Court : MADRAS HC
Brief : Further applying the well laid down principle that when
application for revocation of a patent of the Respondent is
pending before the Appellate Tribunal and when such an
application has been preferred on the ground of existence of a
prior art, obviousness and other formidable grounds as provided
under Section 64 of the Patent's Act, the Court should not grant
injunction in such cases. We hold that in the special facts and
circumstances of the case, grant of interim injunction cannot be
sustained. According to the Appellant the failure of the
Respondent in its initial specification dated 16.07.2002 and the
amended specification of the year 2003, in not specifically
referring to the Honda Patent No.4534322 dated 13.08.1985, and
making a reference to the said patent after the International
89
Search Report dated 13.08.2004 and that too by making a
statement that the said existing Honda Patent related to large
bore size and not with reference to a small bore are all grounds
which require detailed consideration on merits. The allegation of
the Appellant that the Respondent secured the patent by making
a deceptive statement about the bore size of the Honda Patent,
requires a detailed investigation. Further it will have to be stated
that such an allegation of the Appellant cannot be rejected as
baseless or made without any substance. In such circumstances
as held in various decisions referred to above, the grant of
interim injunction would be wholly not justified.
80. In the case on hand, the alleged infringement is in
respect of the improved internal combustion achieved by the
Respondent in a four stroke engine of small bore with twin plugs
operations of lean burn fuel.
Citation : -
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 18.05.2009
C O R A M:
THE HONOURABLE MR.JUSTICE S.J.MUKHOPADHAYA
and
THE HONOURABLE MR.JUSTICE F.M.IBRAHIM KALIFULLA
O.S.A.Nos.91 & 92 of 2008
M/s.TVS Motor Company Limited,
Jayalakshmi Estates,
No.8, Haddows Road,
Chennai – 600 006. .. Appellant in both the OSAs
vs.
M/s.Bajaj Auto Limited,
Bombay-Pune Road,
Akurdi, Pune – 411 035. .. Respondent in both the OSAs
Original Side Appeals against the common order dated
16.02.2008 in O.A.No.1357 of 2007 in C.S.No.1111 of 2007 and
O.A.No.1272 of 2007 in C.S.No.979 of 2007 on the file of this
Court.
For Appellant : Mr.A.L.Somayaji and Mr.P.S.Raman,
Senior Counsel for M/s.T.K.Bhaskar.
For Respondent : Mr.C.A.Sundaram,
Senior Counsel for M/s.A.A.Mohan.
- - - - -
2
C O M M O N J U D G M E N T
F.M.IBRAHIM KALIFULLA, J.
O.S.A. No.91 of 2008 has been filed by the Appellant as
against the fair and decreetal order dated 16.02.2008, passed in
O.A.No.1272 of 2007 in C.S.No.979 of 2007, in and by which, the
Appellant's application for an order of interim injunction
restraining the Respondent herein from in any way interfering
with the manufacturing and marketing of the Appellant's products
using Internal Combustion (IC) engine with 3 valves and 2 spark
plugs pending the disposal of C.S.No.979 of 2007 was rejected.
2. O.S.A. No.92 of 2008 has also been filed by the same
Appellant challenging the order dated 16.02.2008, passed in
O.A.No.1357 of 2007, in C.S.No.1111 of 2007, wherein, the
Respondent's prayer for an ad-interim injunction restraining the
Appellant herein from in any manner infringing the Respondent's
Patent No.195904 and/or from using the technology/invention
described in the said Patent No.195904 and/or from
manufacturing, marketing etc., for sale or exporting 2/3
3
wheelers, including the proposed 125 cc 'FLAME' motorcycle
containing an Internal Combustion engine or products which
would infringe the Respondent's Patent No.195904 pending
disposal of C.S.No.1111 of 2007 was granted.
3. By a common order dated 16.02.2008, passed in
O.A.No.1357 of 2007 in C.S.No.1111 of 2007 and O.A.No.1272 of
2007 in C.S.No.979 of 2007, the learned Judge while granting
interim injunction as prayed for by the Respondent in
O.A.No.1357 of 2007 in C.S.No.1111 of 2007, dismissed the
application of the Appellant in O.A.No.1272 of 2007 in
C.S.No.979 of 2007.
4. Both the Appellant and the Respondent are in the
automobile field and are manufacturing two wheelers of their own
brands. The dispute involved in this litigation pertains to the
patent right of the Respondent bearing Patent No.195904 of
16.07.2002, granted by the Patent Office with its sealing dated
07.07.2005. Under the said patent, the Respondent got the
exclusive right to prevent third parties from making, using,
4
offering for sale, selling or importing for those purposes 'An
improved internal combustion engine working on four stroke
principle'. The said patent also places restriction for grant of
such patent to any one else for a period of 20 years from
16.07.2002.
5. In the suit in C.S.No.1111 of 2007, the Respondent has
sought for a permanent injunction to restrain the Appellant from
causing any infringement to Patent No.195904 and/or from using
the technology / invention described in the said patent in 2/3
wheelers including the proposed 125 cc 'FLAME' motorcycle of the
Appellant. They further prayed for a preliminary decree for
rendering accounts of profits of the Appellant in the sale of 125
cc 'FLAME' motorcycle and a sum of Rs.10,50,000/- as damages
for infringement of Patent No.195904. The last part of the
prayer is for destruction of all the infringing copies and articles
including vehicles containing engines that infringes Patent
No.195904.
5
6. In the affidavit filed in support of O.A.No.1357 of 2007,
while describing the invention, the Respondent has stated that it
invented an unique technology of using two spark plugs for
efficient burning of lean air fuel mixture in a small bore engine
(bore size between 45 mm and 70 mm). According to the
Respondent, though the use of two spark plugs in some small
bore air cooled engines in racing applications in 1950's as well as
in large bore engines or in high performance / racing bikes which
do not run on lean air fuel mixture was known in the automobile
industry, the same is not comparable to the invention of the
Respondent.
7. According to the Respondent the combustion of air fuel
i.e. the process of burning would be richer due to the
consumption of more fuel in racing engine than the chemically
correct ratio of air and fuel which would differentiate as against a
lean burn engine. In sum it is claimed by the Respondent that
the invention is directed to improve the combustion of lean fuel
mixture in the small bore engine ranging between 45 mm and 70
mm for improved fuel efficiency by using a pair of spark plugs to
ignite the air fuel mixture.
6
8. It was further pleaded that the existence of number of
valves is not an essential feature of its invention in as much as its
invention is spark plug centric and not valve centric. It is
therefore claimed that the existence of third valve in the
Appellant's product cannot be taken as a variant as the same was
not material to the invention. The Respondent was stated to
have applied for the grant of patent on 16.07.2002, which was
granted/sealed on 07.07.2005 and the grant was published in
Issue No.28/2005 dated 29.07.2005. It was further claimed that
the 125 cc engine in the Appellant's product 'FLAME' infringes the
Respondent's patent No.195904 and therefore the Appellant
should be restrained by way of an interim injunction pending suit.
9. The said application of the Respondent was resisted by
the Appellant by contending that the use of two spark plugs in an
IC engine was a prior art for which no patent could have been
applied for and that the Respondent resorted to a deceptive
method by introducing a limitation of bore size to the US Honda
patent which did not have any such limitation. According to the
7
Appellant the US Honda Patent No.4534322 which provides for
use of two spark plugs did not restrict the application of its
patent to the bore dia and that there was no reference to 'more
than 70 mm' in the said patent as stated by the Respondent in its
averments. It is therefore contended that because of the
distorted version of the Respondent while obtaining the patent
No.195904 which issue has to be determined in the revocation
application filed by the Appellant, the Respondent is not entitled
for the equitable relief of injunction as prayed for in the
application.
10. According to the Appellant, the argument of twin spark
plugs was in public knowledge after the expiry of the 20 years
period of US Honda Patent No.4534322, dated 13.08.1985,
besides the construction of three valves configuration in the
Appellant's engine was protected by the patent granted to AVL
which again is covered by US Patent No.6520 146 and Indian
Patent No.196636, which has been accepted and not challenged.
In other words, according to the Appellant, the use of twin spark
plugs in its engine with three valves resulting in combustion of
8
lean air fuel mixture cannot be taken to have infringed the so
called invention of the Respondent under patent No.195904 as
the same was hit by prior art, apart from the special
characteristics of three valves in the Appellant's engine.
11. The Appellant specifically denied the stand of the
Respondent that the third valve in the Appellant's engine was a
cosmetic one and contended that the said valve has its own
specific functions in the operation of its IC engine for better
combustion efficiency and therefore the alleged infringement of
the Respondent patent cannot be accepted.
12. By making a specific reference to the claim made by the
Respondent in the complete specification filed by it before the
authorities in 2004 and with regard to the provision of twin spark
plugs as compared to the averments contained in the affidavit
filed in support of the injunction application, the Appellant
pointed out that what was claimed in the complete specification
varies with what is claimed in the application filed in support of
the injunction and that the Respondent cannot be permitted to
9
improve the functions as mentioned in the complete specification
by making any statement in the affidavit filed in Court. In other
words it was contended that the Respondent will have to stand or
fall by what is stated in the complete specification in regard to
the specific functions of the twin spark plugs which according to
the Appellant was only related to its position in the engine and
not in relation to its advantage in making the combustion of lean
air fuel mixture.
13. It is stated that the shift made by the Respondent from
two plugs centric description of 2003 to two valves centric
description of 2004 was due to the existing discovery of 1985 US
Honda patent and such being the case, according to the
Appellant, the Respondent can never be permitted to shift its
claim once again to twin spark plugs centric description to its so
called invention.
14.The Appellant also placed reliance upon the Indian
Patent application No.678/MUM/2001 filed by Honda in July 2001
in support of its stand that plurality of ignition plugs to four
10
stroke engine with an intake valve and an exhaust valve to
achieve reduction of fuel cost was a known factor in the
automobile industry.
15. By relying upon the patent granted to AVL, the
Appellant contended that the third valve is not a cosmetic
addition but had a specific purpose, in as much as, it is supported
by the grant of patent by the authorities and that a contra
statement of the Respondent would go against the patent which
is not permissible in law. It is claimed that the two inlet valves
provided in the Appellant's engine are different from each other
and have a specific and independent function to each other. The
Appellant would further contend that though the registration of
Respondent's patent in 2005 would date back to the original date
of application since it being a new one and that its validity is the
subject matter of cancellation / revocation, claim for injunction
should not have been countenanced. It was therefore contended
that the injunction application was liable to be rejected.
11
16. While dealing with the respective applications of the
Appellant as well as the Respondent for interim injunction, the
learned Judge by an interim order dated 16.02.2008, while
granting interim injunction as prayed for by the Respondent in
O.A.No.1357 of 2007 in C.S.No.1111 of 2007, dismissed the
Appellant's application No.1272 of 2007 in C.S.No.979 of 2007.
17. Aggrieved against the said common order of the
learned Judge, the Appellant has come forward with these
appeals.
18. Mr.A.L.Somayaji and Mr.P.S.Raman, learned senior
counsel appeared on behalf of the Appellant and advanced
arguments. Mr.C.A.Sundaram, learned senior counsel appeared
on behalf of the Respondent made his submissions.
19. Mr.A.L.Somayaji, learned senior counsel in his
submissions after referring to the respective contentions
contained in the affidavit filed in support of the application in
O.A.No.1357 of 2007 filed on behalf of the Respondent, the
12
counter affidavit to the said application as well as the rejoineder
filed by the Respondent submitted that the exclusive right of
patent claimed by the Respondent is hit by the vice of prior art,
apart from the fact that the Appellant's product is not comparable
to that of the Respondent, in as much as, apart from the formula
of twin plugs, in the Appellant's engine there is an additional
valve viz., third valve, that the third valve is not a cosmetic
addition, but an essential one and therefore there was no
question of infringement in respect of the patent right of the
Appellant.
20. The learned senior counsel also took the stand that the
Respondent was making a flip-flop claim from the date of
provisional specification made in 2002 and the final specification
made in 2003 as well as the complete specification made in
2004. According to the learned senior counsel, the teaching of
the patent was completely altered in the claims of the
Respondent between the years 2002 and 2003 viz., between the
provisional claim and the final specification. According to him
while in the provisional specification in 2002 and in final
13
specification in 2003 the teaching was two plug centric of the
invention, having noted that the Honda US patent No.4534322
A1 had already introduced two spark plugs arrangement with
three valves in a neutral bore engine, in the complete
specification made in the year 2004 the Respondent switched
over to two valves specific description giving a go bye to the twin
plugs centric description.
21. The learned senior counsel in his submissions stated
that on infringement what is construed as a patent property and
compare the same with the alleged infringed product, the burden
is heavy on the plaintiff to establish the said factors.
22. The learned senior counsel relied upon the following
decisions in support his contentions :
(a) Reliance was placed upon AIR 1982 SC
1444 (Bishwanth Prasad Radhey Shyam Vs.
H.M. Industries) in particular paragraph No.17
to point out that patent is granted only for
invention which must be new and useful i.e. it
14
must have novelty and utility and therefore
essentially for a validity of the patent, it must be
the inventor's own discovery as opposed to mere
verification of what was already known before the
date of the patent.
The learned senior counsel by relying upon
the ratio of the decision as held in paragraph 33
in the above said decision contended that even
after the sealing of the patent, the validity of the
patent can be challenged in the High Court on
various grounds for revocation or infringement
and that the presumption in favour of the validity
of the patent cannot be accepted.
Again by referring to paragraph 44, the
learned senior counsel contended that the
specifications and the claims must be looked at
and construed together in order to find out what
was the invention as claimed in the patent.
(b) The learned senior counsel then relied
upon 1948 (52) CWN 253 (Boots Pure Drug
Co. Vs. May and Baker Ltd.) wherein the
Division Bench of the Calcutta High Court has held
that in order to get an interim injunction, the
15
prima facie validity of the patent should be shown
that the prima facie infringement must also be
proved apart from availability of balance of
convenience. It was also stated therein that as a
rule of practice if a patent is a new one, a mere
challenge at the Bar would be quite sufficient for
the refusal of an interim injunction as compared
to a patent which is fairly old and has been up
into use, in which case, it would be safe for the
Court to proceed upon the presumption of its
validity. The said principle was applied by the
Delhi High Court in the decision reported in AIR
1980 Delhi 132 (National Research
Development Corporation of India, New
Delhi Vs. The Delhi Cloth and General Mills
Co. Ltd and ors.)
(c) The learned senior counsel then relied
upon the Division Bench decision of the Delhi High
Court reported in AIR 1997 Del 79 (Franz
Xaver Huemer Vs. New Yash Engineers), for
the proposition that even in intellectual property
cases, the plaintiff has to prove prima facie case,
balance of convenience and irreparable injury and
that the registration of patent alone would not be
sufficient and that the Court must look at the
whole case i.e. the strength of the case of the
16
patentee and the strength of the defendant.
(d) The learned senior counsel relied upon
the decision of the Calcutta High Court reported in
AIR 1996 Cal 367 (Hindustan Lever Ltd. Vs.
Godrej Soaps Limited and Ors.) wherein a
passage from the decision of an English case
reported in (1972) 1 All ER 1023 (Hubbard
Vs. Vosper) of Lord Denning is quoted which is
to the effect that while considering the grant of an
interlocutory injunction, the Judge should look at
the whole case and that he must have regard not
only to the strength of the claimant but also to
the strength of the defendant.
(e) The learned senior counsel then relied
upon AIR 2000 Delhi 23 (Standipack Pvt. Ltd.
and Anr. Vs. Oswal Trading Co. Ltd. etc.) for
the proposition that no presumption of validity is
attached to a patent granted by the Controller
under the Act not withstanding examination and
investigation made under Sections 12 and 13 of
the Act. It was also relied upon for the
proposition that where an application is filed
seeking for revocation of patent and question the
validity of it, the Court should not grant an
17
injunction more so when serious controversy exist
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.
(f) Reliance was also placed upon 2005-
BCR-3-191 (Novartis AG Vs. Mehar Pharma)
of the Bombay High Court wherein the settled
principle of any matters to grant of interim
injunction in relation to a patent, the party
applied for it should satisfy that there is
probability of the plaintiff succeeding on the trial
of the suit and when the patent is of a recent
date, no interim injunction should be granted
especially when there is serious question as to the
validity of the patent was raised by the defendant
to be tried in the suit.
(g) The learned senior counsel then relied
upon 2006 (33) PTC 339 (NULL) (Dhanpat
Seth and Ors Vs. Nil Kamal Plastic Crates
Ltd.) the decision of the Himachal Pradesh High
Court wherein the learned Judge held that by
virtue of Section 107(1) of the Patents Act, in any
suit for infringement of patent, every ground, on
which it may be revoked under Section 64, is
18
available as a ground for defence. The said
decision of the learned single Judge was affirmed
by a Division Bench in the decision reported in
AIR 2008 HP 23.
(h) For the proposition that where the
patent is of recent origin and its validity has not
been tested, the Court should not grant injunction
based on the alleged infringement, as well as, the
ratio that mere grant of patent does not
guarantee its validity, reliance was placed upon
an unreported judgment of a learned Judge of
Delhi High Court Mr.Justice S.Ravindra Bhat dated
19.03.2008 in I.A.No.642/2008 in CS (OS)
89/2008 (F.Hoffmann-La Roche Ltd., & Anr.
Vs. Cipla Limited). The said order of the
learned single Judge was also confirmed by the
Division Bench in its order dated 24.04.2009 in
FAO (OS) No.188 of 2008. In the case on hand,
the Respondent obtained the certificate of Patent
No.195904 dated 16.07.2002 and the sealing was
made on 07.07.2005.
(i) The learned senior counsel then relied
upon a Full Bench decision of the Delhi High Court
reported in AIR 2000 Delhi 117 (Metro Plastic
19
Industries (Regd.) Vs. M/s. Galaxy
Footwear) wherein a provision similar to Section
64 of the Patent Act as provided under Section
51A and 53 of the Designs Act was dealt with by
the Full Bench and the Full Bench took the view
that though no hard and fast rule can be laid
down, in the absence of an application for
cancellation of the design such a right can be
enforced and no defence can be taken based on a
ground of cancellation. The Full Bench further
ruled that once an application for cancellation has
been made then the Court can take into
consideration all the relevant facts which would
include the grounds raised in the application for
cancellation while considering an application for
grant of injunction and that consideration must be
made judicial.
23. Mr.P.S.Raman, learned senior counsel also appearing
for the Appellant by referring to various provisions contained in
the Patent Act took pains to point out by referring to the
International Search Report which was passed on to the
Respondent on 13.08.2004, to state that subsequent thereafter,
the Respondent came forward with its amended Patent
20
application on 08.11.2004, in which the claim was two valves
centric as against twin plugs centric as claimed in the provisional
specification made in 2002.
24. The learned senior counsel by making a specific
reference to the stand of the Respondent in its amended final
specification made in 2004 where specific reference has been
made to US Honda Patent No.4534322 A1, pointed out that in
the said amended claim, the Respondent highlighted the feature
of two valves engine with improved combustion characterises and
there by gave a go bye to the twin plug centric in the original
specification of 2002. The learned senior counsel therefore
contended that the above factors make it clear that the so called
right of patent cannot be accepted in as much as US Honda
Patent No. 4534322 A1 of 1985 already covered the entire
features as it was a prior art.
25. The learned senior counsel by referring to the complete
specification of the Honda company made on 24.01.2001, which
was made 1½ years before the Respondent's application for
21
patent viz., 16.07.2002, contended that the same was already
teaching the twin plugs provision with three valves and four
valves configuration. The learned senior counsel therefore
contended that the exclusive right claimed by the Respondent
based on Patent No.195904 dated 16.07.2002, is open to
challenge on very many grounds in the Appellant's application for
revocation of the said patent under Section 64 of the Patents Act
and therefore a prima facie case is made out for a triable issue to
cancel the said patent.
26. The learned senior counsel by referring to the technical
collaboration agreement of the Appellant with AVL, Austria under
which the three valves engine of 75 cc capacity with 44 mm bore
having been permitted to be manufactured with its whole
specifications and when the product of the Appellant stand apart
from the product of the Respondent with three valves
configuration there would be no question of infringement of the
so called patent right of the Respondent.
27. The learned senior counsel while referring to the
Technical Collaboration Agreement dated 13.11.2000, of the
22
Appellant with M/s AVL, Austria contended that the Appellant had
agreed for a consideration of EURO 349.522 for designing the
new 3-valve cylinder head with AVL Controlled Combustion Burn
Rate (CCBR Combustion) apart from a sum of EURO 409.000 by
way of consideration for the Technical Collaboration Agreement,
and that the Appellant's product of 125 cc 'FLAME' motorcycle
with three valve configuration is in no way comparable to the
Respondent's patented product in Patent No.195904 and
therefore there can be no infringement even if the Respondent's
patent was a recognised one.
28. The learned senior counsel however by making a
specific reference to the Search Report dated 08.06.2004, mailed
on 13.08.2004 pointed out that the Respondent's provisional
patent application dated 16.07.2002, was rejected on the ground
of prior art of US Patent No.4534322 A1 (MATSUDA) dated
13.08.1985 and that in the subsequent complete specification
dated 07.07.2003 and the amended final specification dated
08.11.2004, the Respondent shifted its claim of twin plug centric
into one of twin valve centric and therefore there was a prima
23
facie case made out for a triable issue to cancel the patent.
29. The learned senior counsel drew our attention to the
order of the Hon'ble Supreme Court dated 03.03.2008, passed in
C.S.No.1759 of 2008 in support of his stand that having regard
to the provision contained in Section 13(4) read with Sections 47
and 48 of the Patents Act especially by taking note of the effect
of the counter affidavit, the Hon'ble Supreme Court interfered
with the order of injunction granted in favour of the party who
already had the patent in its possession and while setting aside
the order of the Division Bench, the Hon'ble Supreme Court
remitted the matter back to make an analysis of the scheme of
the provisions under the Patents Act and its effect on a registered
patent.
30. The learned senior counsel therefore contended that
having regard to the facts pleaded by the Appellant vis-a-vis the
patent granted in favour of the Respondent, there can be every
possibility of the Appellant succeeding in its application for
revocation of the patent and therefore the injunction granted in
24
favour of the Respondent is liable to be set aside.
31. As against the above submissions of the learned senior
counsel for the Appellant, Mr.C.A.Sundaram, learned senior
counsel appearing for the Respondent in his submissions stated
that while seeking for an order of injunction as against the
Appellant what all required was the availability of a registered
valid patent, balance of convenience, irreparable loss and
infringement by the Appellant under the patent law.
32. The learned senior counsel while transversing the
submissions of the Appellant's counsel contended that in order to
show that the patent of the Respondent was invalid in law, it is
the bounden duty of the Appellant to show that there was a prior
art with reference to the patent granted in favour of the
Respondent. Highlighting his submissions, the learned senior
counsel submitted that to examine the question as to what is the
patent that exist, it would be relevant to see how the people in
the industry look at the product patented and what the patent
teaches.
25
33. The learned senior counsel also contended that the
construction of a validated patent must be accepted. As far as
the prior art is concerned, according to the learned senior counsel
what can be looked at in a prior art is the pith and marrow and
one should not compare the complete and provisional
specification for that purpose.
34. The learned senior counsel relied upon the following
decisions in support his contentions :
(a) The learned senior counsel relied upon
AIR 1936 Bombay 99 (Lallubhai Chakubhai
Vs. Chimanlal & Co.) where a learned Single
Judge of the Bombay High Court held that
".....A patentable combination is
one in which the component elements
are so combined as to produce a new
result or to arrive at an old result in a
better or more expeditious or more
economical manner. If the result
26
produced by the combination is either a
new article or a better or a cheaper
article than before the combination
may afford subject for a patent....."
".....A specification must be
construed impartially, and the Court is
generally slow to construe it against
the patentee. But the construction
must not only be a 'benevolent', but a
reasonable one....."
"A patent may sometimes be
infringed by taking a part only of the
invention, but that depends upon the
part for which protection is asked is a
new and material part, especially in
the case of a combination. If it is not
new and material, the Court must
consider what is the substance of the
invention, and to do so it has to
consider the relative importance of all
the parts of the invention. The
essential part or the substance of the
plaintiff's invention is, in his own
words, the use of pressure, and
27
therefore there could be no
infringement unless the use of
pressure by the defendants in their
process was proved......" (underlining
is ours)
(b) In the decision reported in 1884 (6)
RPC 49 (William Needham and James Kite
Vs. Johnson and Co.) it is held as under:
"Then comes the question, what
is the infringement of a combination of
elements in a machine? There is not
an infringement if you have produced
the same results by a different
combination of different elements.
That is another and a different
combination, and is not either an
improvement or anything else of the
other. It is absolutely and wholly
different, if there is a different
combination of different elements."
(Emphasis added)
(c) In support of the submission that what
the patent teaches should be analysed as was
28
looked into by the people in the industry viz.,
based on the knowledge of a skilled man and
common general knowledge, the learned senior
counsel relied upon the decision reported in 1998
RPC 727 (Lubrizol Corp. & another Vs. Esso
Petroleum Co. Ltd and Others) where it is held
as under:
"Patent specifications are
intended to be read by persons skilled
in the relevant art, but their
construction is for the Court. Thus the
Court must adopt the mantle of the
notional skilled addressee and
determine, from the language used,
what the notional skilled addressee
would understand to be the ambit of
the claim. To do that it is often
necessary for the Court to be informed
as to the meaning of technical words
and phrases and what was, at the
relevant time, the common general
knowledge; the knowledge that the
notional skilled man would have."
(d) According to the learned senior counsel
by virtue of the amendment to Section 48 (2) (a)
29
& (b) a provision which was originally positive in
its construction is now negatively worded and
therefore the injunction granted should be
confirmed. The learned senior counsel relied
upon AIR 1982 SC 1444 (Bishwanath Prasad
Radhey Shyam Vs. H.M.Industries) which was
rendered prior to the amendment to distinguish
the above legal position.
(e) In the decision reported in 1972 RPC
457 (The General Tire & Rubber Company
Vs. The Firestone Tyre and Rubber Company
Ltd and others) on the principle of common
General Knowledge, it is held as under:
"For construing the patent in suit
and again for reaching a conclusion, if
there was no anticipation, on the issue
of obviousness, it is necessary for us to
put ourselves into the position of a
skilled addressee at the time the
specification was published on 20th
November, 1950. For it is to a skilled
addressee-a skilled man reasonably
well versed in the art – that the
specification is deemed to be
30
addressed, and it is by the standards of
the common general knowledge of
such a man that one tests whether the
invention was obvious or not."
(f) In the House of Lords decision reported
in 1982 RPC 183 (Catnic Components Limited
and another Vs. Hill and Smith Limited) at
page 242 it has been held as under:
"My Lords, a patent specification
is a unilateral statement by the
patentee, in words of his own
choosing, addressed to those likely to
have a practical interest in the
subject matter of his invention (i.e.
"skilled in the art"), by which he
informs them what he claims to be
the essential features of the new
product or process for which the
letters patent grant him a monopoly.
It is those novel features only that he
claims to be essential that constitute
the so-called "pith and marrow" of the
claim. A patent specification should
be given a purposive construction
rather than a purely literal one
31
derived from applying to it the kind of
meticulous verbal analysis in which
lawyers are too often tempted by
their training to indulge. The
question in each case is: whether
persons with practical knowledge and
experience of the kind of work in
which the invention was intended to
be used, would understand that strict
compliance with a particular
descriptive word or phrase
understand that strict compliance
with a particular descriptive word or
phrase appearing in a claim was
intended by the patentee to be an
essential requirement of the invention
so that any variant would fall outside
the monopoly claimed, even though it
could have no material effect upon
the way the invention worked."
(Underlining is ours)
(g) In a Division Bench decision of the Delhi
High Court reported in AIR 1978 Delhi 1 (Raj
Prakash Vs. Magnet Ram Choudhary and
others) it has been held as under in paragraph
32
12 :
"12. We have therefore, to read the
specifications and the claims from the
specifications and the claims from the point of
view of the persons in the trade manufacturing
film strip viewers. It is the pith and marrow of
the invention claimed that has to be looked into
and not get bogged down or involved in the
detailed specifications and claims made by the
parties who claim to be patentees or alleged
violators......" (Underlining is ours)
again in paragraph 13 it is held that:
"13.....It is settled law that the
title of the specifications of an
invention claimed does not control the
actual claim. A misleading title
similarly is of little consequence. It is
on a proper construction of the
specifications and the claims that the
true nature of the invention claimed is
to be determined and the patent
granted has to be construed......"
(Emphasis added)
33
(h) In the decision of the Judicial Committee
of the Privy Council reported in Vol. XX No.32
RPD 745 (Consolidated Car Heating
Company Vs. Came) the Privy Council referred
to an earlier decision of the Chancery Division @
pg. 765 which is to the following effect:
"In Proctor v. Bennis (L.R. 36
Ch.D. 740), Lord Justice Cotton, at
page 750, said:- "In my opinion
omissions and additions may be very
material in considering whether, in
fact, the machine of the Defendant is
an infringement of the combination
which the Plaintiff claims; but if the
Defendant really has taken the
substance and essence of the Plaintiff's
combination, the mere fact that certain
parts are omitted or certain parts
added cannot prevent his machine
from being an infringement of the
Plaintiff's Patent." (Underlining is ours)
thereafter it was ultimately held as under:
".....For if the merit consists in
34
the idea or principle which is embodied
in it, and not merely in the means by
which that idea or principle is carried
into effect, a machine which is based
on the same idea or principle may still
be an infringement, although the
detailed means for carrying it into
effect may be somewhat different....."
(i) In another Privy council decision
reported in AIR 1930 PC 1 (Canadian General
Electric Co. Ltd. Vs. Fada Radio Ltd.) the Privy
Council extracted the words of Lordship Maclean,
J., which reads as under:
"There must be a substantial
exercise of the inventive power or
inventive genius, though it may in
cases be very slight. Slight alterations
or improvements may produce
important results and may disclose
great ingenuity. Sometimes it is a
combination that is the invention; if
the invention requires independent
thought, ingenuity and skill, producing
in a distinctive form a more efficient
35
result, converting a comparatively
defective apparatus into a useful and
efficient one, rejecting what is bad and
useless in former attempts and
retaining what is useful, and uniting
them all into an apparatus which,
taken as a whole, is novel, there is
subject matter. A new combination of
well known devices, and the
application thereof to a new and useful
purpose, may require invention to
produce it and may be good subject
matter for a patent." (Emphasis added)
(j) In the decision reported AIR 1969
Bombay 255 (F.H. & B. Corpn. Vs. Unlchem
Laboratories) Justice Vimadalal on the question
as to what is an invention has held as under in
paragraph 16(i):
"16(i). An invention consisting of
the production of new substance from
known materials by known methods
cannot be held to possess subjectmatter
merely on the ground that the
substances produced are new, for the
substances produced may serve no
36
useful purpose, in which case the
inventor will have contributed nothing
to the common stock of useful
knowledge (the methods and materials
employed being already known) or of
useful materials (the substances
produced being ex hypothesis,
useless)."
(k) In the Division Bench decision of our
High Court reported in (2000) 3 MLJ 85
(Gandhimathi Appliances Limited Vs.
L.G.Varadaraju and others) at page No.93 the
Division Bench has stated as under in paragraph
20:
"20....Though the grant of a
patent by itself does not guarantee it's
validity, the fact that a patent has
been granted must be given some
weight and significance while
considering the question of prima facie
case. The plaintiffs are entitled to
place reliance on the fact that they
have already secured patent. The
grant of the patent does not on the
basis of such grant, make the patent
37
impregnable. The burden is always on
a plaintiff to establish its case prima
facie before it can claim any
interlocutory relief. It is always open
to the defendant to question the
validity of patent. When the defendant
is able to point out some grounds for
regarding the patent already granted,
as being prima facie invalid then at the
interlocutory stage, this factor of
patent having been granted to the
plaintiff would cease to be of
significance while considering the
question of prima facie case. The
burden of proof on the plaintiffs at the
interlocutory stage, therefore is not so
rigourous, as it would otherwise be, if
no patent had been granted in the first
place." (Emphasis added)
The Division Bench has also held in paragraph 30
as under:
"30. Applying the test set out in
the decisions to which we have referred
to earlier, the inevitable conclusion that
38
we reach is that the product patented
by the plaintiff, though when dissected
and as part taken separately may now
show inventiveness, a combination of
the same, and the fact that a new use
has been discovered for a combination
of known integers, and the further fact
that inventive steps by way of
ingenuity and skill were required to be
and have been displayed in bringing
about such a combination and
discovering the mode of application of
known integers for a product, whose
usefulness has been amply
demonstrated by the large number of
units of wet grinders sold by the
plaintiffs since it was first, put on the
market in the year 1991, establish that
the patent granted in favour of the
plaintiffs cannot be regarded prima
facie as invalid. The plaintiffs must be
held to have made out a prima facie
case for grant of an injunction....."
(l) The learned counsel also relied upon the
following decisions:
39
(i) AIR 1936 Bombay 99 (Lallubhai
Chakubhai Vs. Chimanlal & Co)
(ii) Vol. XLIV (5) RPD 105 (Boyee Vs.
Morris Motors Ld.)
(iii) 1903 (20) RPC 225
(iv) 1995 RPC 585
(m) As far as the submission made based
on prior art is concerned, the learned senior
counsel submitted that it is not merely similarity
but also identity should be shown and for that
purpose placed reliance upon Vol.XXVI IOJ 78
and 1977 FSR 137 (Badische Anilin & Soda
Fabrik AG (Distiller's) Application.
35. The learned senior counsel by relying upon a report in a
magazine viz., 'Techno Treat' contended that a comparative
study of the Respondent's product with Honda patent, what is
disclosed in the said magazine can be taken as how the industry
has understood the product as the report states that the twin
plug configuration in the Honda product was in a large bore
engine as compared to the Respondent's product in a small bore
engine.
40
36. The learned senior counsel by referring to the complete
specification filed by the Respondent dated 07.07.2003,
submitted that the patent as claimed by the Respondent related
to an invention to improve the combustion characteristic of an
internal combustion engine with improved combustion capacity.
By pointing out the same, the learned senior counsel contended
that the teaching of the patent of the Respondent's invention
was a combination of twin plug configuration in a small bore
engine with twin valve facility along with other allied provisions in
the engine in order to achieve improved internal combustion.
37. The learned senior counsel contended that the
Respondent made a search and brought to the notice of the
Patent Controller by pointing out that the Honda twin plug was in
a large bore engine and the Patent Controller was satisfied with
the differentiation while granting the patent after the submission
of the complete specification. The learned senior counsel by
referring to Section 57 of the Patent Act contended that the
Statute provided for making necessary amendments to the claim
41
for better understanding of the invention. By referring to the
Honda Patent No.4534322 A1 the learned senior counsel
contended that it related to a large bore engine and 'V' type
engine which cannot be construed as a prior art.
38. As far as the Honda Patent application 678 of 2001
dated 17.07.2001, the learned senior counsel pointed out that
the invention though related to an engine with plurality of ignition
plugs attached to the same combustion chamber, the same is not
comparable as the said engine was fitted with a water pump and
thermostat and also fitted with a radiator for a cooling system
inbuilt in the engine which is not comparable at all to the
Respondent's patented product.
39. As far as the AVL specification is concerned, the learned
senior counsel by referring to the report of the AVL engineers
themselves pointed out that the disadvantage of a three valve
engine listed makes a specific reference to the fact that big bore
i.e. above 70 mm would only work with twin spark plug.
42
40. As far as the allegation of infringement is concerned,
according to the learned senior counsel except the fact that the
Appellant product is a three valve in all other respect it matched
with the Respondent's patented product viz., twin plug, internal
combustion engine with lean burn fuel. The learned senior
counsel therefore contended that the third valve which is a
variant being a cosmetic one and if such a variant is relied upon
to escape from the allegation of infringement, it must be shown
to be a substitute or a different way of doing the same thing.
According to the learned senior counsel, the variant did not in
any way improve the ignition or the engine function and therefore
it has to be construed as a cosmetic one as it had nothing to do
with the invention of the Respondent.
41. The learned senior counsel in his submissions stated
that the teaching of prior art not being the same, the injunction
granted cannot be found fault with.
42. On the balance of convenience, the learned senior
43
counsel contended that the Respondent's product came into the
market three years prior to the Appellant's product and that it
had already achieved commercial success. The learned senior
counsel also contended that the product was recognised by the
entire filed in the automobile industry and more than 50% of the
market is possessed by the Respondent as compared to the
Appellant's product which is yet to be launched as the booking
itself was announced on 13.12.2007, while injunction was
granted on 19.12.2007 and that when the Division Bench
suspended the injunction on 20.12.2007, there was a specific
condition that the Appellant will not claim equity later on.
43. The learned senior counsel also relied upon the
subsequent order of the Hon'ble Supreme Court dated
18.01.2008, which set aside the order of the Division Bench and
ultimately the Appellant's motorcycle viz., 'FLAME' was introduced
in the market on 10.03.2007 with one spark plug alone.
44. By referring to the above factors, the learned Senior
counsel contended that the Appellant's business is not in any way
44
affected and therefore no irreparable hardship would be caused
to the Appellant by the grant of the injunction. The learned
senior counsel relied upon 1978 RPC 761 (Corruplast Ltd. Vs.
George Harrison (Agencies) Ltd.) and 1984 FSR 574
(Monsanto Company Vs. Stauffer Chemical Co.) in support
of his submissions.
45. To meet the arguments of the learned senior counsel
for the Respondent that a strong prima facie case should have
been made by the defendant to resist an injunction,
Mr.A.L.Somayaji, learned senior counsel by relying upon AIR
1980 Delhi 132 (National Research Development
Corporation of India, New Delhi Vs. The Delhi Cloth and
General Mills Co. Ltd. and Ors.) stated that it is on the plaintiff
to show strong prima facie case and not on the defendant.
Reliance was also placed upon AIR 1997 Delhi 79 (Franz
Xaver Huemer Vs. New Yash Engineers).
46. By relying upon 1969 RPC 367 (Rodi & Weinberger
Vs. Henry Showell) the learned senior counsel contended that
45
to allege infringement all the integers should be shown to be
present and that the Respondent failed to show that the third
valve is a variant and that the Respondent has also failed to show
that in the Honda Patent bore size is more than 70 mm while on
the other hand the said patent did not refer to any bore size and
therefore the Appellant's stand based on prior art was well
founded.
47. Again Mr.P.S.Raman, learned senior counsel also
appearing for the Respondent contended that what AVL teaches
is that the third valve aids lean burn, then again there was a
good ground made out by the Appellant for a triable issue and
with that consideration, the grant of injunction was not justified.
48. Having heard the learned counsel for the respective
parties and before considering the various submissions, it is
worthwhile to refer to some of the relevant provisions of Patents
Act 1970 for the proper disposal of these appeals viz.,
(i) Sections 2(j), (ja), (l) and (m) talks of invention,
inventive step, new invention and patent which reads as under:
"Section 2(j) "invention" means a new
46
product or process involving an inventive step and
capable of industrial application;"
"Section 2(ja) "inventive step" means a
feature of an invention that involves technical
advance as compared to the existing knowledge
or having economic significance or both and that
makes the invention not obvious to a person
skilled in the art"
"Section 2(l) "new invention" means any
invention or technology which has not been
anticipated by publication in any document or
used in the country or elsewhere in the world
before the date of filing of patent application with
complete specification, i.e., the subject matter
has not fallen in public domain or that it does not
form part of the state of the art;
"Section 2(m) "patent" means a patent for
any invention granted under this Act;
(ii) Section 3 falling under Chapter-II mentions as to what
are all not inventions.
(iii) Section 9 prescribes as to how and in what manner a
47
provisional and complete specification can be filed.
(iv) Under Section 10(4) it is stipulated that every
complete specification should describe fully and particularly the
invention and its operation or use and the method by which it is
to be performed. The sub-clause (a) to (d) of 10(4) reads as
under:
"Section 10(4) Every complete Specification
shall--
(a) fully and particularly describe the
invention and its operation or use and the method
by which it is to be performed;
(b) disclose the best method of performing
the invention which is known to the applicant and
for which he is entitled to claim protection; and
(c) end with a claim or claims defining the
scope of the invention for which protection is
claimed;
(d) be accompanied by an abstract to provide
technical information on the invention:"
(v) Section 11 talks of priority dates of claims of a
complete specification. Sub-clause (7) with its first proviso to
Section 11-A is to the following effect;
48
"Section 11-A (7): on and from the date of
publication of the application for patent and until
the date of grant of a patent in respect of such
application, the applicant shall have the like
privileges and rights as if a patent for the
invention had been granted on the date of
publication of the application;
Provided that the applicant shall not be
entitled to institute any proceedings for
infringement until the patent has been granted:"
(vi) Examination of an application through an Examiner by
the Controller to call for a report as a result of the investigation
made under Section 13 is provided under Section 12 while the
various aspects to be taken into account while examining the
application for a patent referred to under Section 12 to the
examiner is specified in Section 13.
(vii) Section 25 of the Act provides for opposition of the
patent either before or after the grant.
(viii) Section 43 falling under Chapter VIII specifies the
manner in which the patent is to be granted.
(ix) Under Section 45 of the said Chapter, it is specified
49
that every patent should be dated as of the date on which the
application for patent was filed and the said date should be
entered in the register. Sub-clause (3) to Section 45 specifically
states that no suit or other proceedings shall be commenced or
prosecuted in respect of an infringement committed before the
date of publication of the application.
(x) The grant of patent is also subject to certain conditions
as stipulated in Section 47 of the Act.
(xi) The rights of the patentees has been stipulated under
Section 48, which reads as under:
"Section 48. Rights of patentees.-- Subject to
the other provisions contained in this Act and the
conditions specified in Section 47, a patent granted
under this Act shall confer upon the patentee---
(a) where the subject-matter of the patent is
a product, the exclusive right to prevent third
parties, who do not have his consent, from the act
of making, using, offering for sale, selling or
importing for those purposes that product in India;
(b) where the subject-matter of the patent is
a process, the exclusive right to prevent third
50
parties, who do not have his consent, from the act
of using that process, and from the act of using,
offering for sale, selling or importing for those
purposes the product obtained directly by that
process in India:"
(xii) Section 57 falling under Chapter-X provides for
amendment of application and specification or any document
relating thereto before the Controller.
(xiii) Section 64 falling under Chapter-XII provides for
revocation of patents granted either before or after the
commencement of the Act. The relevant part of the said Section
falling under sub-section (1)(e),(f),(j) and (m) reads as under:
"Section 64(1)(e): that the invention so far
as claimed in any claim of the complete
specification is not new, having regard to what
was publicly known or publicly used in India before
the priority date of the claim or to what was
published in India or elsewhere in any of the
documents referred to in Section 13;
Section 64(1)(f): that the invention so far as
claimed in any claim of the complete specification
is obvious or does not involve any inventive step,
51
having regard to what was publicly known or
publicly used in India or what was published in
India or elsewhere before the priority date of the
claim;
Section 64(1)(j): that the patent was
obtained on a false suggestion or representation;
Section 64(1)(m): that the applicant for the
patent has failed to disclose to the Controller the
information required by section 8 or has furnished
information which in any material particular was
false to his knowledge;"
(xiv) Section 104-A(1) specifies about the burden of proof
in case of suits concerning infringement which reads as under:
"Section 104-A(1): In any suit for
infringement of a patent, where the subjectmatter
of patent is a process for obtaining a
product, the Court may direct the defendant to
prove that the process used by him to obtain the
product, identical to the product of the patented
process, is different from the patented process
if,--
(a) the subject-matter of the patent is a
process for obtaining a new product; or
52
(b) there is a substantial likelihood that the
identical product is made by the process, and the
patentee or a person deriving title or interest in
the patent from him, has been unable through
reasonable efforts to determine the process
actually used;
Provided that the patentee or a person
deriving title or interest in the patent from him,
first proves that the product is identical to the
product directly obtained by the patented
process."
(xv) Section 107 specifies the defence available in a suit for
infringement which reads as under:
"Section 107: Defence, etc., in suits for
infringement.-- (1) In any suit for infringement of a
patent, every ground on which it may be revoked
under section 64 shall be available as a ground for
defence.
(2) In any suit for infringement of a patent by
the making, using or importation of any machine,
apparatus or other article or by the using of any
process or by the importation, use or distribution of
any medicine or drug, it shall be a ground for
defence that such making, using, importation or
distribution is in accordance with any one or more
53
of the conditions specified in section 47."
49. Keeping the above provisions of the Patents Act in mind
when we consider the rival submissions of the parties, we are
able to discern the following uncontraverted facts viz.,
(a) The Respondent's patent application
along with the specifications was filed on
16.07.2002. In the said application, the invention
claim related to improvement in the combustion
characteristic of a single cylinder internal
combustion engine working on four stroke
principle with two valves and with two spark
plugs.
(b) On 07.07.2003, the Respondent filed its
amended complete specification, wherein, it was
claimed that the provision of pair of spark plugs
was an improvement of the prior art with one
spark plug and that the provision of two spark
plugs improved combustion of lean mixture of fuel
without affecting the performance.
(c) On 13.08.2004, the International Search
54
Report came to be made which stated that the
claimed invention cannot be considered novel or
cannot be considered of involving inventive step
when the document is taken alone in the light of
the US Honda Patent No.4534322 A1 (MATSUDA)
dated 13.08.1985. Subsequently, the Respondent
filed the provisional / complete specification on
08.11.2004 titling the same as an improved
internal combustion engine working on four stroke
principle.
(d) Honda Patent No.4534322 is known as
US Patent MATSUDA dated 13.08.1985, the
engine of which contained two spark plugs with
two valves. The details of the said patent as
placed before the Court did not specify the bore
dia, but it was a 'V' type engine.
(e) The Respondent's patent No. 195904 of
16.07.2002, came to be issued with a date of
sealing of 07.07.2005, declaring the invention as
an Improved Internal Combustion Engine working
on four stroke principle and was published in
Issue No.28/2005 dated 29.07.2005.
(f) The Appellant entered into a Technical
55
Assistance Agreement dated 13.11.2000, with
M/s. AVL, Austria for designing a new three valve
cylinder head with lean burn combustion system
with a provision for twin plugs. The consideration
as stipulated in the agreement payable by the
Appellant was fixed at a sum of EURO 349.522.
The agreed bore dia in the said agreement was 44
mm and upwards with cylinder volume capacity of
75 cc and upwards with three valves provision.
(g) The Appellant entered into a Technical
Collaboration Agreement with M/s. AVL, Austria
on 10.06.2005.
(h) The Appellant has filed his application
for revocation of Respondent's patent No.195904
before the Intellectual Property Appellate Tribunal,
Chennai on 24.08.2007. In the grounds of
revocation, the Appellant contended that the
subject matter of the patent specification stands
anticipated, it is obvious, it is not patentable and
that the patent specification is not clear. In
support of its stand that the Respondent's patent
stands anticipated, the Appellant relied upon the
Japan publication No.59-060056 published on
05.04.1984. For the ground that the Respondent's
56
patent was not new, the Appellant relied upon US
Patent No.4534322 of MATSUDA. For the
contention that the Respondent's invention claim
was obvious and that internal combustion engine
with two spark plugs was already known, the
Appellant relied upon various other existing
patents.
(i) The invention as claimed by the
Respondent in the application filed in support of
the injunction application is usage of two spark
plugs for efficient burning of lean air fuel mixture
in a small bore engine (bore size between 45 mm
and 70 mm) in order to provide improved
combustion characteristic of lean air fuel mixture
burning as stated in paragraphs 11 and 14 of the
affidavit filed in support of the injunction
application with specific averment in paragraph 34
(i) to the effect that its invention is spark plug
centric and not valve centric.
(j) There was a complete specification
bearing No.678-2001, dated 17.07.2001 of Honda
Giken Kogyo Kavushiki Kaisha a Corporation of
Japan claiming invention of four stroke engine
with plurality of ignition plugs exposed to the
57
same combustion chamber stating that it can be
applied widely to any engine i.e. without any
restriction to the size of the bore.
50. The sum and substance of the invention as claimed by
the Respondent is a small bore four stroke engine having twin
spark plugs with two valves to achieve efficient combustion on
lean air fuel mixture.
51. The teachings of the patent according to the
Respondent is an improvement in the combustion (combustion is
the process of burning) of lean air mixture in the small bore
engine for improved fuel efficiency and emission characteristics .
According to the Respondent the arrangement of twin spark plugs
in a small bore engine is positioned in such a manner that
efficient burning of lean air mixture takes place to provide
improved combustion and thereby there would be high saving of
fuel while at the same time without compromising on the
performance of the engine. It is further contended on behalf of
the Respondent that if the said teaching of the Respondent's
58
patent is not in controversy, the Respondent is entitled for the
injunction as against the infringement of the said patent.
52. The infringement complained of is that the Appellant's
125 cc motorcycle called "FLAME" contains a four stoke internal
combustion engine in a small bore lean air burn engine of size
54.5 mm to 53.5 mm possessing combustion of lean air fuel
mixture with two spark plugs located diametrically opposite. The
Respondent would therefore contend that the characteristics of
the product of the Appellant in its 125 cc motor cycle called
"FLAME" having everything similar and identical to that of the
patented product of the Respondent except the three valve
arrangement and the third valve being a cosmetic one, the
allegation of infringement is fully established and consequently
the injunction applied for and granted by the learned Judge is
justified.
53. As against the above case pleaded by the Respondent,
according to the Appellant the first and foremost allegation of
infringement as against the Appellant cannot be accepted since
59
the product of the Appellant is covered by the concept of prior
art, in so far as, it relates to twin spark plug arrangement in an
internal combustion engine and apart from the fact that the
provision of three valves in its internal combustion engine is by
way of an arrangement with M/s AVL, Austria makes all the
difference in the working of the engine.
54. On behalf of the Appellant, it is strenuously contended
that the three valves arrangement in its internal combustion
engine is not a cosmetic one nor a variant. It is claimed that the
US Honda Patent bearing No.4534322, no where stipulates the
bore size while on the other hand a reading of the said patent
discloses that in order to over come the disadvantage of effective
combustion process in a large bore, the invention of introduction
of twin plug came to be made for effective combustion process in
an internal combustion engine, that therefore the Respondent's
claim of new invention while securing the Patent No.195904 itself
will not stand and consequently it would necessarily result in the
revocation of it, in its application filed before the Tribunal.
60
55. As far as the stand of the Respondent that its patented
product is plug centric and not valve centric, the Appellant placed
reliance upon the amended complete specification dated
08.11.2004, wherein, after describing the nature of its product
and after making reference to the International Search Report
which pointed out that in the light of the US Patent No.4534322
A1, the invention claimed by the Respondent cannot be
considered novel or possess any inventive step, the Respondent
attempted to highlight the working of the product by
concentrating on the provision of two valve as against three
valves pointed out in the US patent and ultimately while
summarising its invention in the form of a claim gave thrust to
the two valve arrangement for efficient burning of lean air fuel
mixture in a small bore engine which display the Respondent real
claim based on valve centric and not plug centric.
56. According to the Appellant when the ultimate patent
came to be granted/sealed on 07.07.2005, after the amended
final complete specification dated 08.11.2004, it is no longer
open to the Respondent to still contend that efficient internal
61
combustion of the lean air fuel mixture was due to twin plug
arrangement was a misnomer and therefore the patent granted
itself cannot be held to be valid as there is every likelihood of the
said patent being revoked in the Appellant's application for
revocation before the Appellate Tribunal.
57. One other factor referred to by the Appellant is the
specific reference made by the Respondent in its amended
complete specification where while referring to the US Patent
No.4534322 A1, the Respondent while admitting the use of two
spark plugs in an engine with three valves made a statement that
such a provision was in a large bore engine with diameter of
more than 70 mm as a known prior art. According to the
Appellant, such a statement contained in the amended complete
specification of 2004 was contrary to the specification contained
in the US patent and came to be made by the Respondent
distortedly with a view to overcome the hurdle pointed out in the
International Search Report dated 13.08.2004 and consequently,
the Respondent cannot be permitted to rely on the patent and
the alleged infringement by the Appellant for the grant of
62
injunction.
58. When we analysis the above stand of the respective
parties, we find in the description of the US Patent No.4534322,
in particular in the background of the invention and the object of
the invention a specific statement as found which is to the
following effect viz.,
"....This in turn requires larger
cylinder heads 106 and 108, precluding the
possibility of making the engine more
compact."
Thereafter, while considering the object of the invention, it is
stated that
"The present invention is intended to
overcome these disadvantages, by means
of a pair of cylinder heads, in a V type
horizontal opposition engine, which have
spark plugs installed from the cam chain
chamber side, bringing about compactness
as well as the ability to use the two heads
together."
63
A reading together of the last part of the "background of the
invention" and the first part of the "object of the invention" as
extracted above, it is quite clear that the patented US invention
contained several improvements including the disadvantage of
larger cylinder heads which was overcome by the patented
product and the same obviously means the provision of twin
spark plugs with three valve fitted in a small bore engine for
efficient internal combustion process.
59. If such a reading of the US patent can be prima facie
inferred, by a reading of the said US patent No.4534322, we find
force in the submission of the Appellant that there is a ground
available for the Appellant to be considered in its application for
revocation pending before the Appellate Tribunal. Besides, the
above position in regard to the Respondent's patent vis-a-vis US
Patent No. 4534322, the contention of the Respondent that
effective combustion process in a lean burn air mixture was due
to twin plug arrangement as highlighted in its pleading requires
to be examined with little more circumspection, in as much as, a
close reading of the amended final complete specification of the
64
Respondent dated 08.11.2004, discloses that the Respondent
wanted to highlight more on the twin valve provision rather than
twin plug arrangement. It would be worthwhile to extract some
of the statements contained in the said amended complete
specification of the Respondent dated 08.11.2004 viz.,
"This invention relates to
improvement in the combustion
characteristics of a two valve per cylinder
internal combustion engine working on four
stroke principle....."
"These engines are provided with two
valves namely inlet valve and exhaust
valve. These valves open in a cavity in the
cylinder head conventionally known as
combustion chamber. The valves are
actuated by rocker arms....."
".....There are various methods
known to improve the engine performance
by optimizing the combustion
characteristics. Some of these are
improved ignition timing, improved
combustion chamber design, improved
65
valve timing and valve angles etc."
"The invented two valve per cylinder
engine with improved combustion
characteristics for efficient air fuel mixture
burning, essentially comprises of a pair of
spark plugs (21 & 22), sleeve (23), O rings
(24 and 24a), cylinder head (25), circlip
(26) and sleeve cap (27)."
"With reference to figure 2, the two
valve per cylinder engine with improved
combustion characterises for lean air fuel
mixture burning has two spark plugs are
located in the cylinder head 25
diametrically opposite to each other....."
"The applicants have developed a two
valve, per cylinder 150 cc capacity with
invented features of this application and
the same has been evaluated....."
"WE CLAIM:
(1) An improved Internal Combustion
Engine working on four stroke principle,
having two valves per cylinder, for efficient
66
burning of lean air fuel mixture used in
engines wherein the diameter of cylinder
bore ranges between 45 mm and 70 mm,
characterized in that said Internal
Combustion Engine comprises a pair of
spark plugs....."
(6) An improved Internal Combustion
Engine working on four stroke principle,
having two valves per cylinder, for efficient
burning of lean air fuel mixture used in
engines wherein the diameter of cylinder
bore ranges between 45 mm and 70
mm.....
(7) An improved single cylinder
Internal Combustion Engine working on
four stroke principle having two valves for
efficient burning of lean air fuel mixture
used in engines wherein the diameter of
said cylinder bore ranges between 45 mm
and 75 mm substantially as herein
described and as illustrated in the drawings
accompanying the specification."
(Emphasis added)
67
60. Therefore in the original specification filed on
16.07.2002, the provision of twin spark plugs as against the prior
art engine with one spark plug was the centric of the claim.
61. In the amended complete specification dated
07.07.2003 also, the centric point was the provision of two spark
plugs for generating spark at two predetermined location at the
same time to enable the engine to run efficiently resulting in
decreased emission, decreased fuel consumption and good
drivability.
62. It is relevant to note that after the filing of initial
specification dated 16.07.2002, as well as the amended complete
specification on 07.07.2003, the International Search Report
dated 13.08.2004, came to be issued pointing out that the
claimed invention cannot be considered novel or involving
inventive step in the light of the US Patent No.4534322 A1 and
that thereafter making a specific reference to the said US patent,
the Respondent came forward with its amended final complete
specification dated 08.11.2004, giving more thrust to the
68
provision of two valves even while referring to the twin plugs
configuration which apparently appeared to have persuaded the
Controller to grant the patent and sealing on 07.07.2005.
63. If such a prima facie conclusion is inevitable, we are
constrained to state that there is considerable force in the claim
of the Appellant in contending that the patent of the Respondent
suffers from the vice of prior art and obviousness.
64. At the risk of repetition, it will have to be stated that
the US Honda Patent having twin plugs configuration, without
specific reference to the bore size with three valve provision
granted on 13.08.1985, would certainly militate against the claim
of the Respondent based on its patent dated 16.07.2002, sealed
on 07.07.2005 in Patent No.195904. In all fairness, it would be
appropriate for the parties to workout their remedies in the
application for revocation pending before the Appellate Tribunal
filed at the instance of the Appellant in order to ascertain whether
or not the grounds raised in the said application would render the
already granted patent in favour of the Respondent invalid. In as
69
much as Section 107 of the Patents Act enable the Appellant in a
suit for infringement of a patent to rely upon every ground on
which it may be revoked under Section 64 as a ground of defence
for the defendant, the parties can work out their remedy in the
suit as well.
65. We are of the considered opinion that such grounds
raised by the Appellant in its application for revocation included
the grounds viz., anticipated patent, obviousness in the patent
and the invention in the patent is not patentable. In support of
the ground that the patent stands anticipated, the Appellant
relied upon Japan Patent No.59-060056 dated 05.04.1984 and
the characteristic contents in the said publication to show that
the Respondent patent contains the very same characteristics.
As far as the ground that the patent is not new, the Appellant
relied upon US Patent No.4534322 published on 13.08.1985,
which again was a specific ground raised in the present suit as
well as in the application for injunction. For the contention that
the invention is obvious, the Appellant relied upon several
patents granted in 1938, 1989 and certain other publications
70
referred in detail in the application for revocation.
66. Apart from the above analysis, when we consider the
claim of valid patent by the Respondent and the alleged
infringement by the Appellant it will be worthwhile to understand
the teachings of the already patented product of the Respondent
and the claim of the Appellant in respect of the alleged infringed
product viz., 125 cc 'FLAME', we had an opportunity of making a
reference to an article written by a student of Rajiv Gandhi
School of Intellectual Property Law, IIT Kharagpur, Mr.J.Sai
Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS". The said
article throws much light on the working of the product of the
patentee viz., the Respondent and that of the Appellant. We
deem it appropriate to extract a few points expressed in the said
article which reads as under:
".....Through its written description, Bajaj
has explained in sufficient detail the disadvantage
of using a single spark plug, as opposed to using
twin spark plugs located preferably diametrically
to each other (US patent 4177783 too contains a
71
similar arrangement). This is because of bettercontrolled
ignition timing in the latter and lesser
time taken for the flame to travel during
combustion. It has specifically listed the merits of
use of twin spark plugs in a lean mixture (a
mixture where the proportion of fuel in air is
lesser when compared to rich mixture).
The novelty according to Bajaj, also lies in
the use of a sleeve to protect the spark plug
which is susceptible to exposure to lubricating oil.
Such being the case, the emphasis and the scope
of protection would be limited to use of twin spark
plugs in a single cylinder with two valves, one
plug protected by a sleeve. It is interesting to
note that of the four patents cited in the
International Search Report in the PCT
application, 3 relate to inventions only on sleeve,
and only one speaks of use of twin spark plugs.
CC-VTi, on the other hand, predominantly is
about even combustion of fuel by altering the airfuel
mixture received by the 2 intake ports or
valves. Usually, a cylinder has one intake and one
exhaust valve. Earlier, the charge (air-fuel
mixture) was either subjected to swirl or a tumble
72
depending on the load conditions and speed. The
stirred or circumferential motion of charge in the
cylinder is called swirl, whereas a motion directed
towards the axis of the cylinder is called tumble.
The former is used for a lean mixture and
the latter is used for richer mixtures at high
speeds. Several patents on the use of these
phenomena exist. TVS’s technology combines
both these phenomena with 2 intake ports,
providing swirl and tumble simultaneously,
making the design compatible for both lean and
rich mixtures. The degree of swirl would be
greater for a lean mixture and the degree of
tumble for rich mixture. This design ensures even
combustion of fuel in all corners of the cylinder
and is further marked by the use of twin spark
plugs, which as explained earlier, provides fuller
combustion.
This shows that the points of emphases in
the designs of both these technologies differ
considerably, notwithstanding the use of twin
spark plugs in both instances....." (Emphasis
added)
67. The distinction made out by the Author of the said
73
article is quite appealing and does not conflict with the facts
pleaded by the parties before us. By taking a clue from the said
article, when the patented product of the Respondent is
considered, the granted patent is an improved internal
combustion engine working on four stroke principle. Accepting
the stand of the Respondent that with the placement of the twin
spark plugs in the cylinder head on diametrically opposite sides
and the ignition points set in such a manner resulting in improved
internal combustion in a lean burn mixture, the claim of the
Appellant's in relation to its product viz., 125 cc 'FLAME' talks of
even combustion of fuel by altering the air fuel mixture received
by the two intake valves with the combination of swirl as well as
tumble operated air fuel mixture. In other words, while the
Respondent's patented product of an improved internal
combustion engine is by virtue of the functioning of two spark
plugs due to its ideal location and the point of ignition in a lean
burn operation, the product of the Appellant though also with the
provision of twin spark plugs, the internal combustion was due to
the receipt of air fuel mixture by the two intake valves (one
providing swirl action and another tumble action) with the third
74
valve being exhaust valve also providing effective internal
combustion with the combination of lean burn and rich burn
mixture.
68. Having regard to the nature of operation of the engine
of the patentee viz., the Respondent as well as the Appellant in
such a descriptive manner viz., one by virtue of twin spark plugs
and the other by virtue of receipt of air fuel mixture through two
different intake valves both by swirl and tumble operations, as
rightly observed by the author of the said article, the point of
emphasis in the description of the product of the Appellant as
well as the Respondent differ considerably notwithstanding the
use of twin spark plug in both the technologies. Viewed in that
respect also we are convinced that the alleged infringement of
the Respondent's patent cannot be prima facie accepted.
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
75
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
76
application for revocation of patent is pending and
when serious controversy exist as regards the
existence of an invention based on prior art, the
Court should be slow in granting the injunction.
(vi) There can be no infringement if the
opponent has proved the same result by a
different combination of different elements.
(vii) The general rule in regard to the
construction of the validity of a patent is, that
construction which makes it valid should be
preferred rather than the construction which
rendered it invalid.
(viii) Patent specification should intend to
be read by a person skilled in the relevant art but
their construction is for the Court and to do so it
is necessary for the Court to be informed as to the
meaning of the technical words and phrases and
what was the common general knowledge i.e., the
knowledge that the notional skilled man would
have.
(ix) In construing an allegation of
infringement, what is to be seen is whether the
77
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.
78
70. By applying the above settled principles deduced from
the decisions of both English as well as Indian cases, we find that
the Appellant's contention as regards the validity of the patent is
a matter for detailed investigation in the main suit as well as in
the application for revocation pending before the Appellate
Tribunal.
71. Prima facie when we examine, as rightly set out in the
article of Mr.J.Sai Deepak, student of I.I.T. Kharagpur, the
Respondent's patented product de hors the fact that it has the
already existing concept of twin plug operation in an internal
combustion engine, at the threshold we are not inclined even
prima facie to state that the validity of the patent is doubtful.
The operation of the invention as claimed by the Respondent
appears to be plug centric one in as much as having regard to the
descriptive statement in the final complete specification it will
have to be held that the claim as set out therein if accepted
would spark the ignition with twin plugs in a four stroke engine of
a single cylinder with two valves specification produce improved
internal combustion in a lean burn mixture and the Respondent
79
may well be justified in its attempt to enforce its rights based on
the said patent. Nevertheless, on that score alone, we find it
difficult to countenance the claim of the Respondent that the
Appellant's product specification have infringed its patented right.
Here again, we find considerable knowledgeable expression made
by the author of the article Mr.J.Sai Deepak, wherein, he has
differentiated the product of the Appellant as valve centric one in
as much as the two intake valves as claimed by the Appellant
provides for combined air fuel mixture of swirl and tumble action,
with a separate exhaust valve in an internal combustion engine of
single cylinder with four stroke with the aid of twin plug
provision. The descriptive note of the author in stating that the
Appellant's product is predominantly of even combustion of fuel
by altering the air fuel mixture received by two intake ports or
valves and that therefore the said technology differs considerably
with that of the Respondent is quite convincing.
72. In this context, it will be worthwhile to refer to the AVL
patent No.196636, dated 25.05.2000 granted/sealed on
08.11.2006, which has been adopted by the Appellant based on
80
the Technical Assistance Agreement dated 13.11.2000, Technical
Collaboration Agreement dated 25.06.2004 and another
Technical Collaboration Agreement dated 10.06.2005 with AVL
Austria. In fact, the Patent Office of Government of India,
Ministry of Commerce and Industry, registered the name of the
Appellant as a Licensee based on its agreement dated
09.10.2007, with AVL LIST GMBH in respect of Patent No.196636
dated 25.05.2000, granted to AVL LIST GMBH. In the provisional
and complete specifications of AVL, the operation of three valve
system in a four stroke internal combustion engine has been set
out as under:
"This is achieved in accordance with the
invention in that the fuel supply device is formed
by a joint carburettor for both inlet ports, with
preferably the carburettor being arranged in the
zone of the branching of the inlet ports from the
inlet pipe. As a result of the combination
between load charging port, volumetric port and a
fuel supply device arranged as a conventional
carburettor, it is possible in a very simple manner
to achieve a controlled combustion in the
combustion chamber with very low emission
81
values and very favourable fuel consumption. By
using a conventional carburettor with a double
inlet port configuration with a volumetric port and
a charge loading port it is possible to make do
without any complex electric and electronic
devices. Thus one can omit complex control and
regulation apparatuses for injecting the fuel,
including the higher provision of energy.
Carburettor technology moreover offers the
highest possible reliability and the additional
advantage that the dimensional volume, weight
and costs of the internal combustion engine can
be kept very low.
In order enable the optional performance of
a stratification in the combustion chamber, it is
provided for a further embodiment of the
invention that during the opening of the throttle
device the charge loading port can be opened at
first and the volumetric port thereafter.
The charge loading port has the task of
providing the charge in the combustion chamber
with a momentum about the cylinder axis. It can
be arranged as a tangential or spiral port.
82
It can be provided for on the basis of the
concept that the charge loading port which is
arranged as a tangential or swirl port is provided
with a larger length then the volumetric port. If
the charge loading port is arranged as a
tangential port, it is provided with only a low
curvature and is strongly inclined towards the
valve axis and produces a flow which hits the
cylinder wall tangentially and leads to the
formation of a strong swirling movement in the
cylinder. The volumetric or natural port is
provided with a stronger curvature as compared
with the tangential port, but shows a lower
inclination towards the valve axis. It produces a
stream directed approximately against the centre
of the cylinder which neither produces a marked
swirling movement, nor a tumble movement.
The throttling of the volumetric port ensures
that the admission of the charge from this port
occurs with a lower impulse into the cylinder
chamber than the air supplied by the tangential
port. The overall flow field in the cylinder
chamber is thus dominated by the unthrottled
tangential port. The charge loading thus
produces a rapid, stable and even combustion.
83
This leads to a lower susceptibility to engine
knock despite higher compression. This creates
the prerequisites for achieving high thinnability in
order to achieve lower fuel consumption. At the
same time, compatibility for higher exhaust gas
return rates is increased, thus enabling a
considerable decrease in Nox emissions."
In the pleadings viz., the counter affidavit of the Appellant filed in
O.A.No.1357 of 2007 in C.S.No.1111 of 2007 in paragraph 30,
the Appellant has specifically averred that its arrangement with
AVL, Austria, the Appellant is as a Licensee of Indian Patent
No.196636, dated 25.05.2000. In the same counter affidavit in
para 39, the Appellant has explained about the operation of three
valve configuration in the internal combustion engine, the
operation of which has been patented in patent No.196636 dated
25.05.2000.
73. Besides the above, the set of photographs filed by the
Appellant in Volume VIII of the typed set of papers which have
been marked as Figures I to XIX also discloses the marked
84
difference as between the three valve configuration of the
Appellant and two valve configuration of the Respondent vis-a-vis
the positioning of the twin plugs in the respective engines which
are quite visible. The photographs are annexed as Figures I to
XIX to this Judgment for ready reference. The above referred to
statements contained in the Indian Patent No.196636, the terms
of the agreement and the recognition of the Appellant as a
Licensee by the patent office read along with the stand of the
Appellant in its counter affidavit sufficiently demonstrate that the
internal combustion process in the Appellant product was not
exclusively dependent on the twin plug operation but was based
on the three valve configuration in Patent No.196636 dated
25.05.2000. If such a conclusion can be arrived at even prima
facie, we are convinced that the stand of the Appellant is well
justified. We therefore approve the stand of the Appellant that
the third valve is not merely a cosmetic one.
74. Our conclusion is also fortified by the statutory
provision of the Patents Act. A reading of the definition
'invention', 'inventive step' and 'new invention' as defined under
85
Section 2 (j), (ja) and (l) respectively, makes it clear that the
technical advance which had not so far fallen in public domain in
an industrial application and which was not obvious before its
pronouncement, such technical advance though may be miniscule
in nature could still be recognised as an invention and once it
gets the seal of approval of the Patent Authority by way of grant
of patent, the same will have to be given its due recognition. In
the case on hand, the claimed invention of the Respondent in
respect of its patent No.195904 viz., improved internal
combustion working on four stroke principle with twin plug and
two valves configuration merits its own recognition by virtue of
the patent dated 16.07.2002, with date of sealing on 07.07.2005
and is protected by the provision of the Patents Act in particular
Section 48. In the same manner, the Appellant as a Licensee of
Patent No.196636 dated 25.05.2000, with date of sealing on
08.11.2006, in respect of its invention of four stroke internal
combustion engine with at least two inlet valve and one exhaust
valve also with twin plug configuration is entitled to be
recognised on its own merits with equal protection of the Patents
Act in particular Section 48.
86
75. Our conclusion being prima facie for the purpose of
dealing with an Interlocutory Application of the Appellant as well
as the Respondent, the parties will have to workout their
remedies in the revocation application of the Appellant before the
Appellate Tribunal and also while contesting the main suit on
merits at the time of its final hearing independent of whatever
stated in this Judgment. Operation of Sections 64, 104-A and
107 of the Patents Act will have to be independently applied at
the appropriate stage of the respective proceedings.
76. When we apply the law laid down in the various
decisions cited before us, as far as the validity of the patent is
concerned, it is by now well settled that the validity of the patent
can always be challenged in the High Court on various grounds
for revocation as provided under Section 64 or the ground on
which the allegation of infringement is to be established as
provided under Section 104 and or could be defended under
Section 107 of the Patents Act.
87
77. In as much as we have held that the patent of the
Respondent viz., patent No.195904, dated 16.07.2002 and the
claim of the Appellant as a Licensee of patent No.196636 dated
25.05.2000 are prima facie valid in their respective spears of
invention, even applying the ratios laid down in the decisions
referred to in our Judgment, the parties are relegated to workout
their remedies at the appropriate stage in an appropriate manner
while contesting the revocation application before the Appellate
Tribunal or at the time of the final hearing of the main suit.
78. As far as the ratio laid down to the effect that if a
patent is a new one, the Court are to be slow in granting interim
injunction, we find that in the case on hand, the Respondent's
patent No.195904 came to be granted/sealed on 07.07.2005 and
the launching of the Appellant's vehicle 125 cc 'FLAME' was
scheduled in the month of December, 2007. Moreover, as
discussed in detail in the earlier paragraphs, even the Appellant's
vehicle contains four stroke internal combustion engine with
three valve configuration by virtue of the licence it holds in
respect of Indian Patent No.196636, dated 25.05.2000,
88
granted/sealed on 08.11.2006. In such circumstances, while it
cannot be held that the Respondent's patent No.195904 was too
old, while at the same time the fact that the Appellant was also
supported with a valid patent as a licencee, the grant of
injunction does not call for in the facts and circumstances of this
case.
79. Further applying the well laid down principle that when
application for revocation of a patent of the Respondent is
pending before the Appellate Tribunal and when such an
application has been preferred on the ground of existence of a
prior art, obviousness and other formidable grounds as provided
under Section 64 of the Patent's Act, the Court should not grant
injunction in such cases. We hold that in the special facts and
circumstances of the case, grant of interim injunction cannot be
sustained. According to the Appellant the failure of the
Respondent in its initial specification dated 16.07.2002 and the
amended specification of the year 2003, in not specifically
referring to the Honda Patent No.4534322 dated 13.08.1985, and
making a reference to the said patent after the International
89
Search Report dated 13.08.2004 and that too by making a
statement that the said existing Honda Patent related to large
bore size and not with reference to a small bore are all grounds
which require detailed consideration on merits. The allegation of
the Appellant that the Respondent secured the patent by making
a deceptive statement about the bore size of the Honda Patent,
requires a detailed investigation. Further it will have to be stated
that such an allegation of the Appellant cannot be rejected as
baseless or made without any substance. In such circumstances
as held in various decisions referred to above, the grant of
interim injunction would be wholly not justified.
80. In the case on hand, the alleged infringement is in
respect of the improved internal combustion achieved by the
Respondent in a four stroke engine of small bore with twin plugs
operations of lean burn fuel. In the decision relied upon by the
learned senior counsel for the Respondent reported in 1884 (6)
RPC 49 (William Needham and James Kite Vs. Johnson and
Co.) it has been held that there can be no infringement if one
has produced the same results by a different combination of
90
different elements, that is another and a different combination,
and is not either an improvement or anything else of the other
and that it should be wholly different. Applying the said principle
as we have noted that the Appellant's product is a four stroke
internal combustion engine with two inlet valves and one exhaust
valve which application had its own special effects in the
operation of the internal combustion of the engine or in its
improvement, such an operation when supported by another
valid Indian Patent No.196636 dated 25.05.2000, it will have to
be necessarily held that the allegation of infringement based on
the Respondent's patent No.195904 dated 16.07.2002 by itself
cannot form the basis for the alleged infringement. In other
words, we are convinced with the teachings of the Respondent's
invention of its Patent No.195904 dated 16.07.2002 has been
distinctively distinguished by the teaching of the patent
No.196636 dated 25.05.2000, which supports the alleged
infringed product of the Appellant and therefore the grant of
injunction by the learned Single Judge cannot be sustained.
81. As far as the preposition that the patent specifications
91
are intended to be read by persons skilled in the relevant art, we
have found that there is at least one article by an enlightened
student of Intellectual Property Law of I.I.T. Kharagpur, which we
have referred in detail in the earlier paragraphs, where the
Author was able to demarcate the distinctive features of the
patented product of the Respondent as well as that of the
Appellant and by making a reference to the descriptive distinction
in the respective specifications of the Appellant as well as the
Respondent, we are quite convinced that even going by the
independent opinion of a person in the concerned field of art
there is no scope to restrain the Appellant by way of grant of
interim injunction. In the various other materials relied upon, we
do not find a comparative analysis made with particular reference
to the respective patents of the parties.
82. As far as the application of the concept of pith and
marrow of the claim, what is stated is that novel feature which is
claimed to be essential would constitute the pith and marrow.
The novel feature in the invention of the Respondent based on
patent No.195904 dated 16.07.2002, varies in very many
92
respects in the novel feature of the Appellant's product based on
patent No.196636 dated 25.05.2000. While the acclaimed novel
feature of the Respondent's product is twin plug operation
resulting in improved internal combustion, the acclaimed novel
feature in the Appellant's product is in the operation of two intake
valves with one exhaust valve providing a combination of swirl
and tumble operation of lean and rich air fuel mixture in its
internal combustion process of course with the aid of twin plugs.
If the pith and marrow of the Respondent and the Appellant are
distinctively identifiable there is absolutely no scope for grant of
injunction as has been done by the learned Single Judge.
83. In fact in the decision reported in AIR 1930 PC 1
(Canadian General Electric Co. Ltd. Vs. Fada Radio Ltd.) the
Privy Council has held that slight alterations or improvements
may produce important results and may disclose great ingenuity.
When we apply the said law laid down in sustaining an invention,
we are convinced that the "invention" consisting of an "inventive
step" at the hands of the Appellant and the Respondent operate
independently though in respect of four stroke internal
93
combustion engine with twin plug operation of lean burn mixture.
94
84. Therefore, while on the one hand the Respondent's
patent having been granted is to be accepted prima facie as a
valid one, in the same breath, it will have to be held that merely
because such a valid patent is existing in favour of the
Respondent, that by itself, it cannot be held that the Respondent
has made out a strong prima facie case of infringement as
against the Appellant. We say so because we too find a
distinctive feature of a different operation in the Appellant's
technology with three valve provision with twin plugs operation
and the said three valves operation of the engine produce
distinctively different result in its operation. To be more precise,
while the twin plug operation in the Respondent's internal
combustion engine may have resulted in improved internal
combustion, the three valve technology of the Appellant also with
twin plug provision produce a distinctive product of its own,
different from the claimed invention of the Respondent.
85. Such a distinction as between the patented claim and
the infringed product is well protected under the provisions of the
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Patents Act, as has been set out in the various decisions we have
no hesitation in holding that in the case on hand, even while
holding that the claim of valid patent at the instance of the
Respondent can be prima facie accepted, the alleged
infringement as against the Appellant cannot be held to have
been made out at the instance of the Respondent. Therefore,
there is no case made out for grant of interim injunction.
However, taking into account of our observation that the
controversy can well be decided in the Suit or in the Revocation
Application, we only state that if the Respondent seeks for an
early hearing of the Suit or the Revocation Application, the
learned Judge or the Tribunal, as the case may be, may decide
the Suit or the Revocation Application on its own merits
uninfluenced by whatever stated in this Judgment and may
decide the case at an early date.
86. In the light of our above conclusion, the question of
balance of convenience or irreparable loss does not come into
play. Having regard to our above conclusion, we hold that the
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Respondent is not entitled for an injunction as applied for and the
injunction granted by the learned Single Judge cannot therefore
be continued. Both the appeals stand allowed for the reasons
stated herein and the impugned common order of the learned
Single Judge dated 16.02.2008, passed in O.A.No.1357 of 2007
in C.S.No.1111 of 2007 is set aside and the application in
O.A.No.1272 of 2007 in C.S.No.979 of 2007 stands allowed.
There will be no orders as to Costs. All the M.Ps. are closed.
(S.J.M.J.) (F.M.I.K.J.)
18.05.2009
Index : Yes
Internet : Yes
kk
S.J.MUKHOPADHAYA, J.
and
F.M. IBRAHIM KALIFULLA, J.
kk
97
PRE DELIVERY JUDGMENT
in O.S.A.Nos.91 & 92 of 2008
18.05.2009
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