* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) Nos.1989/2010 & 1993/2010
Date of pronouncement: 4th November, 2011
TEN XC WIRELESS INC & ANR ..... Plaintiffs Through : Mr. Saikrishna Rajagopal and
Mr. J. Sai Deepak, Advs.
MOBI ANTENNA TECHNOLOGIES
(SHENZHEN) CO LTD ..... Defendant Through : Mr. Amit Sibal,
Mr. Nitin Masilamani and
Mr. Tamal Mandal, Advs. for D-1.
Mr.Shailesh Kapoor and
Mr. Afsar Nabi, Advs. for D-3.
TENXC WIRELESS INC & ANR ..... Plaintiffs Through : Mr. Saikrishna Rajagopal and
Mr. J. Sai Deepak, Advs.
ANDREW COMM SCOPE INC ..... Defendant Through : Mr. Sudhir Chandra, Sr. Adv.
Ms. Gayatri Roy,
Mr. Kshitij Sharma and
Mr. N. Lodha, Advs. for D-1.
Mr. Shailesh Kapoor and
Mr. Afsar Nabi, Advs. for D-3.
HON'BLE MR. JUSTICE J.R. MIDHA
1. Whether Reporters of Local Papers YES may be allowed to see the judgment?
2. To be referred to the Reporter or not? YES
3. Whether the judgment should be YES reported in the Digest?
CS(OS) Nos.1989/2010 & 1993/2010 Page 1 of 78 JUDGMENT
I.A.No.13005/2010 under Order XXXIX Rules 1 and 2 and I.A.No.16457/2010 under Order XXXIX Rule 4 in CS(OS) No.1989/2010
I.A.No.13017/2010 under Order XXXIX Rules 1 and 2 and I.A.No.15387/2010 under Order XXXIX Rule 4 in CS(OS) No.1993/2010
1. Background Facts
1.1 The plaintiffs have instituted two suits for permanent
injunction, delivery up, damages and rendition of accounts to
restrain the defendants from manufacturing, distributing, selling,
offering for sale, importing or in any other manner dealing with
the infringing device/product violative of plaintiffs‟ registered
Patent No. IN 240893 for the invention titled "Asymmetrical
Beams for Spectrum Efficiency". The plaintiffs are seeking
interim injunction against the defendants in IA No.13005/2010
and IA No.13017/2010 under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure.
1.2 Vide ex parte interim order dated 4th October, 2010, this
Court impleaded Reliance Communications and Tata Teleservices
Limited as defendants No.2 and 3 and directed them to maintain
status quo with respect to the installation of Bi-Sector Array
Antenna by defendant No.1.
1.3 Defendant No.1 in CS(OS)No.1993/2010 preferred FAO(OS)
No.660/2010 against the ex-parte order dated 4th October, 2010,
which was disposed of by the Division Bench on 15th November,
CS(OS) Nos.1989/2010 & 1993/2010 Page 2 of 78 2010 by remanding the matter back to this Court. Defendant
No.1 in CS(OS)No.1989/2010 preferred FAO(OS)Nos.680-81/2010
which was dismissed as withdrawn on 1st December, 2010 in
terms of the Division Bench order dated 15th November, 2010 in
1.4 Defendant No.1 in CS(OS) No.1989/2010 filed IA
No.16457/2010 and defendant No.1 in CS(OS) No.1993/2010 filed
IA No.15387/2010 under Order XXXIX Rule 4 of the Code of Civil
Procedure for vacation of ex-parte interim order dated 4th
1.5 On 30th November, 2010, this Court suspended/vacated the
ex-parte order dated 4th October, 2010 against which the
plaintiffs preferred appeal bearing FAO No.697/2010 before the
1.6 Vide order dated 22nd December, 2010, the Division Bench
set aside the order dated 30th November, 2010 and remanded the
matter back to this Court.
1.7 Defendant No.1 in CS(OS) No.1993/2010 preferred a Special
Leave Petition before the Supreme Court against the order of the
1.8 Vide order dated 7th January, 2011, the Special Leave
Petition was disposed of with a direction to this Court to
expeditiously take up the applications under Order XXXIX Rules 1,
2 and 4 of the Code of Civil Procedure.
CS(OS) Nos.1989/2010 & 1993/2010 Page 3 of 78 1.9 Defendant No.1 in CS(OS) No.1993/2010 has filed the
counter-claim for revocation of patent No. IN 240893 under
Section 64(1)(d),(e),(f),(h),(i),(j),(k) and (m) of the Patents Act,
1970 along with the written statement.
2. Plaintiffs‟ Case
2.1 Plaintiff No.1 is a Company incorporated under the laws of
the State of Ontario, Canada, and plaintiff No.2 is the wholly
owned subsidiary of plaintiff No.1.
2.2 Plaintiff No.1 is the owner of the patent bearing No.IN
240893 titled as "Asymmetrical Beams for Spectrum Efficiency",
which is subject matter of both these suits. Plaintiff No.1 is
manufacturer of "Bi-Sector Array Antenna".
2.3 On 17th March, 2006, plaintiff No.1 filed an application for
grant of patent with the Canadian Patent Office.
2.4 On 19th March, 2007, plaintiff No.1 filed the PCT (Patent
Cooperation Treaty) application with the International Bureau of
World Intellectual Property Organization (WIPO).
2.5 On 5th August, 2008, the plaintiffs submitted an application
for grant of patent before the Indian Patent Office.
2.6 On 9th June, 2010, the Indian Patent Office granted the
patent bearing No.IN 240893 to plaintiff No.1 for the invention
titled "Asymmetrical Beams for Spectrum Efficiency".
2.7 On 24th September, 2010, the plaintiffs instituted CS(OS)
No.1989/2010 and CS(OS) No.1993/2010 before this Court.
2.8 The plaintiffs‟ invention relates to wireless communication
CS(OS) Nos.1989/2010 & 1993/2010 Page 4 of 78 systems, in particular, it relates to the improved use of available
spectrum using an antenna which enhances subscriber‟s capacity
by accepting all sites. The plaintiffs have explained their
innovation in paragraphs 9 and 10 of the plaint, which are
"THE PATENTED INVENTION
9. It is respectfully submitted that the invention protected by the patent of the Plaintiff No.1 does away with a significant number of limitations and disadvantages associated with all the above technologies. It is further submitted that the invention protected by the patent of the Plaintiff No.1 is its flagship product marketed under the name "Bi-Sector Array Antenna" and is technically referred to as a "split-sector antenna". The distinguishing feature of the Bi-Sector Array Antenna is that it emits an optimized asymmetric beam pattern, as opposed to the conventional symmetric beam pattern of the antennae in the prior art. The asymmetric beam pattern of the invention radically alters the conventional model of symmetric sectorization.
10. Specifically, it is submitted that the inventive step of the Plaintiff No.1 is a technology by which a single sector, which was earlier covered by a single directional antenna emitting a single symmetric beam, is now split into a number of equivalent sub-sectors by an equal number of beams being emitted by a single "split-sector antenna", with atleast one of the sub- sectors so created being an asymmetric sector created by atleast one asymmetric beam emitted by the split-sector antenna. Therefore, the area covered by the beams emitted by the split-sector antenna is equivalent to the area formerly covered by the single symmetric beam emitted by the conventional directional antenna.
It is pertinent to submit here that although the beams in prior art were referred to as "symmetric beams", there was a negligible degree of asymmetry owing to manufacturing tolerances. This asymmetry was
CS(OS) Nos.1989/2010 & 1993/2010 Page 5 of 78 viewed as a defect in the prior art. Further, there was no means of using the symmetric beam in the prior art in a controlled fashion to cater to a localized demand. However, on the contrary, the invention of the Plaintiff No.1 uses the very same asymmetry to its advantage. Critically, it is to be noted that the technology of the Plaintiff No.1 uses the very same asymmetry to its advantage. Critically, it is to be noted that the technology of the plaintiff No.1 deliberately introduces a significant degree of asymmetry. The capability of the invention of the Plaintiff No.1 to control and modulate the degree of asymmetry sets it apart from the prior art. Therefore, all the above conclusively establish the novelty and non-obviousness of the invention of the Plaintiff No.1 thereby satisfying the cardinal prerequisites of patentability under the Act."
2.9 There are two types of applications for grant of patent,
namely, Patent Cooperation Treaty (PCT) applications and Non-
PCT applications. In respect of PCT applications, the applicant
approaches the WIPO which conducts the search and gives an
opinion regarding novelty and inventive step by the applicant
whereas in Non-PCT applications, the applicant directly files the
application before the Patent office. In respect of PCT
applications, the Patent office is not required to do a
search/investigation under Sections 12 and 13 of the Act and
they rely upon the results of the PCT examination as has been
done in the present case. The plaintiffs have referred to the
clauses 5.10.4 and 5.10.6 of the Draft Manual of Patent Practice
and Procedure of Indian Patent Office, 2008.
2.10 The Patent Office examined the PCT application and raised
an objection that plaintiffs‟ application was not in conformity with
the PCT application whereupon the plaintiffs amended the
CS(OS) Nos.1989/2010 & 1993/2010 Page 6 of 78 specifications to make it in conformity with the PCT application on
30th April, 2010. The plaintiffs had originally made 28 claims
before the Patent Office but later on amended their application
and restricted them to 25 claims as made in PCT application.
2.11 PCT International Search and Preliminary Examination
Guidelines of World Intellectual Property Organization, Geneva
(Clause 3.03) are used in the member countries although the
same are not binding on the member states.
2.12 Section 13(3) of the Act provides that the amended
specification shall be examined and investigated in a like manner
as the original specification. However, the amended specification
need not be re-published in view of Section 57(3) which provides
for the publication of the amendment after the grant of patent.
2.13 The Plaintiffs‟ patent is prima facie valid - Section 13(4) of
the Act expressly denies presumptive validity to the grant of a
patent on account of search or examination undertaken by the
Examiner under Sections 12 and 13 of the Act. In other words,
the Act does not impute conclusiveness to the search or
examination undertaken by the Patent Office, and the results
thereof. The Act vests the Court with original powers to probe and
verify for itself, the validity of a patent on the anvils of novelty,
existence of an inventive step, and industrial applicability which
is limited to the grounds that can be invoked under Section 64.
However, in forming an opinion on the establishment of a prima
facie case of validity, the Court‟s enquiry, in exercise of its
CS(OS) Nos.1989/2010 & 1993/2010 Page 7 of 78 original powers, is limited to grounds which can be invoked to
assail the validity of the patent under Section 64 of the Act. The
plaintiffs‟ patent is prima facie valid in terms of the findings of
the International Searching Authority, International Preliminary
Report on Patentability and Written Opinion.
2.14 The Plaintiffs‟ patent is prima facie novel - Neither in the
Written Opinion (WO) nor in the International Preliminary Report
on Patentability (IPRP), has the International Searching Authority
(ISA) expressed any negative opinion on the novelty of the
patent. International Searching Authority (ISA) has not found any
document relevant to the Plaintiffs‟ patent from the point of view
2.15 Defendant No.1 has cited 6 patent documents -
WO/2006/004463, US 6127972, US 5907816, US 6480524, US
5686926, US 6608591, US 6094165 and 1 journal publication
(Osserian and Logothetis) to assail novelty. None of these
documents were considered as relevant prior art by the ISA.
2.16 The Plaintiffs‟ patent has a prima facie inventive step - The
inventive step of Plaintiff No.1‟s invention lies in its ability to split
a single sector/coverage area, which was earlier covered by a
single directional antenna emitting a single symmetric beam, into
a number of equivalent sub-sectors/sub-coverage areas using an
equal number of beams which are emitted by a single "split-
sector antenna", with at least one of the sub-sectors/sub-
coverage area so created being an asymmetric sector created by
CS(OS) Nos.1989/2010 & 1993/2010 Page 8 of 78 at least one asymmetric beam emitted by the split-sector
antenna. Critically, the inventive step of the invention lies in the
feature that the area covered by the beams emitted by Plaintiffs‟
"split-sector antenna" is equivalent to the area formerly covered
by the single symmetric beam emitted by the conventional
2.17 Defendant No. 1 has relied upon WO/2006/004463
("Hagerman et al"), US 566655 ("Ishikawa et al"), US 6081233
and US 7038621, to allege lack of inventive step in the patent.
US 6081233 and US 7038261 have not been considered as
relevant prior art in the IPRP. However, both Hagerman and
Ishikawa have already been considered by the ISA in the WO and
IPRP as "D1" and "D2" respectively.
2.18 The patented invention was specifically held to overcome
Hagerman, which is reflected in the following finding in the IPRP:
"However, D1 fails to teach or suggest the further limitation of the total critical coverage area of the plurality of sub-sector coverage areas being equivalent to the critical coverage area of the atleast one sector antenna"
2.19 Ishikawa was disregarded as relevant prior art in the IPRP.
Consequently, the patented invention was held to be inventive
with regard to the prior art in the IPRP as follows:
"However, D1 fails to teach or suggest the further limitation of the total critical coverage area of the plurality of sub-sector coverage areas being equivalent to the critical coverage area of at least one sector antenna. Therefore, claims 1 and 10 contain an inventive step over the prior art.
CS(OS) Nos.1989/2010 & 1993/2010 Page 9 of 78 As claims 2-9 and 11-25 depend on inventive claims 1 and 10, claims 2-9 and 11-25 are also inventive with regards to the prior art"
3. Defendant‟s Case [CS(OS)No.1989/2010]
3.1 Patent IN 240893 is not validly granted. Patent IN 240893 is
invalid for failure to comply with Section 13 because:-
3.1.1 The Examiner has not complied with the statutory requirements under Sections 13(1) and 13(2) for conducting an investigation regarding anticipation by prior publication.
3.1.2 The plaintiffs‟ submission that in case of Indian applications based on PCT applications, the Examiner need not comply with the requirements under Sections 13(1) and 13(2) and may instead rely on the results of the International Search Report (ISR) and the International Preliminary Report on Patentability (IPRP) is incorrect.
3.1.3 The findings of the ISR and IPRP are not binding on the Indian Patent Office, and cannot override the provisions of the Patents Act, 1970 especially on issues of novelty and inventiveness.
3.1.4 Reference to Sections 13(1) and (2) of the Patents Act indicate that the duties set out therein for the concerned Examiner are mandatory, in view of use of the term "shall" in both provisions. It is therefore inconceivable that the statutory duties of the concerned Examiner to conduct a prior art search can be set aside or circumvented by reliance on the findings of the ISR and IPRP. The preface of the Draft Manual acknowledges that statements therein cannot and are not intended to override statutory provisions. Further, Articles 33(1) and 35(2) of the PCT establish
CS(OS) Nos.1989/2010 & 1993/2010 Page 10 of 78 that such circumvention is neither intended nor permissible.
3.2 Grant of patent IN 240893 does not lead to a presumption of validity.
3.3 Subject matter of claims lacks novelty:-
3.3.1 The plaintiffs acknowledge that asymmetric beam
antennae were previously known, but allege that novelty and
inventiveness of the invention resides in the feature wherein the
total coverage area provided by sub-sector antennae is
substantially equivalent to the coverage area of a sector antenna
being replaced. The plaintiffs‟ invention lacks novelty as both
these features were disclosed to the public before the priority
date (March 17, 2006) of IN 240893, in each of the below three
184.108.40.206 The plaintiffs‟ invention was disclosed to the public by prior publication describing plaintiffs‟ invention on March 1, 2006 at http://mobiledevdesign.com /hardware_news/radio_wireless_ solution_boosts/, and http://rfdesign.com/mag/radio_wireless_solution_ boosts/. The article discloses (i) replacing conventional antennae with a bi-sector asymmetric antenna, wherein the original antenna coverage area is split into (ii) multiple sectors having asymmetric patterns. The date of publication of this document pre-dates the priority date of the plaintiffs‟ patent (March 17, 2006) and therefore provides absolute grounds for destruction of novelty.
220.127.116.11 The plaintiffs‟ invention also lacks novelty in view of US 6,094,165 (Smith) which discloses a telecommunication network using multiple asymmetric
CS(OS) Nos.1989/2010 & 1993/2010 Page 11 of 78 beams to split a 120o sector coverage area into multiple sub-sectors, whereby the total sub-sector coverage area is substantially equal to the 120 o sector.
18.104.22.168 The plaintiff‟s invention also lacks novelty in view of WO/2006/004463 (Hagerman), which discloses all features of claims 1 and 10 of IN 240893. Hagerman accordingly discloses each and every feature of claims 1 and 10, including those which were not identified by the International Searching Authority in the IPRP. Since the cited document was published on January 12, 2006, it pre-dates the priority date for IN 240893, and presents absolute grounds for invalidity and revocation of claims 1 and 10 under Section 64(1)(e) of the Patents Act.
3.3.2 Each of the above three references is individually
sufficient to anticipate the plaintiffs‟ alleged invention. There are
therefore not one, but three prior art references that
independently provide cause for refusal of a patent on the
claimed technology. Subject matter of the invention as claimed in
IN 240893 therefore lacks novelty in view of each of the above
thee prior art references and is capable of being revoked under
Section 64(1)(e) of the Patents Act.
3.3.3 Two of the above three prior art references were not
even considered by the ISR and IPRP, and therefore the Indian
Patent Office failed to conduct an independent investigation on
novelty and inventiveness.
3.4 Subject matter of claims lacks inventiveness:-
CS(OS) Nos.1989/2010 & 1993/2010 Page 12 of 78 3.4.1 The plaintiffs acknowledge that asymmetric beams were previously known, but allege that novelty and inventiveness of the invention resides in the feature wherein the total coverage area provided by sub- sector antennae is substantially equivalent to the coverage area of a sector antenna being replaced. 3.4.2 All features of the plaintiffs‟ invention, are known in all aforestated three documents, each read independently and without reliance on the others. The claimed invention therefore lacks novelty and the issue of inventiveness is not relevant at all. 3.4.3 Asymmetric beams have been known in the art since 1975 in any one of the following documents (hereinafter referred to as „Group 1 documents‟):- (i) Elliott, R.S., Design of Line Source Antennas for Narrow Beamwidth and Asymmetric Low Sidelobes, IEEE Transactions on Antennas and Propagation, 1975. OR
(ii) Trucco, A., Synthesizing Asymmetric Beam Patterns, IEEE Journal of Oceanic Engineering, 2000. OR
(iii) Thornton, John, A Low Sidelobe Asymmetric Beam Antenna for High Altitude Platform Communications, IEEE Microwave and Wireless Components Letters, Vol. 14, No. 2, 2004. OR (iv) Ramakoteswara Rao, G.V. et al., Design and Development of Asymmetric Beam Monopulse Antenna System at Ka-Band, APMC2005 Proceedings, 2005.
3.4.4 Regarding the feature in which the plaintiffs now assert inventiveness, (i.e. wherein a pre-existing sector is divided into sub-sectors such that total coverage area provided by the sub-sector antennae is
CS(OS) Nos.1989/2010 & 1993/2010 Page 13 of 78 substantially equivalent to the coverage area of the original sector antenna), defendant No.1 submits that this feature was also well known in the field of wireless telecommunication prior to the plaintiffs‟ invention from any one of the following documents (hereinafter referred to as „Group 2 documents‟):-
(i). U.S. 6,094,165 (Smith) disclose a 1200 sector, wherein the sector is served by a plurality of narrow directional beams which plurality of narrow directional beams have a total coverage area equal to the entire 1200 sector area.
(ii). U.S. 5,581,260 discloses four antenna beams each having a width narrower than the 120 degree sector, wherein typically, the antenna beams will be arranged to collectively cover the full 120 degree azimuth sector.
Both of the above references were published before the
priority date (March 17, 2006) of IN 240893.
3.4.5 The combination of any one of the Group 1 documents and any one of the Group 2 documents would immediately provide a person of skill in the art with the technical solution of IN 240893, for the reason that taken in combination, they disclose (i) use of asymmetric beam antennae, and (ii) use of a plurality of sub-sector beams to provide substantially the same coverage area as a sector-antenna.
3.4.6 All of the Group 1 and Group 2 documents are within the domain of telecommunication patents and more particularly wireless telecommunication and are therefore within the knowledge of the notional person of skill in the art. It would therefore have been obvious for the skilled person to have combined the teachings
CS(OS) Nos.1989/2010 & 1993/2010 Page 14 of 78 of any one of the Group 1 documents with any one of the Group 2 documents to arrive at the invention claimed by the plaintiff.
3.4.7 A sector coverage area may be divided into a plurality of sub-sector coverage areas, wherein the total coverage area of the sub-sectors is substantially equivalent to the coverage area of the original sector. For a person of skill in the domain of wireless telecommunication technology seeking to replace a sector antenna with sub-sector antennae having asymmetric beams, it would therefore have been an obvious and natural consequence to ensure that the total coverage area of the sub-sectors is substantially equivalent to the coverage area of the original sector. 3.4.8 The feature that total coverage area of the sub-sectors is substantially the same as coverage area of the original sector, is not merely obvious, but is necessarily the only solution that the person of skill in the wireless telecommunication domain could have selected.
3.4.9 The entire objective of the invention claimed by the plaintiffs is to provide a method and antenna targeted at replacing existing wireless antenna within a cellular network. In the case of antenna replacement, if the replacement sub-sector antenna has a smaller total coverage area than the original antenna, this would lead to gaps or holes in the coverage area, and a consequent loss of signal for users. Similarly, if the replacement sub-sector antenna provides a total coverage area that is larger than the original antenna, such larger coverage area would overlap adjoining sectors or cells, leading to increased interference between adjoining coverage areas and deterioration of
CS(OS) Nos.1989/2010 & 1993/2010 Page 15 of 78 signal quality. For the skilled person seeking to minimize network interference through antenna replacement, the replacement antenna would necessarily have the same coverage area as the antenna being replaced.
3.5 Claims precluded from patentability under Section 3(d):-
3.5.1 Under Section 3(d) "mere use of a known machine or apparatus" is not an invention within the meaning of the statute.
3.5.2 The plaintiffs‟ invention relates only to use of an apparatus, which is an asymmetric beam antenna. The asymmetric beam antennae have been known since 1975. The plaintiffs have not demonstrated any novelty, let alone inventiveness in the asymmetric beam antenna. In other words, the plaintiffs have nothing more to add to the asymmetric beam antenna than was already known at the priority date of IN 240893 i.e. March 17, 2006. This conclusively establishes that the plaintiffs have done no more than pick up a conventional asymmetric beam antenna and thereafter used it in a fashion that an asymmetric beam antenna, by its very nature, is designed to be used or operated.
3.5.3 The invention recited by claims 1 to 25 of IN 240893 - namely, (i) a method of replacing conventional antennae with split-sector antennae; and (ii) a split- sector asymmetric antenna for replacing conventional antennae - are all mere uses for the asymmetric antenna already known. Under Section 3(d) the subject matter claimed in IN 240893 is therefore not an invention.
3.6 Claims precluded from patentability under Section 3(f):-
CS(OS) Nos.1989/2010 & 1993/2010 Page 16 of 78 3.6.1 Under Section 3(f) mere arrangement, re-arrangement or duplication of known devices functioning independently of one another in a known way, is also not an invention.
3.6.2 Use of more than one asymmetric beam antennae provides for precisely the subject matter that Section 3(f) does consider an invention. The pith and substance of the invention merely prescribes use of one or more asymmetric beam antenna, each antenna doing exactly as it is designed to do i.e. to throw an asymmetric beam. Each antenna throws an asymmetric beam individually (independently) and each antenna throws such beam in a way that it was designed to - both of which are known.
3.6.3 The network and apparatus claims relate to having one or more asymmetric beam antenna. The first step of the method claims, which is another aspect of the invention, provides for replacing of other antenna varieties with an asymmetric antenna, which presupposes existence and continuance of an otherwise well-known network. The only contribution to the network is therefore providing asymmetric beam antennae. The plaintiffs in effect claim nothing more than a number of antennae, each doing exactly what an antenna is supposed to do and in a known way.
3.6.4 That subject matter of claims 1 to 25 of IN 240893 therefore falls squarely within the scope of Section 3(f), and does not qualify as an invention under the Act.
3.7 No interim relief where the claimed invention is subject to
serious challenges to validity:-
CS(OS) Nos.1989/2010 & 1993/2010 Page 17 of 78 3.7.1 Interim injunction should not be granted in cases where the patent is under serious challenge as to its validity.
3.7.2 In view of the above mentioned and independently arising grounds, there are clearly at least five extremely serious grounds for challenging validity, each of which independently questions the very basis of the statutory grant of rights to the plaintiff. 3.7.3 The non-final office action dated November 23, 2010 issued by the United States Patent and Trademark Office (USPTO) in connection with US patent application 12,094,299 (US application corresponds to IN 240893), where the USPTO has raised objections regarding lack of novelty and inventive steps in view of Hagermen raising a serious challenge to the validity of the plaintiffs‟ patent.
3.7.4 The findings of the extended European Search Report dated April 7, 2011, issued by the European Patent Office (EPO) in connection with EP patent application 07710762.1 (EP application corresponds to IN 240893), where the EPO has cited various prior art references, where it was held that the claimed invention was lacking in inventive step.
3.8 Expert evidence relied on by the plaintiffs is per se
3.8.1 The capabilities and diligence of the expert relied on by the plaintiffs for the purpose of securing interim relief is highly questionable. The plaintiffs‟ expert begins his testimony by asserting that IN 240893 is novel and inventive. The expert neither explains the methodology of the search process carried out, nor bothers to distinguish the claimed invention from the
CS(OS) Nos.1989/2010 & 1993/2010 Page 18 of 78 prior art that has been consistently cited against the invention in the ISR, WO and IPRP. It is further inconceivable that the expert should claim that antenna providing asymmetric coverage were previously unknown for the reason that asymmetry was viewed as a defect, as the very first search result on the Google Search Engine (www.google.com) for the term "asymmetric beam antenna" links to Thornton‟s article of 2004, which discusses the desirability and advantages of asymmetric beam antenna. The obvious errors and lacunae in the expert testimony establish a complete lack of reliability. It is submitted that the expert testimony supplied by the plaintiffs may be disregarded entirely.
3.8.2 The expert has focussed his entire enquiry on whether defendant No.1‟s antennae emit asymmetric beams in a split-beam pattern, which in view of the prior art references identified hereinabove, was well known in the art prior to the plaintiffs‟ invention. The expert‟s inquiry is therefore misdirected and per se unreliable. 3.9 The plaintiffs are guilty of fraud, willful misrepresentation
and deliberate suppression of material facts in the plaint and
applications under Order XXXIX Rules 1 & 2 in as much that they
have deliberately misled the Court into believing that novelty and
inventive step reside in asymmetry of their antennae.
3.10 No interim injunction where patent is of recent grant:-
3.10.1 The interim relief shall not be granted by courts where the patent has been granted recently. In the present case, IN240893 was granted as recent as June 9, 2010.
CS(OS) Nos.1989/2010 & 1993/2010 Page 19 of 78 3.10.2 The suit was instituted on September 24, 2010, less than four months from the date of grant. A plea for interim relief may therefore not be entertained, particularly in view of the serious challenges to validity that have been raised above.
4. Defendant‟s Case [CS (OS)No.1993/2010]
4.1. There is no presumption of validity of a patent in a suit for
infringement and the plaintiffs are required to establish prima
facie validity of patent (Section 13 and 107 of the Patents Act).
4.2 Defendant No.1 has raised a "credible challenge" to the
validity of the patent and, therefore, the plaintiffs are not entitled
to an interim injunction. "Credible challenge" means that there is
a serious question to be tried in the suit with respect to the
validity of the patent. There are many serious questions to be
tried as to the validity of the plaintiffs‟ patent but ex facie the
following reflect the vulnerability of the patent in suit:-
4.2.1 The International Search Report ("ISR") and the Written Opinion issued by the officer Anne Marie Scott disclosed the two prior arts i.e. „Hagerman 4463 Document‟ and „US 5666655 (Ishikawa et al)‟ (hereinafter „Ishikawa 655‟) and opined that the alleged invention suffered from lack of inventive step. 4.2.2 Rejection of patent by USPTO: US Patent Office („USPTO‟) has also rejected the Plaintiffs‟ patent application for the same invention on grounds of lack of novelty and inventive step based on the Hagerman 4463 Document read with Ishikawa 655.
4.2.3 Rejection of patent by European Patent Office - European Patent Office („EPO‟) has also issued a non-
CS(OS) Nos.1989/2010 & 1993/2010 Page 20 of 78 final rejection for Plaintiffs patent application on objections of lack of novelty/inventive step, insufficient disclosure, vagueness of claims, etc.
4.2.4 Defendant No. 1 has raised a challenge, traversed in detail in its written statement/counterclaim and in the opinions of the two independent experts, to the patent in suit on grounds of obviousness apart from lack of novelty, insufficient disclosure and vagueness of the claims all of which are grounds for revocation of a patent under the Act (Section 64) apart from being a defence to an allegation of infringement of patent (Section 107).
4.2.5 The official records of the Indian Patent Office (IPO) reveal that the Patent was granted in great haste and without following the mandated procedure of Examination and Investigation under Section 12 and 13 of the Act.
4.3 The plaintiffs‟ reliance on IPRP is of no avail: The plaintiffs‟
reliance on the "IPRP", in support of validity of its patent is
untenable inter alia because:
(i) It took a contrary view to the ISR on the very same
unamended claims considered, without providing any reasons for
(ii) IPRP (which itself is preliminary and non-binding) is
restricted to „Hagerman 4463‟ and failed to consider the other
prior art relied upon by the ISA (i.e. „Ishikawa 655‟) and the prior
art cited by Defendant;
(iii) IPRP cannot show prima facie validity of its patent.
CS(OS) Nos.1989/2010 & 1993/2010 Page 21 of 78 (iv) PCT itself states that ISR is not binding and does not contain
any statement whether claimed invention is patentable according
to National Law.
4.4 No Prima facie case of infringement: The plaintiff has failed
to establish a prima facie case of infringement because:
(i) The suit was filed on the basis of a complete specification in
respect of which a patent has been refused by the IPO;
(ii) Even for the sake of argument (and without admitting), it is
assumed that Plaintiffs have pleaded infringement of claims of
the granted patent (as they attempt to do in rejoinder of IA 13017
of 2010), even then the plaintiffs fall short because:
(a) Section 10(4)(c) of the Patents Act define the scope of
the rights granted to the patentee and it is only when said
claims are infringed i.e. all the features of the claims are to
be found in defendant No.1‟s device, can a finding of
infringement be reached.
(b) The plaintiffs and their expert, have based the case for
infringement solely on the degree of asymmetry in
Defendant No.1‟s antenna product and the coverage area of
the multiple beams of the defendant No.1‟s antenna has not
been alleged or shown by either the plaintiffs‟ or their
expert to be the same as the coverage area of a replaced
sector antenna with a single symmetric beam. Defendant
No.1‟s specified antenna product has a coverage hole at the
CS(OS) Nos.1989/2010 & 1993/2010 Page 22 of 78 very place where a sector antenna with a single symmetric
beam would have had its maximum coverage;
(c) Defendant No.1‟s antenna product does not employ a
single teaching of the patent. The beam patterns are
entirely different from the asymmetrical beam patterns
shown in patent. It only employs currents having
symmetrical amplitudes (i.e. current value) and linear phase
progression consistent with examples in prior art (for eg. US
6,608,591). It does not employ the asymmetrical current
values or the phase rotations.
4.5 Patent in suit is invalid: Section 107 of the Act provides that
in an infringement suit, all grounds of revocation under Section
64 are available as a ground of defence for non-infringement,
including Section 64(1)(e),(f), (h), (i) and (j). The defences urged
in the present suit are:-
4.5.1 Lack of Novelty and Inventive Step:
As per the Plaintiffs‟ own submissions:
"it is submitted that the inventive step of the Plaintiff No.1 is a technology by which a single sector, which was earlier covered by a single directional antenna emitting a single symmetric beam, is now split into a number of equivalent sub-sectors by an equal number of beams being emitted by a single "split-sector antenna", with atleast one of the sub-sectors so created being an asymmetric sector created by atleast one asymmetric beam emitted by the split-sector antenna. Therefore, the area covered by the
CS(OS) Nos.1989/2010 & 1993/2010 Page 23 of 78 beams emitted by the split-sector antenna is equivalent to the area formerly covered by the single symmetric beam emitted by the conventional directional antenna."
Alleged inventive concept apart from being obvious is also anticipated by each of the cited prior art including Osserian and Logothetis US 6,608,591, US 6,480,524, US 6,127,972, US 5,686,926, „Hagerman 4463‟ Document‟, US 6,094,165 (Smith) and US 6,081,233 since they disclose split-sector antenna emitting asymmetrical beams and would "therefore" have the same coverage area as the area covered by a single symmetric beam thereby satisfying the last limitation of the independent claims. In case of dual asymmetric beams, all of the above prior art show that the asymmetric coverage areas are also mirror images of each other and hence claims 12 and 13 also stand anticipated.
4.5.2 Insufficient Disclosure: Section 10(4)(a) & (b) imposes an obligation on the patentee to fully and particularly describe the invention and the method by which it is to be performed (including best method) and a failure to do so is fatal to the validity of the patent in suit under Section 64(1)(h) of the Act. The plaintiffs‟ patent application has also been non-finally rejected by the European Patent Office (EPO) on this ground. 4.5.3 Claims are vague and not based on the description in the complete specification: Claims of the patent in suit are invalid and liable to be revoked under Section 64(1)(i) of the Act. Specifically use of words such as "asymmetrical", "substantially equivalent" etc are vague. Claims also cover embodiments of the invention which have not been disclosed at all.
CS(OS) Nos.1989/2010 & 1993/2010 Page 24 of 78 4.5.4 The claimed invention is not an invention under the meaning of the Act and invalid under Section 64(1)(d): The patent in suit does not teach any product or process by which such beam patterns may be obtained. Section 3(d) renders the invention non- patentable as it provides amongst others that the mere use of a known process, machine or apparatus is not an invention.
4.5.5 Non-Compliance of Section 8 of the Act and knowingly providing false information: Section 64(1)(m) of the Act provides for revocation as Section 8 is not complied with. Failure to disclose Canadian Application 2,645,720 to the Indian Patent Office and the abandonment of Canadian Application is not denied. 4.5.6 Indian Patent Office failed to consider the prior art disclosed in the ISR as well as those cited by Defendant No.1: Indian Patent Office has neither considered prior art revealed in the ISR such as „Hagerman 4463‟ and „Ishikawa 655‟, nor the prior art cited by Defendant No.1. The plaintiffs‟ contention that the law does not mandate that the Indian Patent Office conducts its own prior art search where International Searching Authority has undertaken one, is contrary to the Act, in view of:
22.214.171.124 Article 27(5) & (6) and Article 33(5) of the PCT;
126.96.36.199 Mandatory nature of Section 12 and 13 read with Section 139 of the Act;
188.8.131.52. Sections 12 and 13 applies to all applications for grant of patent in India whether through the PCT route or through a direct filing in India; and
184.108.40.206 The express request for examination by the plaintiffs was filed under Section 11B for examination under Sections 12 and 13 of the Act.
CS(OS) Nos.1989/2010 & 1993/2010 Page 25 of 78
5. Summary of the record of the Indian Patent Office
During the course of hearing on 2nd February, 2011,
defendant No.1 in CS(OS)No.1993/2010 submitted that the Indian
Patent Office has granted the patent to plaintiff No.1 without
following the mandatory procedure under Sections 12 and 13 of
the Patents Act, 1970, whereupon this Court requisitioned the
original record of the patent office, which was received on 17th
February, 2011. The original record has been retained in this
Court. The brief summary of the record of the Indian Patent Office
is as under:-
5.1 On 5th August, 2008, the plaintiffs submitted an application
for grant of patent before the Indian Patent office. The plaintiffs
made 28 claims in the application. Along with the application,
the plaintiffs submitted the International Search Report issued by
World Intellectual Property Organization under the Patent
Corporation Treaty on 27th September, 2007. The plaintiffs also
attached the copy of the PCT application in which the plaintiffs
had made 25 claims. The plaintiffs also submitted Form 13 for
amending the claims.
5.2 On 10th September, 2008, the plaintiffs submitted an
application for expeditious examination of the application which
was allowed on 22nd September, 2008 and it was directed as
"May be considered for publication and
CS(OS) Nos.1989/2010 & 1993/2010 Page 26 of 78 5.3 On 26th September, 2008, the publication was carried out in
the Patent Office Journal. However, there was some mistake in
the said publication and, therefore, the plaintiffs submitted an
application dated 1st October, 2008 for re-publication on the
ground that figure „1‟ had been published instead of figure „2‟
whereas figure „1‟ was a „prior art‟ figure. The plaintiffs
requested for re-publication of the whole abstract along with
figure „2‟. This application was received in the office of the
Controller of Patents on 6th November, 2008. However, no order
appears to have been passed on this application.
5.4 On 21st November, 2008, the Examiner submitted the First
Examination Report to the Controller of Patents. On the basis of
this report, the Controller of Patents issued the First Examination
Report to the plaintiffs on 3rd December, 2008 in which the
following objections were raised:-
"1. Form 13 filed by you for amending the claims has not been allowed by this office under Section 59 of the Patents Act, 1970 (as amended) because said amendments are going beyond the disclosure in the international application as originally filed. Hence the First Examination Report is based on the claims filed in the International application as originally filed.
2. Claim 10 does not sufficiently define the constructional features of sub-sector antenna rather it defines the sub-sector antenna in terms of its functions and way to achieve the results from said functions. Therefore the constructional features of the sub-sector antenna if any should be brought out clearly in claim 10.
3. Claims 16-22 are not supported by the description.
CS(OS) Nos.1989/2010 & 1993/2010 Page 27 of 78
4. Title is not precise and it should be made consistent with the preamble of the claims.
5. Reference numerals "213, 222, 233" appearing in figure 2 and "232" appearing in figure 2,3 and 4 are not defined in the description.
6. Power of Attorney in your favour should be filed.
7. Further details regarding foreign filing as required under Section 8(1) of the Patents Act, 1970, as amended should be filed within prescribed period given in rules 12(1A) and 12(2) of the Patents Rules, 2003, as amended.
8. Details regarding the search and/or examination report including claims of the applications allowed, as referred to in Rule 12(3) of The Patents Rules, 2003, as amended in respect of same or substantially the same inventions filed in any one of the major Patent Offices, such as USPTO, EPO, and JPO etc., along with appropriate translation where applicable, should be submitted within a period of six months from the date of receipt of this communication as provided u/s 8(2) of the Indian Patents Act, 1970, as amended.
9. Indian patent application number should be given in drawing sheets..."
5.5 The plaintiffs submitted the response dated 27th May, 2009
to the First Examination Report on 8th June, 2009.
5.6 The response of the plaintiffs was considered by the
Controller of Patents and the Second Examination Report was
issued to the plaintiffs on 18th August, 2009. The relevant portion
of the objections raised in the report are reproduced hereunder:-
"1. Observation given by you in order to overcome the first objection of the First Examination Report has been carefully taken into consideration. But still Form 13 is not allowable u/s. 59 of the Patents Act, 1970 (as amended) because of following reasons:
(i) As per Section 59(1) of the Act the amendment should be made by way of disclaimer, correction or
CS(OS) Nos.1989/2010 & 1993/2010 Page 28 of 78 explanation. The amendments made by you in claims by filing Form 13 do not fall under any of the aforementioned category stated in Section 59(1) of the Act.
(ii) Also the amendments made are going beyond the disclosure in the international application as originally filed because the following features given in amended claims are not disclosed or suggested by the originally filed disclosure:
a) each of the at least one sector having one or more associated sector antennae (claim 1, claim 5, claim 6, claim 12).
b) Replacing the associated one or more sector antennae for given sector (claim 1, claim 12).
c) The plurality of sub sector coverage areas comprises two sub sector coverage areas,
each one of which having a half power
beam width of about half that of the
critical coverage area of the replaced one or more associated sector antennae (claim 10, claim 17).
2. In view of the objection raised under para 1 above, this examination report is based on the claims filed in the international application as originally filed. Hence the requirements of paras 2 to 4 of this office letter dated 3rd December, 2008 have not been met.
3. Further details regarding foreign filing on Form 3 filed by you vide letter dated 9th March, 2009 cannot be taken on record as you have not submitted such details within prescribed period as mentioned in rule 12(2) of the Patents Rules, 2003 (as amended).
4. Form 3 filed by you vide letter dated 9th March, 2009 is not signed..."
5.7 On 19th November, 2009, the plaintiffs submitted its
response to the Second Examination Report.
5.8 On 5th February, 2010, the Examiner reported to the
Controller that the explanation offered and the amendments
carried out by the agent vide letter dated 23rd November, 2009
CS(OS) Nos.1989/2010 & 1993/2010 Page 29 of 78 have been considered but the requirements of paras 1 and 2 of
the Patent office letter dated 18th August, 2009 have not been
met and the last date expired on 3rd December, 2009 which was
communicated to the plaintiff vide letter dated 11th March, 2010.
By the said letter, the Patent office fixed the hearing of the
matter on 23rd March, 2010.
5.9 On 23rd March, 2010, the hearing was adjourned to 13th
April, 2010 and then to 29th April, 2010.
5.10 On 29th April, 2010, the plaintiffs‟ agent attended the
hearing before the Patents Office and agreed to replace claims 1
to 28 by claims 1 to 25 of the PCT application and also agreed to
comply with the other office requirements.
5.11 The plaintiffs submitted the amended application dated 30th
April, 2010 which was received by the Patent office on 4th May,
5.12 The amended application of the plaintiffs was allowed by
the Patent office on 9th June, 2010. The Patent Office issued the
patent to the plaintiffs on the same day, i.e., 9th June, 2010. The
order passed by the Controller of Patents on 9th June, 2010
records as under:-
"In view of the amendments carried out
and the documents submitted, there are no objections on granting a patent. The application has been taken to my mind out of turn due to filing of express request on form 18. But the purpose of express
request is something else. However, nothing can be done at this stage.
CS(OS) Nos.1989/2010 & 1993/2010 Page 30 of 78 Patent is granted. Patent No.240893."
6. Procedure for grant of patent under the Patents Act, 1970 and other relevant provisions of law
6.1 The procedure for grant of patent in respect of an invention
is given in the Patents Act, 1970 (hereinafter referred to as „the
Act‟) and the Patents Rules, 2003 (hereinafter referred to as „the
6.2 The object of Patent Law is to encourage scientific research,
new technology and industrial progress. The grant of exclusive
privilege to own, use or sell the method or the product patented
for a limited period, stimulates new inventions of commercial
utility. The price of the grant of the monopoly is the disclosure of
the invention at the Patent Office, which, after the expiry of the
fixed period of the monopoly passes into the public domain.
6.3 The fundamental principle of Patent Law is that a patent is
granted only for an invention which is new and useful. That is to
say, it must have novelty and utility. It is essential for the validity
of a patent that it must be the inventor‟s own discovery as
opposed to mere verification of what was already known before
the date of the patent.
6.4 Invention: An "Invention" is defined in Section 2(1)(j) of the
Act as a new product or process involving an inventive step and
capable of industrial application. An "Inventive step" is defined in
Section 2(1)(ja) as a feature in the invention that is not obvious to
CS(OS) Nos.1989/2010 & 1993/2010 Page 31 of 78 person skilled in the art and "New invention" is defined in Section
2(1)(l) as an invention not fallen in the public domain.
6.5 Non-patentable inventions : Sections 3 and 4 of the Act
gives the list of the inventions which are not patentable. Sections
3(d) and (f) are relevant in the present context according to
which the following inventions are not patentable:-
(i) The mere discovery of a new use for a known
substance or of the mere use of a known process
(ii) The mere arrangement or re-arrangement or
duplication of known devices each functioning
independently of one another in a known way (Section
6.6 Application for patent : The persons entitled to the Patent
under Section 6 of the Act are required to submit the application
in Form-1, Schedule-II under Section 7 of the Act before the
Controller of Patents. Sections 8 to 11 of the Act prescribe the
requirements to be fulfilled by the applicants.
6.7 Types of Patent Applications:
(i) Ordinary application - an application directly filed in
the Indian Patent Office.
(ii) Convention application - Convention applications are
of two types, namely, PCT Applications and National
6.8 Publication of Application: Every application for patent is
CS(OS) Nos.1989/2010 & 1993/2010 Page 32 of 78 required to be published under Section 11A of the Act. The
particulars to be published are specified under Section 11A(5) of
6.9 Examination of the Application: The applicant has to make a
request for examination under Section 11B of the Act whereupon
the application, specifications and other related documents are
referred by the Controller to the Examiner for making a report
under Section 12(1) of the Act in respect of the following
(a) Whether the application and the specification and other documents relating thereto are in
accordance with the requirements of the Act and the Rules;
(b) Whether there is any lawful ground of objection to the grant of the patent under the Act;
(c) The result of investigations made under section 13; and
(d) Any other matter which may be prescribed.
6.10 Report of Examiner: The Examiner makes a report to
the Controller after carrying out detailed examination and
investigation under Section 12 regarding the patentability of the
invention. The Examiner prepares the report after conducting a
prior art search to ascertain the novelty, and examining as to
whether the invention disclosed in the specification is inventive
and industrially applicable. The Examiner also examines whether
the invention belongs to one of the categories of non-patentable
inventions under Section 3 and 4, and whether there is any other
lawful ground of objection to the grant of patent under the Act.
CS(OS) Nos.1989/2010 & 1993/2010 Page 33 of 78 6.11 Search for Anticipation by previous publication or by prior
claim: The Examiner conducts a search under Section 13 of the
Act to ascertain whether the invention of the applicant has been
anticipated by previous publication or prior claim. If the
application is amended by the applicant, the amended
specification shall also be examined and investigated by the
Examiner in the same manner as the original specification
6.12 Consideration of the Examiner‟s Report by the Controller:
Where the Examiner has raised any objection to the application,
the Controller shall communicate the gist of the objections to the
applicant and also provide an opportunity of being heard to the
applicant before disposing of the application (Section 14).
6.13 Power of the Controller to Refuse or Require Amended
Application: Where the Controller is satisfied that the application
does not comply with the requirements of the Act, the Controller
may refuse the application or may permit the applicant to amend
the application (Section 15).
6.14 Revocation of Patents: The patent can be revoked under
Section 64 of the Act by the Appellate Board on a petition or by
the High Court on a counter claim in a suit for infringement of the
patent on the grounds mentioned in Section 64. The grounds
mentioned in Sections 64(1)(d),(e),(f),(k) and (m) are relevant in
the present context which are as under:-
(i) The claim is not an invention within the meaning of
CS(OS) Nos.1989/2010 & 1993/2010 Page 34 of 78 the Act (Section 64(1)(d)).
(ii) The invention is not new having regard to the previous
publication or prior claim (Section 64(1)(e)).
(iii) The invention is obvious or does not involve any
inventive step (Section 64(1)(f)).
(iv) The claim is not patentable under the Act (Section
(v) The applicant for the patent has failed to disclose to
the controller the information required by Section 8
6.15 Defence in Suit for Infringement: The grounds on which a
patent may be revoked under Section 64 are available as a
ground for defence in any suit for infringement of a patent.
6.16 PCT Applications:-
6.16.1 The PCT is a multilateral treaty that was concluded in 1970 and entered into force in 1978, amended in 1979, and modified in 1984 and 2001. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) having headquarter in Geneva (Switzerland).
6.16.2 The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of the PCT Contracting States by filing a single patent application (an "international" patent application) by designating several States, instead of filing several separate national and/or regional patent applications. Such an application may be filed by anyone who is a national or resident of a Contracting
CS(OS) Nos.1989/2010 & 1993/2010 Page 35 of 78 State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant‟s option, with the International Bureau of WIPO in Geneva. If the applicant is a national or resident of a Contracting State which is party to the European Patent Convention (EPC), the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the revised Bangui Agreement Relating to the Creation of an African Intellectual Property Organization or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), the African Intellectual Property Organization (OAPI) of the Eurasian Patent Office (EAPO), respectively.
6.16.3 The PCT application is subjected to what is called an "International Search." That search is carried out by one of the major patent offices appointed by the PCT Assembly as an International Searching Authority (ISA). The said search results are put in an "International Search Report," based on the published documents having effect on the patentability of the invention claimed in the international application. Along with the search report, the ISA prepares a written opinion on patentability. Whereas the search report is published by the International Bureau, the written opinion is not published. Both these are communicated by the ISA to the applicant, who may decide to withdraw his application, in particular where the said report or opinion makes the granting of patents unlikely.
CS(OS) Nos.1989/2010 & 1993/2010 Page 36 of 78 6.16.4 There are certain perceptible advantages for the applicant, the patent offices and the general public under the PCT procedure:-
220.127.116.11 The applicant is benefited by having up to 18 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees; he is assured that, if his international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any designated Office during the national phase of the processing of the application; on the basis of the international search report or the written opinion, he can evaluate with reasonable probability the chances of his invention being patented; and the applicant has the possibility during the international preliminary examination to amend the international application to put it in order before processing by the designated Offices;
18.104.22.168 As each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the patentability of a claimed invention. 22.214.171.124 The PCT, however, does not eliminate the necessity of prosecuting the international application in the national phase of processing before the national or regional offices, but it does facilitate such prosecution in several important respects by virtue of the procedures carried out first on all international applications during the international phase of processing under the PCT. The formalities check, the international search and the international preliminary
CS(OS) Nos.1989/2010 & 1993/2010 Page 37 of 78 examination carried out during the international phase, as well as the automatic deferral of national processing which is entailed, give the applicant more time and a better basis for deciding whether and in what countries to further pursue the application. 6.16.5 The International Searching Authority does not undertake any exercise to ascertain whether the claimed invention is patentable or not according to any national law. Article 35(2) of the PCT clearly provides that the International Preliminary Report shall not contain any statement as to the patentability of the claim according to the national law. In that view of the matter, it is the responsibility of the Indian Patent Office to examine as to whether the claimed invention is an "invention" within the meaning of Section 2(1)(j) of the Act, and if so, whether the claimed invention is not patentable under Sections 3 and 4 of the Act.
6.16.6 The International Preliminary Examination by International Searching Authority is preliminary and non-binding, which is clearly stipulated in Article 33(1) of the PCT.
7. Relevant Judgments
7.1 In Bishwanath Prasad Radhey Shyam v. Hindustan
Metals, (1979) 2 SCC 511, the Supreme Court held that grant
and sealing of patent does not guarantee the validity of the
patent which is expressly provided under Section 13(4) of the
Patents Act. The relevant paragraphs of the judgment are
CS(OS) Nos.1989/2010 & 1993/2010 Page 38 of 78 "24. The expression "does not involve any inventive step" used in Section 26(1)(a) of the Act and its equivalent word "obvious", have acquired special significance in the terminology of Patent Law. The 'obviousness' has to be strictly and objectively judged. For this determination several forms of the question have been suggested. The one suggested by Salmond L.J. in Rado v. John Tye & Son Ltd., 4 (1967) RPC 297 is apposite. It is: "Whether the alleged discovery lies so much out of the Track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known."
25. Another test of whether a document is a publication which would negative existence of novelty or an "inventive step" is suggested, as under: Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the
'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives me what I want ?" (Encyclopaedia
Britannica; ibid). To put it in another form: "Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned ?" [Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimadalal J. of Bombay High Court in Farbwerke Hoechst & B. Corporation v. Unichem Laboratories, AIR 1969 Bom 255]."
"32. It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is a presumption in favour
CS(OS) Nos.1989/2010 & 1993/2010 Page 39 of 78 of the validity of the patent, cannot be accepted."
7.2 In M/s. Niky Tasha India Pvt. Ltd. v. F.G. Gadgets Pvt.
Ltd., AIR 1985 Delhi 136, the Division Bench of this Court held
that the registration of a patent does not establish a conclusive
right in favour of the plaintiffs to be entitled to an injunction and
the plaintiffs have to establish before the Court that the patent is
valid. Where the patent is of a recent date, no injunction should
be granted. More so, when there is a serious question as to the
validity of the patent to be tried. The patent has to be tried and
tested in the laboratory of the Courts. The Courts lean against
monopoly as a general rule unless there are special
circumstances to overcome it. The findings of this court are
"9. In England, as in India, it is open to a plaintiff at any time after the institution of the suit to move for an interlocutory injunction to prevent the defendant from infringing his design between then and the date of trial. In Smith v. Grigg Limited (1924) 41 RPC 149(3), it was held that same principles apply to the case of a design as are applicable in the case of a patent. The plaintiff must show that he has a prima facie case, both that his design is valid and that it has been infringed by the defendant. The mere fact that the plaintiff is in possession of a patent or of a registered design is not of itself necessarily prima facie evidence of validity. On the contrary, where it appears that the design has only recently been
registered, and where it appears that there is a substantial issue to be tried, an interlocutory injunction will not be granted. (Ruse II Clarke page 121)."
CS(OS) Nos.1989/2010 & 1993/2010 Page 40 of 78
10. In Smith v. Grigg Limited, (1924) 41 RPC 149, Scrution, L.J., said:
"From the authorities which have been cited to us, and from my own personal inquiries from sources competent to give me information, there is in patent cases a well recognised rule of practice in the courts which deal with patent cases as to interlocutory injunctions, and it is this : That where the patent which you are seeking to enforce is a recent patent, an interlocutory injunction is not granted where there is a genuine case to be decided. Parker, J. put it very shortly in Trautoer v. Patmore (1912) 29 RPC 60 : 'I cannot grant an interim injunction. It is very unusual if the patent has not been established.' It is put at greater length by the Court is the case of Jackson vs. Needle, which was decided just after the Patents, Designs and Trade Marks Act, 1883 where both Baggallay, L. J. and Cotton, L. J. state that, where it is a new patent, or a recent patent, the court is not in the habit of granting these injunctions until the title has been established. I take the principle that underlies that to be this, that the court leans against monopolies. Where you find a respectable and old established monopoly which has been in existence for years and not challenged, there is no reason for the court to lean too hardly against it, but when you find a recent monopoly which there has not yet been time to challenge sought to be enforced, the Court is inclined to take the view as a general rule, unless there are special circumstances to overcome it, that the title to the monopoly must be established before it interferes by interlocutory injunction. It is not a universal rule : there may easily be facts which will lead the court in a particular case to depart from it, but as a general rule that is the practice of the court".
Atkin, LJ. at page 154 said :
"I think the reason for the principle which has been adopted in respect of a person claiming an interlocutory injunction restraining the infringement of a patent is that the plaintiff has always to establish at any rate a prima facie case of having a right which has been infringed by the defendant, and according to our patent law, which in this respect I think differs from
CS(OS) Nos.1989/2010 & 1993/2010 Page 41 of 78 that of some other countries. The mere fact of the granting of a patent is not in self an indication that the plaintiff has established to the satisfaction of any authority that he has the right to the monopoly which he claims. In the case of a patent, Therefore, the mere fact that a patent has been granted does not show that those conditions have been performed which alone entitle a plaintiff to a conclusive right, and Therefore the courts, when they are approached by a plaintiff who says : 'I am the owner of a patent and the defendant has infringed if, say where the patent is of recent date : 'Your right is not established sufficiently by the mere fact that a patent has been granted to you'; and unless there is some kind of substantial case evidenced before the court that there is in fact a valid patent, then the court refuses to a grant an injunction. I think the same thing must apply in the case of a person who claims under a registered design."
"12. I take it to be well settled, both in India and in England that an interlocutory injunction will not normally, be granted where damages will provide an adequate remedy should the claim succeed. Furthermore, I have always understood the rule to be that the court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date, as in this case, no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made. Where a person is entered as a proprietor of a registered design, that is under the Act no conclusive proof that the plaintiff is the proprietor of the design, but only a prima facie evidence that he is the proprietor. The plaintiff has this advantage that if no evidence at all is given then the certificate is sufficient evidence that he is the proprietor. (Mohd. Abdul Karim v. Mohd. Yasin : AIR 1934 All 798.)
13. I think every ground on which a registered design may be cancelled under the Act should be available by way of defense to a suit for infringement., It will be odd to hold that on the strength of a recent registered design, the plaintiff can claim an absolute right to restrain everyone else from carrying on his business unless and until the registered design of the plaintiff is
CS(OS) Nos.1989/2010 & 1993/2010 Page 42 of 78 cancelled in appropriate proceedings by a competent court of law."
"16. This new formulation has given greater prominence to balance of convenience. The Ethicon case has transferred emphasis to the balance of convenience. Applying this principle to the present case it appears to me that to grant an injunction will be to cut off for good the road to
commercial success of a business competitor. In the event of the plaintiffs success damages will be an adequate remedy. And the defendants' financial position to pay damages has not been questioned before us. They are prepared to give an undertaking. The balance of convenience lies in favor of refusing the interlocutory relief that is sought. The granting or withholding of interlocutory relief would depend upon the ability of either party adequately to be compensated in monetary terms and ultimately on the balance of convenience. The defendants' ability to pay damages is a factor which tilts the scales against the plaintiffs. (For an excellant summary of the principles governing interlocutory injunctions: see Terrell on Patents 13th Edition, Pp. 371-373)."
"19. Two competing principles are struggling for mastery in the industrial field. One is the principle of acquisition of proprietary rights in the intellectual property. The other is business competition so essential for economic progress. No country confers on the creater of an idea a perpetual property in it against imitators. The political and economic implications of such a privilege would be remarkable. Instead a set of limited forms of protection are fashioned against some types of exploitation by others. The root issue to which we constantly return is whether the balance achieved by this approach is broadly appropriate to the economic needs of the country and to the prevailing sense of what is just. (W.R. Cornish : Intellectual Property P. 6).
20. I would once again emphasise that the principles regarding the grant of injunction in India and in England are essentially similar. And these principles are as old as the hills. With other British specialities of the Act of 1949 we are not concerned. But injunction was a well known remedy under the English Act of 1883 and continues to be so in the present English Act of 1949. Our Act is of 1911. That there are bound to be differences in the law, I don't deny. The draftsman
CS(OS) Nos.1989/2010 & 1993/2010 Page 43 of 78 generally incorporates the changes which experience has shown to be necessary and updates the law.
21. The principles are clear. The difficulty lies in their application. On the recent design in this case the plaintiffs cannot be granted an injunction when there is a serious question to be tried in the suit. If there is any real dispute on the questions as to infringement or validity of the registered design the court will, as a general rule, refuse an interim injunction. Damages will afford a sufficient remedy. The defendants are prepared to give an undertaking as to damages.
22. I cannot accept the argument that the plaintiffs on the strength of the registration certificate have absolute right, a right which is good even against independent designers. "The Court is not in the habit of granting injunctions until the title has been established". "The Court leans against monopolies". The certificate does not establish a conclusive right. It has to be tried and tested in the laboratory of courts. We must not forget that the registered design of the plaintiffs is of a very recent date. In case of a recent monopoly which is seriously disputed on various grounds such as prior publication, lack of originality trade variation etc. it will not be proper to grant an injunction. There is a serious question to be argued as to whether the design is valid or not, and on the facts l am not satisfied that the balance of convenience requires an interim injunction, particularly in view of the undertaking which the defendants are prepared to give.
23. Counsel for the plaintiffs says that the effect of Section 53 of the Act is to grant a statutory right to the person who happens to have got registered and that that person has an absolute statutory right until the registration is set aside. I do not agree. The reason is that it really does not matter much in this case whether the defendants' defenses are considered in the infringement suit or in the cancellation application. The defense and the cancellation application are both before the court now. Whether in one form or the other there is a serious dispute as to whether the design is the proper subject of a monopoly. In the present case undoubtedly the design is a recent one, the monopoly of which is sought to be established.
CS(OS) Nos.1989/2010 & 1993/2010 Page 44 of 78 The principle which applies to monopolies in patents equally applies to the "comparatively minor monopoly in designs" (Smith v. Grigg Ltd., (supra) per Scrutton, L.J., at page 153). Applying the accustomed principles of Order 39 Rules I and 2 Civil Procedure Code it appears to me that the plaintiffs have failed to establish a case as would entitle us to grant an interlocutory injunction."
7.3 In F. Hoffmann - LA Roche Limited v. Cipla Ltd., 2009
(40) PTC 125 (Del), the Division Bench of this Court was
considering an appeal filed by the plaintiff against the refusal of
injunction by the learned Single Judge. It was the case of the
plaintiff that it held a valid patent for the drug Tarceva, the
generic form of which was being manufactured and sold by the
Defendant Cipla. It was urged by the plaintiff that the holder of a
patent was entitled prima facie to the grant of an injunction since
such patent would have been granted after examination at
several levels including the oppositions thereto at the pre-grant
and post-grant stage. It was further urged that unless the
Defendant was able to discharge the heavy burden of showing
that it had a stronger prima facie case than the plaintiff, it should
not be permitted to defeat the right of the plaintiff to an
injunction against infringement by casually raising a challenge to
the validity of such patent. While negativing this plea it was
observed by S. Muralidhar, J. for the Division Bench as under:
"Principles that should govern while considering an application for grant of an injunction in a suit for infringement of a patent
CS(OS) Nos.1989/2010 & 1993/2010 Page 45 of 78
49. The submission of the appellant is that once the plaintiff has been able to show that it has a prima facie case, injunction should automatically follow. Since the plaintiffs hold a valid patent in respect of Erlotinib Hydrochloride (polymorphs A&B), which was not shown by the defendant to have been obtained by fraud, the plaintiff had made out a prima facie case of infringement and an injunction should automatically follow. It is submitted that that the patent granted to the plaintiffs in the instant case has undergone multiple level scrutiny and examination in terms of the procedures outlined under the Patents Act, 1970 as amended in 2005. The publication of the application under Section 11(A)(7), the request for examination by the application under Section 11(B) (i.e. the examination by any third party interested), overall examination by an expert technically qualified as examiner under Section 12, the consideration of the examiner's report by the Controller under Section 14, the disposal of the pre-grant opposition to the plaintiff's application for grant of patent by any person in terms of Section 25(1), a full blown post grant opposition under Section 25(2) and the final grant of patent upon an overall holistic view under Section 43. It is submitted that the grant of a patent after following the procedure involving multi-layered scrutiny must be given considerable weight. Unless the defendant is able to discharge the heavy burden of showing that it has a stronger prima facie case than the plaintiff, it should not be permitted to defeat the right of the plaintiff to an injunction against infringement by casually raising a challenge to the validity of such patent. Reliance is placed on the judgment in American Cyanamid Company v. Ethicon Ltd. (1975) 1 All. E.R. 504, Raj Prakash v. Mangat Ram Choudhary, AIR 1978 Delhi 1, Proctor v. Bayley, 1889 (XLII) Ch. 390, Telemecanique Controls v. Schnider, 94 (2001) DLT 865: 2002 (24) PTC 632 (DEL) (DB), Hindustan Lever v. Lalit Wadhwa, 2007 (35) PTC 377, Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, Laxmi Patel v. Chetan Bhat Shah, JT 2001 (10) SC 285.
50. The judgment of the learned Single Judge has been assailed as proceeding on incorrect principles. A separate note has been filed by the plaintiff indicating what according to it are errors in judgment. It sought to be contended that even after finding that there was a prima facie case made out by the plaintiff, the
CS(OS) Nos.1989/2010 & 1993/2010 Page 46 of 78 learned single Judge split it into a two-stage test by first determining whether the plaintiff had a prima facie case and thereafter whether there was a prima facie case made out by the defendant. It is submitted that there is no precedent indicated by the learned Single Judge for adopting this course. The judgment is criticized for using a multitude of phrases in deciding this issue. At one place the impugned judgment holds that the case of the defendant "is not implausible", at another place it is stated that defendant has "a credible or arguable challenge to the plaintiff's patent" and at another place that the defendant has not made "a palpably unfounded claim".
51. It is contended on behalf of the defendant that under the Patents Act, 1970, as contrasted with the Trade Marks 1999, there is no presumption of validity of a patent. This is evident from reading of Section 13(4) as well as Sections 64 and 107 of the Act. It is possible to raise multiple challenges to validity of patent at various stages. It could be at the pre-grant and post-grant stages before the Controller of Patents. Thereafter before the Appellate Board or in a suit for infringement the defendant could question the validity of a patent on the grounds set out in Section 64. The patent in the instant case was, therefore, vulnerable to challenge notwithstanding it surviving the challenge at the pre-grant stage. The object behind this was to ensure that known inventions are not granted patents and that the patent is used for the public benefit.
52. The above submissions have been considered. It must be clarified that this Court has held already that the Plaintiffs have failed to make out a prima facie case. The above submissions of the plaintiffs are therefore being dealt with assuming, as the learned Single Judge did, that the Plaintiffs have made out a prima facie case. Given the scheme of Patents Act it appears to this Court that it does contemplate multiple challenges to the validity of a patent. Unlike Section 31 of the Trade Marks Act which raises a prima facie presumption of validity, Section 13(4) of the Patents Act 1970 specifically states that the investigations under Section 12 "shall not be deemed in any way to warrant the validity of any patent." Section 48 of the Act also is in the form of a negative right preventing third parties, not having the consent of the patent holder, from making, selling or importing the
CS(OS) Nos.1989/2010 & 1993/2010 Page 47 of 78 said product or using the patented process for using or offering for sell the product obtained directly by such process. It is also made subject to the other provisions of the Act. This is very different from the scheme of the Trade Marks Act as contained in Section 28 thereof. Section 3(d) itself raises several barriers to the grant of a patent particularly in the context of pharmaceutical products. It proceeds on the footing inventions are essentially for public benefit and that non-inventions should not pass off as inventions. The purpose of the legal regime in the area is to ensure that the
inventions should benefit the public at large. The mere registration of the patent does not guarantee its resistance to subsequent challenges. The challenge can be in the form of a counter claim in a suit on the grounds set out in Section 64. Under Sections 92 and 92 A the Central Government can step at any time by invoking the provision for compulsory licencing by way of notification. Therefore, the fact that there is a mechanism to control the monopoly of a patent holder (Section 84 and Section 92) and to control prices (by means of the drug price control order) will not protect an invalid grant of patent.
53. The plea of the plaintiff that since there is a multi- layered, multi-level examination of the opposition to the grant of patent it should accorded the highest weightage, is not entirely correct. The contention that there is a heavy burden on the defendant to discharge since it has to establish that it has a stronger prima facie case of the plaintiff is contra indicated of the decisions in the context of Section 13(4). Reference may be made to the decisions in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444 : PTC (Suppl) 731 (SC), Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd., AIR 2000 Delhi 23 : 1999 PTC (19) 479 (DEL), Bilcare Ltd. v. Amartara Pvt. Ltd., 2007 (34) PTC 419 (Del), Surendra Lal Mahendra v. Jain Glazers, (1979) 11 SCC 511. In Beecham Group Ltd. v. Bristol Laboratories Pty Ltd., (1967-68) 118 CLR 618 and Australian Broadcasting
Corporation v. O'Neill, (2006) 229 ALR 457 it was held that the defendant alleging invalidity bears the onus of establishing that there is "a serious question" to be tried on that issue. In Hexal Australai Pty Ltd. v. Roche Therapeutics Inc. 66 IPR 325 it was held that where the validity of a
CS(OS) Nos.1989/2010 & 1993/2010 Page 48 of 78 patent is raised in interlocutory proceedings, "the onus lies on the party asserting invalidity to show that want of validity is a triable question." In Abbot Laboratories v. Andrx Pharmaceuticals Inc. decision dated 22nd June 2006 of the U.S. Court of Appeals for the Federal Circuit 05-1433 the Court of Appeals followed its earlier ruling in (Helifix Ltd. v. Blok-Lok Ltd. 208 F.3d 1339 where it was held (at 1359): In resisting a preliminary injunction, however, one need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself. (emphasis supplied) In Erico Int'll Corprn v. Vutec Corprn (U.S. Court of Appeals for the Federal Circuit, 2007-1168) it was held that the "defendant must put forth a substantial question of invalidity to show that the claims at issue are vulnerable."
54. In the present case, the grant of a patent to the plaintiffs for Erlotinib Hydrochloride as a mixture of Polymorphs A and B will not ipso facto entitle them to an interim injunction if the defendant is able to satisfy the court that there is a serious question to be tried as to the validity of the patent. The use by the learned Single Judge of the
expressions "strong credible challenge", "arguable case" or that the defendants claim being not unfounded, cannot be termed as
vague and inconsistent since they convey the same meaning in the context of the strength of the defendant's challenge.
55. The question before this Court is when can it be said that the defendant has raised a credible challenge to the validity of a patent held by the plaintiff in an infringement action? During the course of the argument it was suggested by counsel that the challenge had to be both strong and credible. Also, the defendant resisting the grant of injunction by challenging the validity of the patent is at this stage required to show that the patent is "vulnerable" and that the challenge raises a "serious substantial question" and a triable issue. Without indulging in an exercise in
CS(OS) Nos.1989/2010 & 1993/2010 Page 49 of 78 semantics, the Court when faced with a prayer for grant of injunction and a corresponding plea of the defendant challenging the validity of the patent itself, must enquire whether the
defendant has raised a credible challenge. In other words, that would in the context of pharmaceutical products, invite scrutiny of the order granting patent in the light of Section 3(d) and the grounds set out in Section 64 of the Patents Act 1970. At this stage of course the Court is not expected to examine the challenge in any great detail and arrive at a definite finding on the question of validity. That will have to await the trial. At the present stage of considering the grant of an interim injunction, the defendant has to show that the patent that has been granted is
vulnerable to challenge. Consequently, this Court rejects the contentions of the plaintiffs on this issue and affirms the impugned judgment of the learned Single Judge."
Defendants challenge to validity of patent
"65. In the view of this Court, a bare perusal of the order of the Patent Controller would indicate that neither of the above arguments has been considered, and in any event not in the detailed manner in which they have been advanced before this Court. It is perfectly possible that the Controller had no occasion to consider such argument as it was not raised before him. That is perhaps the very purpose of the legislature permitting a challenge by a defendant to the validity of a patent in answer to an infringement suit, even if such defendant had not earlier raised an opposition either at pre-grant or the post-grant stages. Therefore a patent which survives the pre-grant and post-grant challenges can still be made vulnerable on grounds different from the ones raised at those stages. The fact that the challenge is on grounds not urged at those stages, would lend credibility to the challenge. If the challenge is on the same grounds considered and rejected by the Controller of Patents, then of course, the burden on the defendant to demonstrate credibility of the challenge would be considerably higher degree."
"71. The discussion on this aspect is concluded by concurring with the learned Single Judge that, assuming that the plaintiffs held a patent for the
CS(OS) Nos.1989/2010 & 1993/2010 Page 50 of 78 product which was the subject matter of the suit for infringement, the defendant has raised a credible challenge to the validity of the patent by raising a serious triable and substantial question that renders it vulnerable to challenge."
"Summary of conclusions
85. To summarise our conclusions:
(vi) Notwithstanding the above, assuming that the plaintiffs held a patent for the product which was the subject matter of the suit for infringement, the grant of such patent to the plaintiffs will not ipso facto entitle them to an interim injunction if the defendant is able to satisfy the court that there is a serious question to be tried as to the validity of the patent. In the present case, the defendant has raised a credible challenge to the validity of the patent by raising a serious triable and substantial question that renders it
vulnerable to challenge."
7.4 In M/s Standipack Pvt. Ltd. v. M/s Oswal Trading
Company Ltd., AIR 2000 DELHI 23, the plaintiff sought an
injunction against the defendants from manufacturing or using
the patented pouch for storing/dispensing liquids which was
defended on various grounds inter alia that the claimed invention
was not novel and the application for revocation was pending.
The injunction application was dismissed by this Court. Dr. M.K.
Sharma, J., as he then was of this Court, held as under:-
"15. It has been held in a series of judgments that no presumption of validity attaches to a patent granted by the Controller under the Act notwithstanding examination and investigation made under Sections 12 and 13. In this connection reference may be made to a decision in Bishwanath Prasad v. Hindustan Metal Industries, reported in (1979) 2 SC 511 at p.521: AIR 1982 SC 1444 : 1979 All LJ 290 at p.296, Hindustan Lever Ltd. v. Godrej Soaps Ltd., reported in AIR 1996 Cal 367 at p.381 and M/s.
CS(OS) Nos.1989/2010 & 1993/2010 Page 51 of 78 Niky Tasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., reported in AIR 1985 Delhi 136 at p.138. In Surendra Lal Mahendra v. M/s. Jain Glazers & Others, reported in ILR 1981 (1) Delhi 257, the Delhi High Court relying upon the judgment in Smith v. Grigg Ltd. 41 RPC 149, held that despite all the safeguards and circumspection contemplated in various provisions of the Act against grant of patent in respect of a spurious, purloined or fake invention, the Legislature minced no words in clarifying its intendment that no presumption of validity would attach to a patent granted by the Controller under the Act, notwithstanding examination and investigation made under Sections 12 & 13 thereof.
16. When the conditions referred to in Section 64 are examined and applied to the facts and circumstances of the present case in the light of the observations made herein before, it is clear that the use of the pouches for packaging purposes of the nature of the one used by the plaintiff and in respect of which patent has been granted was widely prevalent. The same is also an admitted position when the plaintiff has stated that the storage of liquid products other than liquid in a pouch does not constitute a novel idea. Some of the defendants have filed applications for revocation of the patent granted in favor of the plaintiff under section 64 of the Patents Act. There are cases where it is held that when an
application is filed seeking for revocation of the patent and questioning the validity of the patent the court should not grant an injunction. It is settled law that in an action for
infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed. In this connection reference may be made to a decision of the Madras High Court in V. Manicka Thevar v. M/s. Star Plough Works, AIR 1965 Mad 327 at p.328, wherein it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant
CS(OS) Nos.1989/2010 & 1993/2010 Page 52 of 78 from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant. In M/s. Niky Tasha India Pvt. Ltd. Vs. M/s. Faridabad Gas Gadgets Pvt. Ltd. AIR 1985 Delhi 136 at p.140 (supra) it was observed by this court that no injunction should be granted when there is a serious question of the validity of the design to be tried in the suit and an application for cancellation has been made."
7.5 In Bilcare Ltd. v. Amartara Pvt. Ltd., 2007 (34) PTC
419 (Del.), the plaintiff sought an interim injunction for
restraining the defendant in respect of metallized packaging film
patent of the plaintiff. An ex-parte injunction was passed against
the defendant who filed an application for vacating the same.
The ex-parte stay order was vacated on the ground that no prima
facie case was made out. The patent was held to be a recent one
and post grant objections to the same were pending. S.K. Kaul, J.
held that it was not sufficient for the grant of an injunction that a
patent is registered and the strength of the defence including the
revocation application had to be looked into. The relevant
findings of this Court have been reproduced hereunder:-
"84. The conspectus of the aforesaid decisions is that it is not sufficient for the grant of an injunction that a patent is registered and the strength of the defense including the revocation application have to be looked into."
89. The result of the aforesaid is that the plaintiff has failed to make out a prima facie case for the continuation of the interim injunction on account of what has been discussed hereinabove. In fact the ex
CS(OS) Nos.1989/2010 & 1993/2010 Page 53 of 78 parte injunction has resulted in loss to the defendant and the injunction has been obtained by not disclosing the complete facts including the important aspect of the plaintiff sourcing the material through Nan Ya Plastics Corporation, Taiwan.
90. The patent was granted recently and the objections to the same are pending post grant. The balance of convenience is in fact in favor of the vacation of the injunction and any continuation of the injunction would cause loss to the defendant and not to the plaintiff. The plaintiff can be protected by directing the defendant to keep accounts of the sales of the film in question during the pendency of the suit and filing the same on a quarterly basis with copy to the plaintiff. Ordered accordingly."
7.6 In B. Braun Melsungen Ag v. Rishi Baid, 2009 (40) PTC
193 (Del.), the plaintiffs sought an ad-interim injunction for
restraining the defendants from dealing with safety I.V.
catheters/cannulae on the ground that it infringed the plaintiffs‟
registered patent. B.D. Ahmed, J. held that prima facie, there
was a serious challenge to the validity of a recent patent and,
therefore, the plaintiffs were not entitled to ad-interim injunction.
The relevant findings of this Court have been reproduced
"41. Having examined the arguments advanced by the counsel for the parties and the case law submitted by them, I am of the view that the plaintiffs are not entitled to an ad interim injunction as prayed for by them. It is clear that the registration of the patent per se does not entitle the plaintiffs to an injunction. The defendants' case is also to be examined and it is only after the entire case as a whole is considered that the Court can come to a decision as to whether the plaintiffs are entitled to an injunction or not. In the present case the patent is a recent one and, prima facie, there is a serious challenge to the validity of the patent. This has been amply demonstrated by the learned Counsel for the defendants in the course of his arguments noted
CS(OS) Nos.1989/2010 & 1993/2010 Page 54 of 78 above. I have also noted that the revocation of a patent can be sought under Section 64 of the Patents Act, 1970 by a defendant in an
infringement suit by way of a counter-claim. The defendants have already preferred such a counter- claim. Apart from this, under Section 107 of the said Act all the pleas available for revocation of a patent are also available as a defence in a suit for infringement. The question of validity of the plaintiffs' Patent No. 210062 is not free from doubt at this prima facie stage. There are more reasons than one for entertaining such doubts. One of the most important reasons is the existence of prior Article By way of illustration, I have already referred to U.S Patent No. 5,135,504. In fact, there are other such patents which were placed before this Court and find place in the documents filed by the defendants. Prima facie, the defendants have been able to show that, first of all, the field of I.V. catheters is a crowded one. Secondly, needle guards, in one form or the other, have been used for decades by several companies. Thirdly, the defendants' safety I.V. catheter/cannula is somewhat different from the plaintiffs' Patent No. 210062."
7.7 In Glaverbel S.A. v. Dave Rose, 167 (2010) DLT 6, the
plaintiff sought an ad-interim injunction for restraining the
defendants from sale of copper free mirrors for which the plaintiff
had a registered patent. The application was dismissed on the
ground of prior art and a substantial, tenable and credible
challenge to the validity of the patent. Manmohan Singh, J. held
that at the interlocutory stage, the Courts shall refrain from
commenting on the validity of the patent and that it was
sufficient to say that on the basis of the prior arts, there was a
substantial, tenable and credible challenge made out which
would be tested at the time of trial. The relevant findings of this
Court have been reproduced as under:-
CS(OS) Nos.1989/2010 & 1993/2010 Page 55 of 78 "71. The challenge to the patent made by the defendants is not unfounded and rather it raises a serious credible challenge to the patent and the same is discernible from the fact that the German Federal court rejected the claims
closest to those of the Indian patent on the grounds of lack of novelty and inventive step. Incidentally, the German court while rejecting the claims of the patent of the present plaintiff relied upon the same prior arts which have been relied upon by the defendants in the present proceeding. Thus, as a matter of proprietary and also international comity which warrants that the judicial decision of the foreign tribunal/court may be respected in the same manner as that of the national court, this Court is not inclined to take a different view atleast at an interlocutory stage."
"78. At this interlocutory stage, this Court refrains from commenting as to whether the patent is bad or not. Suffice to say that a consideration of the prior arts cited by the defendants and bare perusal of the Judgment of the German Federal court, it can be said that a substantial, tenable and credible challenge is made out which is required to be tested at the time of trial and thus, at this stage, the grant of interim injunction is not warranted."
"Principles for grant of Injunction
85. The principles for grant of injunction have been succinctly discussed in American Cynamide Co.'s case (supra) which have been accepted and followed in the case of Franz Xaver Huemer v. New Yash
Engineers, AIR 1997 Delhi 79 wherein it was held in paras 28, 31 and 32 as under:
28 It is true that earlier, in the well known case in American Cyanamid v. Ethican
(interlocutory) 1975 RPC 513 (at 541,
542), it was observed that it was
sufficient if a 'triable issue' was there. According to Lord Diplock, the Court
must also be satisfied if there is a
"serious question to be tried" :
therefore it should not try to assess
relative merits by looking into prima
facie case in the affidavit evidence but
CS(OS) Nos.1989/2010 & 1993/2010 Page 56 of 78 should instead turn at once to the
balance of convenience; if damages to
be awarded at the trial can adequately
compensate plaintiff and the defendant
could pay them, injunction could be
refused; if not, injunction could be refused; if not, injunction could be granted; if
defendant could be compensated by way of
damages later by plaintiff, injunction by way of damages later by plaintiff, injunction could be granted; where there is doubt
about the adequacy of damages to one or
both ; any factor which may affect balance of convenience is to be considered. If the balance is even, the relative strength of the case is to be considered.
31. It is said that in the law of patents, it is not sufficient merely to have
registration of a patent. The Court must
look at the whole case, the strength of the case of the patentee and the strength of
the defence such as those falling under
Section 107 read with Section 64.
32. The need to establish prima facie has been emphasized in recent cases in
England and in India. The Court has to
consider whether there is prima facie proof of infringement (Lord Denning M.R. &
Megaw LJ Hubbard v. Vosper(1972) 1 All ER 1023. Prima facie proof of validity is
different from prima facie proof of
infringement as stated by Sultan Singh, J. in NRDC Co. v. DCM Ltd. AIR 1980 Delhi 132.
In that case, the learned Judge quoted
Terrel on the law of Patents (12th Ed. Para 830) : (at p 135 of AIR):
The plaintiff must first establish such facts as will satisfy the Court that there are
strong prima facie reasons for acting on the supposition that the patent is valid. The most cogent evidence for this purpose is
either that there has been a previous trial in which the patent has been held to be
valid, or that the patentee has worked and enjoyed the patent for many years without dispute or may be that as between the
CS(OS) Nos.1989/2010 & 1993/2010 Page 57 of 78 parties the plaintiff is relieved from the onus of establishing validity, as where the defendant has admitted it or is so placed in his relationship to the plaintiff as to be estopped from denying it."
"87. As I have already stated that the
defendants have raised substantial, tenable and credible challenge to the patent which raises a triable dispute, therefore, the plaintiff has failed to make out a prima facie case for the grant of ad interim injunction. Considerable doubt has been raised by this Court about the working of the patent in commercial sense and on the other hand, the defendants are stated to be in the business of manufacturing mirrors since the year 1993."
7.8 In J. Mitra and Company v. Keshar Medicament, 2008
(36) PTC 568 (Del), S.K. Kaul, J. interpreted Articles 33(1) and
35(2) of the Patent Cooperation Treaty and held that the
International Preliminary Examination Report cannot be said to
have much bearing in considering the validity of the patent. The
relevant paragraphs of the judgment have been reproduced
"41. A perusal of the PCT International Preliminary Examination Report shows that it also notes that the said claims 1-13 of the plaintiff's application lack inventive step under PCT Article 33(3). It is observed in the said report that claims 1-13 lack an inventive step under PCT Article 33(3) as being obvious over US patent Nos. 4,962,023, 5,008,080, and 5,958,790 each of which disclose a kit comprising a multi-layer test device that includes one or more test areas that can be coated with one or more antigens for the assay of antibodies in a sample and each discloses a colloidal gold label for the visualization of antigen antibody complexes as well as Protein A for the capture of IgG. The said report objects to certain individual claims on grounds of lack of clarity as the claims are indefinite. The International Search Report states that the claimed invention cannot be considered to involve an inventive step when the document is combined with
CS(OS) Nos.1989/2010 & 1993/2010 Page 58 of 78 one or more documents of particular relevance, such combination being obvious to a person skilled in the art. It may be useful to reproduce the relevant provisions of PCT Article 33 which are as under:
1. The objective of the international
preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention
appears to be novel, to involve an inventive step (to be non-obvious), and to be
2. For the purposes of the international
preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.
3. For the purposes of the international
preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
4. For the purposes of the international
preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological
sense) in any kind of industry. "Industry" shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property..."
42. The PCT preliminary examination report indicates that claims 1-13 of the plaintiff lack an inventive step but are novel and can be considered industrially applicable. It may however be noticed that the said report is in respect of the diagnostic kit of the plaintiff. Furthermore, Article 33(1) of the PCT states that 'the objective of the international preliminary examination is to formulate a preliminary and non binding opinion on the aspects of novelty, industrial applicability and non obviousness. Article 35(2) of the PCT states that the
International Preliminary Report would not contain any statement on the patentability or
CS(OS) Nos.1989/2010 & 1993/2010 Page 59 of 78 unpatentability of the claimed invention according to any national law. The International Search Report (7th Nov. 2002) is again with regard to the 'Diagnostic Kit for Invitro detection of Hepatitis C'. The said International Preliminary Examination Report thus cannot be said to have much
bearing in considering the validity of the patent."
7.9 The principles for grant of interim injunction to the plaintiff
in patent matters have been summarized by the Division Bench
of Madras High Court in the case of TVS Motor Company
Limited v. Bajaj Auto Limited, (2009) 40 PTC 689 (Mad.) as
"69. When we refer to the various decisions relied upon by the learned senior counsel for the respective parties 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
CS(OS) Nos.1989/2010 & 1993/2010 Page 60 of 78 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."
CS(OS) Nos.1989/2010 & 1993/2010 Page 61 of 78 7.10 The well settled principles for grant of interim injunction in
patent matters laid down by the Courts in the aforesaid
judgments are summarized as under:-
7.10.1 The registration of a patent per se does not entitle the
plaintiffs to an injunction. The certificate does not establish a
7.10.2 There is no presumption of validity of a patent, which
is evident from the reading of Section 13(4) as well as Sections
64 and 107 of the Patents Act.
7.10.3 The claimed invention has to be tested and tried in the
laboratory of Courts.
7.10.4 The Courts lean against monopolies. The purpose of
the legal regime in the area is to ensure that the inventions
should benefit the public at large.
7.10.5 The plaintiff is not entitled to an injunction if the
defendant raises a credible challenge to the patent. Credible
challenge means a serious question to be tried. The defendant
need not make out a case of actual invalidity. Vulnerability is the
issue at the preliminary injunction stage whereas the validity is
the issue at trial. The showing of a substantial question as to
invalidity thus requires less proof than the clear and convincing
showing necessary to establish invalidity itself.
7.10.6 At this stage, the Court is not expected to examine the
challenge in detail and arrive at a definite finding on the question
of validity of the patent. That will have to await at the time of
CS(OS) Nos.1989/2010 & 1993/2010 Page 62 of 78 trial. However, the Court has to be satisfied that a substantial,
tenable and credible challenge has been made.
7.10.7 The plaintiff is not entitled to an injunction, if the
patent is recent, its validity has not been established and there is
a serious controversy about the validity of the patent.
8.1 Applying the aforesaid principles to the facts of the present
case, this Court is of the prima facie opinion that the defendants
have raised a credible challenge to the validity of the patent.
The defendants have raised the following serious questions to be
tried in this suit:-
8.1.1 Whether the claimed invention is not patentable under Section 3(d) of the Patents Act as it is a mere use of a known process. The claimed invention does not teach any process by which the beam patterns are obtained and therefore, the patent is liable to be revoked under Section 64(1)(d) of the Act?
8.1.2 Whether the claimed invention is not patentable under Section 3(f) of the Act because the claimed invention is a mere arrangement of known devices and therefore, the patent is liable to be revoked under Section 64(1)(d) of the Act?
8.1.3 Whether the plaintiffs‟ invention lacks novelty in view of US 6,094,165 (Smith) and WO 2006004463 (Hagerman) and therefore, the patent is liable to be revoked under Section 64(1)(e) of the Act?
8.1.4 Whether the claimed invention lacks inventiveness in view of the prior arts of US.6,094,165 and US.5,581,260 and therefore, the patent is liable to be revoked under Section 64(1)(d)&(f) of the Act?
8.1.5 Whether the plaintiffs‟ invention is obvious and of natural consequence to a person of skill in the domain of wireless telecommunication technology and therefore, the patent is liable to be revoked under Section 64(1)(f) of the Act?
CS(OS) Nos.1989/2010 & 1993/2010 Page 63 of 78 8.1.6 Whether the plaintiffs‟ invention was known to the public by prior publication dated March 1, 2006 at http://mobiledevdesign.com/hardware_news/radio_wireless_soluti on_boosts/, and http://rfdesign.com/mag/radio_wireless_solution_ boosts/ and therefore, the patent is liable to be revoked under Section 64(1)(e) of the Act?
8.1.7 Whether the asymmetric beams have been known since 1975 in the following documents:-
(a) Elliott, R.S., Design of Line Source Antennas for Narrow Beamwidth and Asymmetric Low Sidelobes, IEEE Transactions on Antennas and Propagation, 1975. OR
(b) Trucco, A., Synthesizing Asymmetric Beam Patterns, IEEE Journal of Oceanic Engineering, 2000. OR
(c) Thornton, John, A Low Sidelobe Asymmetric Beam Antenna for High Altitude Platform Communications, IEEE Microwave and Wireless Components Letters, Vol. 14, No. 2, 2004. OR
(d) Ramakoteswara Rao, G.V. et al., Design and Development of Asymmetric Beam Monopulse Antenna System at Ka-Band, APMC2005 Proceedings, 2005.
8.1.8 The International Search Report and the Written Opinion of Anne Marie Scott have opined that the invention of the plaintiffs suffer lack of inventive step due to disclosure of two prior arts i.e. Hagerman and Ishikawa.
8.1.9 The United States Patent and Trademark Office have issued a final rejection in respect of the plaintiffs‟ invention on the ground of lack of novelty and inventive step with respect to Hagerman and Ishikawa.
8.1.10 The European Patent Office have issued a non-final rejection in respect of the plaintiffs‟ invention on the ground of lack of novelty, inventive step, insufficient disclosure and vagueness of claims with respect to prior arts, namely, Gilhousen Klein S [US] et al and Nawal El-Fishawy et al.
8.2 Since the defendants have raised credible challenge to the
validity of the patent, the plaintiffs are not entitled to the interim
injunction in terms of the principles laid down in M/s Niky Tasha
India Pvt. Ltd. (supra), F. Hoffmann - LA Roche Limited
CS(OS) Nos.1989/2010 & 1993/2010 Page 64 of 78 (supra), M/s Standipack Pvt. Ltd. (supra), Bilcare Ltd.
(supra), B. Braun Melsungen Ag (supra) and Glaverbel S.A.
(supra). At this stage, this Court is not expected to and has not
examined the challenge in detail to arrive at a definite finding on
the question of validity of the patent which shall be examined at
the time of trial. However, this Court is satisfied that the
challenge made by the defendants is substantial, tenable and
8.3 Vide order dated 2nd February, 2011, the original record of
the Patent Office was requisitioned by this Court. The brief
summary of the said record is recorded in para 5 above. There is
a serious doubt about the validity of the patent which has to be
tested in the laboratory of this Court. The prima facie
observations of this Court with respect to the record of the patent
office are as under:-
8.3.1 The original record of the Patent Office does not reveal
any investigation under Sections 12 and 13 of the Act to
ascertain the novelty and inventiveness of the claimed invention.
8.3.2 The Patent Office did not examine whether the
invention falls under any of the categories of non-patentable
inventions under Sections 3 and 4 of the Act.
8.3.3 This Court is not impressed with the plaintiffs‟
contention that the Patent Office has conducted the investigation
but the report of the examiner has not been sent to this Court in
view of Section 144 of the Act. The result of the invention, if any,
CS(OS) Nos.1989/2010 & 1993/2010 Page 65 of 78 has neither been discussed in the original order sheet nor the
findings of the Patent Office are based on any such investigation.
8.3.4 There is no valid publication of the plaintiffs‟
application under Section 11A of the Act as there was an error in
the first publication on 26th September, 2008 whereupon the
plaintiffs submitted an application dated 1st October, 2008 for
fresh publication but no order was passed on the said application
and no fresh publication was carried out.
8.3.5 The plaintiffs amended the application for patent on
4th May, 2010 which was allowed on 9th June, 2010. The amended
application was neither published under Section 11A of the Act
nor the mandatory examination and investigation was carried out
under Sections 12 and 13 of the Act.
8.3.6 The patent was granted on 9th June, 2010 itself by a
non-speaking order. No finding has been recorded in the order
dated 9th June, 2010 (reproduced in para 5.12 above) to the effect
that the claimed invention is novel and innovative; had not been
anticipated by any previous publication or prior claim and that it
does not fall in the category of non-patentable inventions under
Section 3 and 4 of the Act.
8.3.7 The plaintiffs did not disclose the Canadian Application
No.2645740 to the Indian Patent Office which is violative of
Section 8 of the Act and a ground for revocation under Section
64(1)(m) of the Act.
CS(OS) Nos.1989/2010 & 1993/2010 Page 66 of 78 8.3.8 The Patent Office has granted the patent to the
plaintiffs in undue haste without following the due process of law.
8.3.9 The plaintiffs‟ patent is a recent one. The patent was
granted on 9th June, 2010 and the suits were instituted on 22nd
September, 2010, i.e., within four months.
8.3.10 The plaintiffs‟ contention that the Patent Office is not
required to carry out the mandatory investigation and search
under Sections 12 and 13 of the Act in respect of the PCT
applications is not convincing. Sections 12 and 13 of the Act are
8.3.11 The International Search Report issued by World
Intellectual Property Organization in respect of PCT application is
not binding in view of Article 33(1) of the Patent Cooperation
Treaty, which provides that the object of the International
Preliminary Examination is to formulate a preliminary and non-
binding opinion. Article 35(2) of the PCT provides that the
International Preliminary Examination Report shall not contain
any statement on the question whether the claimed innovation is
patentable or not according to any national law. Articles 33(1)
and 35(2) of the PCT are reproduced as under:
"Article 33(1)- The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non- obvious), and to be industrially applicable."
"Article 35(2)- The international preliminary examination report shall not contain any statement on the question
CS(OS) Nos.1989/2010 & 1993/2010 Page 67 of 78 whether the claimed invention is or seems to be patentable or unpatentable according to any national law"
8.3.12 The findings of the ISR and IPRP are not binding on the
Indian Patent Office, and cannot override the provisions of the Act
especially on issues of novelty and inventiveness. Reference to
Sections 13(1) and (2) of the Act indicate that the duties set out
therein for the concerned Examiner are mandatory, in view of use
of the term "shall" in both provisions. It is therefore inconceivable
that the statutory duties of the concerned Examiner to conduct a
prior art search can be set aside or circumvented by reliance on
the findings of the ISR and IPRP. The Draft Manual of the Patent
Practice and Procedure of Indian Patent Office cannot and is not
intended to override statutory provisions. The Preface to the
Draft Manual of the Patent Practice and Procedure of Indian
Patent Office is as under:
"The Manual does not constitute rule making and hence do not have the force and effect of law. Statements made in the Manual are not in themselves an authority for any action by an officer of the Patent Office. While the Manual may be regarded as a handbook, it does not impose any particular line of action and may not be quoted to that end."
8.3.13 The challenge to the patent made by the defendants is
not unfounded and rather it raises a serious credible challenge to
the patent and the same is discernible from the non-final
rejection of the European Patent Office and the final rejection of
the United States Patent and Trademark Office of the claims
CS(OS) Nos.1989/2010 & 1993/2010 Page 68 of 78 closest to those of the Indian Patent on the grounds of lack of
novelty and inventive step.
9.1 In the facts and circumstances of this case and considering
that the defendants have raised a substantial, tenable and
credible challenge to the patent, the plaintiffs are not entitled to
interim injunction, and therefore, I.A. Nos. 13005/2010 and
13017/2010 under Order XXXIX Rules 1 and 2 of the Code of Civil
Procedure are dismissed. I.A. Nos.16457/2010 and 15387/2010
under Order XXXIX Rule 4 of the Code of Civil Procedure are
allowed with the following directions:-
9.1.1 The trial of the suit shall be expedited in terms of the judgment of the Supreme Court in the case of Bajaj Auto Limited vs. TVS Company Limited, 2009 (2) CTMR 329 (SC);
9.1.2 The defendants are directed to maintain the accounts in respect of the sales arising out of the impugned products and file it on a monthly basis in this Court so that the plaintiffs may be adequately compensated in the event of the failure of the defendants in the trial; and
9.1.3 The defendants shall file an undertaking by way of an affidavit within two weeks from today that in case the suit of the plaintiff is decreed after the trial, the defendants shall pay the profits and damages on their sale of impugned products to the plaintiffs. 9.2 The observations made hereinabove are prima facie and
shall not constitute any expression of final opinion on the issues
involved and shall have no bearing on the merits of the case.
CS(OS) Nos.1989/2010 & 1993/2010 Page 69 of 78
10.1 All the parties have submitted the actual costs incurred by
them in this matter which are as under:-
Plaintiffs‟ legal costs : `35,87,310/-
Defendant No.1‟s legal costs : `44,48,753/-
Defendant No.3‟s legal costs : `7,22,000/-
Plaintiffs‟ legal costs : `53,80,965/-
Defendant No.1‟s legal costs : `42,68,000/-
Defendant No.3‟s legal costs : `7,22,000/-
10.2 In Salem Advocate Bar Association v. Union of India,
AIR 2005 SC 3353, the Supreme Court held that actual
reasonable costs should be awarded to the successful party. The
findings of the Apex Court are reproduced hereunder:-
"39. Judicial notice can be taken of the fact that many unscrupulous parties take advantage of the fact that either the costs are not awarded or nominal costs are awarded on the unsuccessful party. Unfortunately, it has become a practice to direct parties to bear their own costs. In large number of cases, such an order is passed despite Section 35(2) of the Code. Such a practice also encourages filing of frivolous suits. It also leads to taking up of frivolous defences. Further wherever costs are awarded, ordinarily the same are not realistic and are nominal. When Section 35(2) provides for cost to follow the event, it is implicit that the costs have to be those which are reasonably incurred by a successful party except in those cases where the Court in its discretion may direct otherwise by recording reasons thereof. The costs have to be actual reasonable costs including the cost of the time spent by the successful party, the
transportation and lodging, if any, or any other
CS(OS) Nos.1989/2010 & 1993/2010 Page 70 of 78 incidental cost besides the payment of the court fee, lawyer's fee, typing and other cost in relation to the litigation. It is for the High Courts to examine these aspects and wherever necessary make requisite rules, regulations or practice or direction so as to provide
appropriate guideline for the subordinate courts to follow."
10.3 In Ramrameshwari Devi v. Nirmala Devi, (2011) 8 SCC
249, the Supreme Court held that the Courts have to take
pragmatic realities into consideration and have to be realistic in
imposing the costs. The relevant paragraphs of the said judgment
are reproduced hereunder:-
"45. ...We are clearly of the view that unless we ensure that wrongdoers are denied profit or undue benefit from the frivolous litigation, it would be difficult to control frivolous and uncalled for litigations. In order to curb uncalled for and frivolous litigation, the courts have to ensure that there is no incentive or motive for uncalled for litigation. It is a matter of common experience that court's otherwise scarce and valuable time is consumed or more appropriately wasted in a large number of uncalled for cases."
"52. The main question which arises for our consideration is whether the prevailing delay in civil litigation can be curbed? In our considered opinion the existing system can be drastically changed or improved if the following steps are taken by the trial courts while dealing with the civil trials.
A. Pleadings are foundation of the claims of parties. Civil litigation is largely based on documents. It is the bounden duty and obligation of the trial judge to carefully scrutinize, check and verify the pleadings and the documents filed by the parties. This must be done immediately after civil suits are filed.
B. The Court should resort to discovery and production of documents and interrogatories at the earliest according to the object of the Act. If this exercise is carefully carried out, it would focus the
CS(OS) Nos.1989/2010 & 1993/2010 Page 71 of 78 controversies involved in the case and help the court in arriving at truth of the matter and doing substantial justice.
C. Imposition of actual, realistic or proper costs and or ordering prosecution would go a long way in controlling the tendency of introducing false pleadings and forged and fabricated documents by the litigants. Imposition of heavy costs would also control unnecessary adjournments by the parties. In appropriate cases the courts may consider ordering
prosecution otherwise it may not be possible to maintain purity and sanctity of judicial
D. The Court must adopt realistic and pragmatic approach in granting mesne profits. The Court must carefully keep in view the ground realities while granting mesne profits.
E. The courts should be extremely careful and cautious in granting ex-parte ad interim injunctions or stay orders. Ordinarily short notice should be issued to the Defendants or Respondents and only after hearing concerned parties appropriate orders should be passed.
F. Litigants who obtained ex-parte ad interim injunction on the strength of false pleadings and forged documents should be adequately punished. No one should be allowed to abuse the process of the court.
G. The principle of restitution be fully applied in a pragmatic manner in order to do real and substantial justice.
H. Every case emanates from a human or a
commercial problem and the Court must make serious endeavour to resolve the problem within the framework of law and in accordance with the well settled principles of law and justice.
I. If in a given case, ex parte injunction is granted, then the said application for grant of injunction should be disposed of on merits, after hearing both sides as expeditiously as may be possible on a priority basis and undue adjournments should be
CS(OS) Nos.1989/2010 & 1993/2010 Page 72 of 78 avoided.
J. At the time of filing of the plaint, the trial court should prepare complete schedule and fix dates for all the stages of the suit, right from filing of the written statement till pronouncement of judgment and the courts should strictly adhere to the said dates and the said time table as far as possible. If any interlocutory application is filed then the same be disposed of in between the said dates of hearings fixed in the said suit itself so that the date fixed for the main suit may not be disturbed.
53. According to us, these aforementioned steps may help the courts to drastically improve the existing system of administration of civil litigation in our Courts. No doubt, it would take some time for the courts, litigants and the advocates to follow the aforesaid steps, but once it is observed across the country, then prevailing system of adjudication of civil courts is bound to improve.
54. While imposing costs we have to take into consideration pragmatic realities and be
realistic what the Defendants or the Respondents had to actually incur in contesting the litigation before different courts. We have to also broadly take into consideration the prevalent fee structure of the lawyers and other miscellaneous expenses which have to be incurred towards drafting and filing of the counter affidavit, miscellaneous charges towards typing, photocopying, court fee etc.
55. The other factor which should not be
forgotten while imposing costs is for how long the Defendants or Respondents were compelled to contest and defend the litigation in various courts. The Appellants in the instant case have harassed the Respondents to the hilt for four decades in a totally frivolous and dishonest litigation in various courts. The Appellants have also wasted judicial time of the various courts for the last 40 years.
56. On consideration of totality of the facts and circumstances of this case, we do not find any infirmity in the well reasoned impugned
CS(OS) Nos.1989/2010 & 1993/2010 Page 73 of 78 order/judgment. These appeals are consequently dismissed with costs, which we quantify as Rs. 2,00,000/- (Rupees Two Lakhs only). We are imposing the costs not out of anguish but by following the fundamental principle that wrongdoers should not get benefit out of frivolous litigation."
10.4 In Indian Council for Enviro-Legal Action v. Union of
India, (2011) 8 SCC 161, the Supreme Court held that the
Court must adopt a pragmatic approach and in appropriate cases,
realistic costs and compensation be ordered in order to
discourage dishonest litigation. The relevant paragraphs of this
judgment are reproduced hereunder:-
"191. In consonance with the principle of equity, justice and good conscience judges should ensure that the legal process is not abused by the litigants in any manner. The court should never permit a litigant to perpetuate illegality by abusing the legal process. It is the bounden duty of the court to ensure that dishonesty and any attempt to abuse the legal process must be effectively curbed and the court must ensure that there is no
wrongful, unauthorized or unjust gain for anyone by the abuse of the process of the court. One way to curb this tendency is to impose realistic costs, which the Respondent or the Defendant has in fact incurred in order to defend himself in the legal proceedings. The courts would be fully justified even imposing punitive costs where legal process has been abused. No one should be permitted to use the judicial process for earning undeserved gains or unjust profits. The court must effectively discourage fraudulent, unscrupulous and dishonest litigation.
192. The court's constant endeavour must be to ensure that everyone gets just and fair treatment. The court while rendering justice must adopt a pragmatic approach and in appropriate cases realistic costs and compensation be ordered in order to discourage dishonest litigation. The
CS(OS) Nos.1989/2010 & 1993/2010 Page 74 of 78 object and true meaning of the concept of restitution cannot be achieved or accomplished unless the courts adopt a pragmatic approach in dealing with the cases."
10.5 In the recent judgment dated 12th October, 2011 in
Sanjeev Kumar Jain v. Raghubir Saran Charitable Trust,
Civil Appeal No.8610/2011, the Supreme Court held that the
costs should be awarded to the successful party according to the
High Court Rules. The Supreme Court further held that the costs
must be realistic but realistic costs do not extend to actual or
luxurious costs. The Court suggested the amendment of High
Court Rules to provide for realistic costs. The relevant paragraphs
of this judgment are reproduced hereunder:-
"9. Chapter 11 Part C of the Delhi High Court Rules („Rules‟ for short) deals with award of costs in civil suits. Chapter XXIII of the said Rules deals with taxation of costs. Rule 1 relates to appointment of Taxing Officer. Rule 6 provides that advocate's fee should be taxed on the basis of a certificate filed under Rule 2 Chapter 5 but not exceeding the scale prescribed in the schedule to Chapter XXIII. Therefore, the Court could not have awarded costs exceeding the scale that was prescribed in the schedule to the Rules. Doing so would be contrary to the Rules. If it was contrary to the Rules, it was also contrary to Section 35 also which makes it subject to the conditions and limitations as may be prescribed and the provisions of law for the time being in force. Therefore, we are of the view that merely by seeking a consent of the parties to award litigation expenses as costs, the High Court could not have adopted the procedure of awarding what it assumed to be the „actual costs‟ nor could it proceed to award a sum of Rs.45,28,000/- as costs in an appeal relating to an interim order in a civil suit. While we would like to encourage award of realistic costs, that should be in accordance with law. If the law does not permit award of actual costs, obviously courts cannot award
CS(OS) Nos.1989/2010 & 1993/2010 Page 75 of 78 actual costs. When this Court observed that it is in favour of award of actual realistic costs, it means that the relevant Rules should be amended to provide for actual realistic costs. As the law presently stands, there is no provision for award of „actual costs‟ and the award of costs will have to be within the limitation prescribed by section 35."
"21. A serious fallout of not levying actual realistic costs should be noted. A litigant, who starts the litigation, after sometime, being unable to bear the delay and mounting costs, gives up and surrenders to the other side or agrees to settlement which is something akin to creditor who is not able to recover the debt, writing off the debt. This happens when the costs keep mounting and he realizes that even if he succeeds he will not get the actual costs. If this happens frequently, the citizens will lose confidence in the civil justice system. When a civil litigant is denied effective relief in Courts, he tries to take his grievances to „extra judicial‟ enforcers (that is goons, musclemen, underworld) for enforcing his claims/right thereby criminalising the civil society. This has serious repercussions on the institution of democracy.
22. We therefore, suggest that the Rules be amended to provide for „actual realistic costs‟. The object is to streamline the award of costs and simplify the process of assessment, while making the cost „actual and realistic‟. While ascertainment of actuals in necessary in regard to expenditure incurred (as for example travel expenses of witnesses, cost of obtaining
certified copies etc.) in so far as advocates‟ fee is concerned, the emphasis should be on
„realistic‟ rather than „actual‟. The courts are not concerned with the number of lawyers
engaged or the high rate of day fee paid to them. For the present, the Advocate fee should be a realistic normal single fee."
"30. We suggest appropriate changes in the provisions relating to costs contained as per paras 14 to 29 above to the Law Commission of India, the Parliament and the respective High Courts for making appropriate changes."
CS(OS) Nos.1989/2010 & 1993/2010 Page 76 of 78 10.6 Considering the nature of this case and more particularly
that the interim injunction has been declined to the plaintiffs
because the defendants have raised credible challenge to the
patent and this Court has not examined in detail the question of
validity of the patent which shall be examined at the stage of
trial, the order for payment of cost is deferred and, therefore,
further analysis of the aforesaid judgments is not necessary at
this stage. The unsuccessful party, at the end of the trial, shall
be liable to pay the cost to the successful party and the cost
incurred by the parties till now shall be considered at the stage of
final arguments. Considering the high cost of litigation incurred
by both the parties, this Court is concerned about the future cost
of litigation. Both the parties are, therefore, directed to submit
their estimate of future cost before the commencement of trial so
that the parties shall have notice of actual cost that the other
side estimate would be incurring in the course of litigation and
the parties have an opportunity to take appropriate decision as to
manner in which to conduct the litigation. Greater transparency
about cost will promote access to justice. This process shall also
keep the cost in check and potentially eliminate the need for a
detailed assessment at the end as well as dispute as to the
amount of the actual cost. The parties shall maintain a record of
the Court time consumed by them and shall place the same on
record at the time of final arguments. The Court Master shall also
CS(OS) Nos.1989/2010 & 1993/2010 Page 77 of 78 record the time consumed by each of the parties. This Court
shall consider all these matters and shall pass appropriate order
covering the entire gamut of the issue relating to costs at the
stage of final arguments.
CS(OS) Nos.1989/2010 & 1993/2010
List before the Regular Bench as per Roster on 14th
J.R. MIDHA, J
NOVEMBER 04, 2011
CS(OS) Nos.1989/2010 & 1993/2010 Page 78 of 78