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High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE S.J. MUKHOPADHAYA & THE HONOURABLE MR. JUSTICE F.M. IBRAHIM KALIFULLA
M/s. TVS Motor Company Limited
Versus
M/s. Bajaj Auto Limited
O.S.A.Nos.91 & 92 of 2008
Decided on: 18-05-2009
(B)Patents Act 1970(39 of 1970)-Sec.-64, 70, 104, 107-Patents-Infringements-Injunction-Principles stated.
The following principles emerge viz.,
(i) The validity of a patent can be challenged in a suit on various grounds of revocation as set out under Sections 64 and 107 of the Patents Act.
(ii) For the grant of interim injunction in a patent matter, the prima facie validity of the patent should be shown and also the prima facie infringement should be proved apart from the availability of balance of convenience and irreparable loss.
(iii) If the patent is a new one, mere challenge at the Bar would be quite sufficient for the refusal of an interim injunction as compared to a fairly old patent.
(iv)Even in IPR cases, apart from prima facie case, balance of connivence and irreparable injury, the mere registration of the patent alone would not be sufficient and the Court must look at the whole case i.e. the strength of the case of the plaintiff and the strength of the defendant.
(v) Irrespective of the examination and investigation made under Sections 12 and 13 of the Patents Act, no presumption can be drawn as to the validity of the patent and whether the application for revocation of patent is pending and when serious controversy exist as regards the existence of an invention based on prior art, the Court should be slow in granting the injunction.
(vi) There can be no infringement if the opponent has proved the same result by a different combination of different elements.
(vii) The general rule in regard to the construction of the validity of a patent is, that construction which makes it valid should be preferred rather than the construction which rendered it invalid.
(viii) Patent specification should intend to be read by a person skilled in the relevant art but their construction is for the Court and to do so it is necessary for the Court to be informed as to the meaning of the technical words and phrases and what was the common general knowledge i.e., the knowledge that the notional skilled man would have.
(ix) In construing an allegation of infringement, what is to be seen is whether the alleged infringement has taken the substance of the invention ignoring the fact as to omission of certain parts or addition of certain parts.
(x) While analysing a claimed invention, it is relevant to examine as to whether the invention requires independent thought, ingenuity and skill, producing in a distinctive form a more efficient result and there by converting a comparatively defective apparatus into a efficient and useful one which, taken as a whole, is novel.
(xi) Though the grant of patent by itself does not guarantee its validity, it should be given some weight and significance while considering the question of prima facie case and it is always open to the defendant to question the validity of the patent.
(xii) Though the claimed invention may consist of known factors, known integers i.e. if by combination of such known integers if a new use has been discovered that should be construed to have displayed inventive steps by way of ingenuity and skill. Para 69
(C)Patents Act 1970(39 of 1970)-Sec.-64, 70, 104, 107-Patents-New technical advancement or innovation however miniscule-On its patent registration to be given due recognition.
The technical advance which had not so far fallen in public domain in an industrial application and which was not obvious before its pronouncement, such technical advance though may be miniscule in nature could still be recognised as an invention and once it gets the seal of approval of the Patent Authority by way of grant of patent, the same will have to be given its due recognition. Para 74
(D)Patents Act 1970(39 of 1970)-Sec.-64, 104, 107-Patents-Infringements-Injunction-Challenge to validity of patent-Grounds.
The validity of the patent can always be challenged on various grounds for revocation as provided under Section 64 or the ground on which the allegation of infringement is to be established as provided under Section 104 and or could be defended under Section 107 of the Patents Act. Para 76
(E)Patents Act 1970(39 of 1970)-Sec.-64, 70, 104, 107-Patents-infringment-Injunction-When petition for revocation is pending, injunction is not to be granted.
When application for revocation of a patent of the Respondent is pending before the Appellate Tribunal and when such an application has been preferred on the ground of existence of a prior art, obviousness and other formidable grounds as provided under Section 64 of the Patent’s Act, the Court should not grant injunction in such cases. Para 79
(F)Patents Act 1970(39 of 1970)-Sec.-64, 70, 104, 107-Patents-infringment-Same result by different combination-No infringement.
There can be no infringement if one has produced the same results by a different combination of different elements, that is another and a different combination, and is not either an improvement or anything else of the other and that it should be wholly different. Para 80
(F)Patents Act 1970(39 of 1970)-Sec.-64, 70, 104, 107-Patents-infringment-Injunction-Mere existence of valid patent is not a ground for grant of injunction.
While on the one hand the Respondent’s patent having been granted is to be accepted prima facie as a valid one, in the same breath, it will have to be held that merely because such a valid patent is existing in favour of the Respondent, that by itself, it cannot be held that the Respondent has made out a strong prima facie case of infringement as against the Appellant. Para 84
Such a distinction as between the patented claim and the infringed product is well protected under the provisions of the Patents Act. Para 85
(F.M. Ibrahim Kalifulla, J. )
1. O.S.A. No.91 of 2008 has been filed by the Appellant as against the fair and decreetal order dated 16.02.2008, passed in O.A.No.1272 of 2007 in C.S.No.979 of 2007, in and by which, the Appellants application for an order of interim injunction restraining the Respondent herein from in any way interfering with the manufacturing and marketing of the Appellants products using Internal Combustion (IC) engine with 3 valves and 2 spark plugs pending the disposal of C.S.No.979 of 2007 was rejected.
2. O.S.A. No.92 of 2008 has also been filed by the same Appellant challenging the order dated 16.02.2008, passed in O.A.No.1357 of 2007, in C.S.No.1111 of 2007, wherein, the Respondents prayer for an ad-interim injunction restraining the Appellant herein from in any manner infringing the Respondents Patent No.195904 and/or from using the technology/invention described in the said Patent No.195904 and/or from manufacturing, marketing etc., for sale or exporting 2/3 wheelers, including the proposed 125 cc FLAME motorcycle containing an Internal Combustion engine or products which would infringe the Respondents Patent No.195904 pending disposal of C.S.No.1111 of 2007 was granted.
3. By a common order dated 16.02.2008, passed in O.A.No.1357 of 2007 in C.S.No.1111 of 2007 and O.A.No.1272 of 2007 in C.S.No.979 of 2007, the learned Judge while granting interim injunction as prayed for by the Respondent in O.A.No.1357 of 2007 in C.S.No.1111 of 2007, dismissed the application of the Appellant in O.A.No.1272 of 2007 in C.S.No.979 of 2007.
4. Both the Appellant and the Respondent are in the automobile field and are manufacturing two wheelers of their own brands. The dispute involved in this litigation pertains to the patent right of the Respondent bearing Patent No.195904 of 16.07.2002, granted by the Patent Office with its sealing dated 07.07.2005. Under the said patent, the Respondent got the exclusive right to prevent third parties from making, using, offering for sale, selling or importing for those purposes An improved internal combustion engine working on four stroke principle. The said patent also places restriction for grant of such patent to any one else for a period of 20 years from 16.07.2002.
5. In the suit in C.S.No.1111 of 2007, the Respondent has sought for a permanent injunction to restrain the Appellant from causing any infringement to Patent No.195904 and/or from using the technology / invention described in the said patent in 2/3 wheelers including the proposed 125 cc FLAME motorcycle of the Appellant. They further prayed for a preliminary decree for rendering accounts of profits of the Appellant in the sale of 125 cc FLAME motorcycle and a sum of Rs.10,50,000/-as damages for infringement of Patent No.195904. The last part of the prayer is for destruction of all the infringing copies and articles including vehicles containing engines that infringes Patent No.195904.
6. In the affidavit filed in support of O.A.No.1357 of 2007, while describing the invention, the Respondent has stated that it invented an unique technology of using two spark plugs for efficient burning of lean air fuel mixture in a small bore engine (bore size between 45 mm and 70 mm). According to the Respondent, though the use of two spark plugs in some small bore air cooled engines in racing applications in 1950s as well as in large bore engines or in high performance / racing bikes which do not run on lean air fuel mixture was known in the automobile industry, the same is not comparable to the invention of the Respondent.
7. According to the Respondent the combustion of air fuel i.e. the process of burning would be richer due to the consumption of more fuel in racing engine than the chemically correct ratio of air and fuel which would differentiate as against a lean burn engine. In sum it is claimed by the Respondent that the invention is directed to improve the combustion of lean fuel mixture in the small bore engine
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