiff seeks interim injunction, restraining defendants from inter alia making or importing any product that infringes the Silomat Dolly.
BRIEF FACTS
3. The suit patent was filed on 13th March 2002 by Sotefin Patents SA (formerly known as Sotefin SA) and has been continuously used in India ever since, and is expiring on 13th March 2022. Plaintiff is a wholly-owned subsidiary of Sotefin Patents SA and was granted an exclusive license to the suit patent through various agreements with Sotefin Patents SA, beginning from 2010. The Sotefin group of companies are market leaders in the designing and manufacturing of automated car parking systems and the technology in the suit patent is protected in various countries such as the USA, European Patent, Canada, and Australia, and has not been challenged in India since grant of suit patent.
4. On 10th December 2011, Plaintiff entered into a supply contract with Simplex Projects Limited (Defendant No. 3) – a company also involved in the business of automatic parking systems – for the supply of fourteen patented ‘Silomat Dollies’ for the total amount of €6,88,000/- (Six Lakhs Eighty-Eight Thousand Euros only). They also entered into a separate agreement on the same date for supply of drawings of the automatic parking system to Defendant No. 3, which were duly transferred online, as well as sent physically sometime in 2012. Defendant No. 3 was to keep all information related to the know-how and technology provided by the Plaintiff in relation to the suit patent, including all drawings and all technical information, strictly confidential and not disclose to third parties.
5. Indraprastha Cancer Society & Research Centre (Defendant No. 1) is a not-for-profit public society under the Society’s Registration Act, 1860 and operates/manages Rajiv Gandhi Cancer Institute and Research Centre (Defendant No. 2).
6. In 2017, Defendant No. 2 floated a tender for an automatic car parking system for its site at Rohini, Delhi. In the meeting between the representatives, technical background of the Plaintiff’s product ‘Silomat Dollies’ was shared with Defendant No. 2, and they were also made aware of the existing suit patent. Since Plaintiff did not hear anything from Defendant No. 2, it did not have any means to verify the status of the parking project. Later, in November 2020, it came to Plaintiff’s knowledge that Defendant No. 2 had obtained fire safety permission from the Fire Department, Delhi for its automatic multi-parking system. On investigation, Plaintiff learnt that one Simpark Infrastructure Private Limited (Defendant No. 4) is handling the parking project at Defendant No. 2’s site. Defendant No. 3 is the largest shareholder of Defendant No. 4 and controls its operations and management.
7. On investigation, it was found that Defendant No. 1 had placed an order of supply and import of 14 “Smart Dollies” for the project at De
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