Bilcare Ltd v Amartara Pvt Ltd (2007)

Summary

“The claim of the plaintiff of patent violation by the defendant in respect of metallized packaging film patent of the plaintiff has given rise to the present litigation.” (para 1) “The plaintiff is a registered proprietor of the patent bearing No. 197823 in respect of the said metallized packaging films in pursuance to a patent granted on 12.04.2006 as per an application of the plaintiff dated 03.03.2004.” (para 2) “The plaintiff was granted ad interim ex parte order on 01.08.2006. The defendant has contested the claim of the plaintiff by filing a written statement and also a counter claim.” (para 6) “The defendant filed the post grant opposition on 04.09.2006 under Section 25(2) of the Patent Act, 1970” (para 11), and “claims invalidity of the patent on the ground that there is no novelty in the same and such a film already existed in the market.” (para 12)

The Court held that “there cannot be any presumption in favor of the validity of the patent” (para 49), that “The individual components were known. The combination of these components was also known.” (para 54), and that “the patent does not prima facie satisfy the test of a new invention and was already known to the trade.” (para 56) It found that “the plaintiff failed to disclose this important fact in the plaint” (para 62), “this ground alone” being “sufficient to deny the plaintiff the continuation of any interim relief” (para 63), and that “prima facie the patent was granted for a multi layered film while the defendant is really using two layered film.” (para 80) “Interim orders dated 01.08.2006 are vacated.” (para 91)

What the court decided

1. Grant and the presumption of validity. Applying “the observations in para 32 of the judgment in M/s Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries”, the Court held that “merely because a patent has been granted does not guarantee the validity of the patent. In the present case, an opposition has been filed by the defendant and the counter claim of the defendant is based on the said opposition. Thus there cannot be any presumption in favor of the validity of the patent and thus the Court would be required to examine this aspect in the present suit.” (para 49)
2. Novelty and inventive step. “the essential element of novelty and inventive step would depend on the given facts of each case. If the particular manner of manufacture is same, then there cannot be any novelty in the subject matter. If there is no inventive step, it implies that it is obvious.” (para 49) “It is not enough that the purpose is new or that there is novelty but in the application there is a mandatory requirement of novelty in the mode of application.” (paras 49–50)
3. The view at the interim stage. “The present position being the one of interim stage only a prima facie view can be taken. The final view would arise only after trial in the suit. Needless to say that the parameters of balance of convenience and irretrievable loss and injury would have to be kept in mind by the Court while determining as to which way the order should go at the interim stage.” (para 51)
4. Mosaicing. “A perusal of the patent claim of the plaintiff itself shows that the plaintiff itself has acknowledged that metallization of a polymeric film is known. It would not be a defense of the defendant to show that the various integers were already known separately and thus the combination thereof cannot be patented. This would amount to mosaicing which is recognized as not permissible for determining the validity of a patent in view of settled legal position enunciated hereinabove.” (para 52)
5. The known combination. “I am unable to accept the submission of the learned Counsel for the plaintiff that the said factors were unknown to the industry” and “The individual components were known. The combination of these components was also known.” On the prior literature, “The above shows that the features and qualities claimed by the plaintiff of the invention including use of PVC” (“polyvinyl chloride”) “, a metallised layer, thermoformability, and transparency/translucency were known as a combination as well.” (para 54)
6. Choosing the thicknesses. “As to what thickness of each of the components would best combine to give an appropriate result, is a mere matter of experimenting with different thicknesses. It prima facie does not appear to have an inventive quality. It is thus not a case of defense of mosaicing by the defendant but of the plaintiff using known factors and materials to make some adjustments and then claiming patent in the same to preclude others from doing the same. This would not be permissible.” (para 55) “I am thus of considered view that the patent does not prima facie satisfy the test of a new invention and was already known to the trade.” (paras 55–56)
7. Disclosure in the plaint. “In all such matters, it is trite to say that a party must disclose all facts and come clean before the Court. Non disclosure, concealment of facts or improper disclosure would result in denial of the equitable relief of injunction.” (para 58) “Firstly the plaintiff failed to disclose this important fact in the plaint. The case set up was that of manufacture by the plaintiff itself.” (para 62) “In my considered view this ground alone should be sufficient to deny the plaintiff the continuation of any interim relief.” (paras 58, 62–63)
8. Release before the application. “The material referred to aforesaid, in my considered view, thus suggests that the trade mark Patina covered a product which was in existence prior to the date of patent application.” “The plaintiff itself in the plaint has not set out the earlier existence of the product Patina and that the product in question was different from the same.” “Thus there is force in the plea of the defendant.” (para 71)
9. Two-layered and three-layered films. “I am unable to accept the plea of the learned Counsel for the plaintiff since essentially the claim of the plaintiff is for a multi layered film comprising of three layers.” (para 77) “The plea of the learned Counsel for the plaintiff that the third layer was optional does not find sustenance from the patent application itself as there is no mention of this fact in the specifications of the patent or the claims. Thus prima facie the patent was granted for a multi layered film while the defendant is really using two layered film.” (paras 77–80)
10. The United States prosecution. “The plaintiff failed to obtain the patent in terms of the original application for a two layered film and thus the patent was really granted for a multi-layered film. The specifications referred to aforesaid in the application for patent filed in India also show that it is really a patent for a multi layered film and not for two-layered film.” (para 79)
11. Registration and the defence. “The conspectus of the aforesaid decisions is that it is not sufficient for the grant of an injunction that a patent is registered and the strength of the defense including the revocation application have to be looked into” (para 84)
12. Balance of convenience. “The patent was granted recently and the objections to the same are pending post grant.” “any continuation of the injunction would cause loss to the defendant and not to the plaintiff. The plaintiff can be protected by directing the defendant to keep accounts of the sales of the film in question during the pendency of the suit and filing the same on a quarterly basis with copy to the plaintiff.” (para 90)
13. Disposition. “The result of the aforesaid is that the plaintiff has failed to make out a prima facie case for the continuation of the interim injunction on account of what has been discussed hereinabove.” (para 89) “Interim orders dated 01.08.2006 are vacated.” (para 91) On contempt, “I am not inclined to proceed further in the contempt application and discharge the notice on the same.” (para 88) “Defendant is also entitled to costs of Rs 50,000/-.” (paras 88–93)

What the court did not decide

On manufacture of metallised film by others in India, “In my considered view this is not the stage at which any conclusion can be derived at one way or the other on the basis of the material on the record. Reference is to metallized PVC” (“polyvinyl chloride”) “film in general without any details about the different qualities.” (para 57)

Subsequent treatment

Followed — In F Hoffmann-La Roche v Cipla (2008) (Delhi High Court, 19 March 2008), the Court relied on Bilcare v Amartara, among the decisions refusing interim injunctions on recent and challenged patents, for the proposition that mere grant does not guarantee validity and that no presumption of validity arises where the defendant’s counter-claim rests on a pending opposition (para 62).

Followed — In F Hoffmann-La Roche v Cipla (2009) (Delhi High Court, Division Bench, 24 April 2009), the Bench cited it with Bishwanath Prasad and Standipack in rejecting the plea that a multi-layered examination casts a heavy burden on the defendant at the interim stage (para 53).

Followed — In B. Braun Melsungen v Rishi Baid (2009) the Delhi High Court, refusing an interim injunction, held that “The plaintiffs, however, can be protected as was done in the case of Bilcare Limited (supra) by directing the defendants to keep accounts of the manufacture and sales of the safety I.V. cannula in question during the pendency of the suit and to make the same available to the Court as and when directed by it.” (para 44)

Followed — In J. Mitra v Kesar Medicaments (2008) the Delhi High Court held that “Insofar as the aspect of mosaicing is concerned, the legal position as set out in the judgment in Billcare Ltd. case (supra), it would not be a defense to show that the various components in the patented product are known separately. The combination of such components may be patentable.” (para 101)