Bilcare Ltd v Supreme Industries Ltd (2007)

Summary

“This order shall decide the two appeals mentioned above which entail similar questions of facts and law. The controversy in these two appeals swirls around the question, ‘is there any presumption in favor of the validity of the patent for grant of temporary injunction in favor of patentee.’” (para 1) “The present appeals are directed against the orders of the learned Trial Court dated 7th February, 2007, wherein the Trial Court dismissed the applications under Order XXXIX Rules 1 and 2 CPC filed by the plaintiff/appellant, the applications filed by the defendants/ respondents under Order XXXIX Rule 4 CPC were permitted and ex parte injunction orders dated 6th October, 2006 were vacated.” (para 1) On the appellant’s case, it “developed a process and a film was made using that process, by depositing a fine layer of aluminum on the surface of the PVC” (“poly vinylchloride”) “film” (para 2), patented “at serial number 197823” (para 2).

The Court held that “it cannot be made a rule of thumb that interlocutory injunction must be granted whenever a case is filed in this context” (para 13), and that a comparison of the prior literature with “the scope of patent No. 197823 set out primarily in claim No. 1 has put a large question mark over the so called invention.” (para 15) It found that “The patent in question is new one. It was registered in the year 2004. The appellants filed the suit in the year 2006, i.e. after the lapse of two years only. By no stretch of imagination it can be said to be sufficiently old.” (para 25) “All the three essential conditions viz, prima facie case, balance of convenience and irreparable loss lean on the side of the respondents.” (para 25) “Appeal being merit-less is dismissed.” (para 26)

What the court decided

1. No rule of thumb. “I find force in the arguments urged by learned Counsel for the appellant in a measure but it cannot be made a rule of thumb that interlocutory injunction must be granted whenever a case is filed in this context. Other following factors are to be considered:” “(i) Whether the Act in question is really an invention. It is to be proved that the device in question is new, non-obvious and inventive.” “(ii) Whether it is not of recent origin?” “(iii) Whether it pertains to three-layered product or two-layered product?” “(iv) And uppermost, whether the damages will provide adequate remedy should the claim succeed?” “(v). Last but not the least, whether it will be proper for the appellate court to upset the trial court order which has made perspicacious judgment?” (para 13)
2. The burden on the patentee. “All these knotty questions must be investigated or discussed down to the ground. If the answers are hidden behind the veil of impenetrable mystery or these are apparent from the materials available, injunction ought not to be granted. It is trite saying that it is nobody else but the appellant himself, who, is to carry the ball in proving its case.” (para 13)
3. Doubt over the invention. Of the book “Packaging Foods with Plastics”, which “was published in the year 1991” and “must be read in juxta position with the alleged invention made by the appellant” (para 14), the Court held: “A comparative study of this book and the scope of patent No. 197823 set out primarily in claim No. 1 has put a large question mark over the so called invention. An integument of doubt envelops the case of the appellant. This is a very intricate matter which requires evidence of experts, investigation and other evidence.” (paras 14–15)
4. A new patent. Having set out from National Research Development of India v Delhi Cloth & General Mills Co (1979) that “If the patent is more than 6 years old and there has been actual user it would be safe for the court to proceed upon this presumption.” (para 21), the Court found: “The patent in question is new one. It was registered in the year 2004. The appellants filed the suit in the year 2006, i.e. after the lapse of two years only. By no stretch of imagination it can be said to be sufficiently old. There are no conflictions on the point that the patent is less than six years old.” (paras 21, 25)
5. Grounds for suspicion. “Secondly, there are tangible grounds for suspicion of the alleged invention.” (para 25)
6. Damages as a remedy. Having set out from Niky Tasha India v Faridabad Gas Gadgets (1984) that “an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed” (para 22), the Court held: “There lies no rub in granting damages which would provide an adequate remedy should the claim succeed.” (paras 22, 25)
7. Interference in appeal. “Now I turn to one more significant aspect. The order passed by learned trial court appears to be flawless.” Relying on Telemecanique and Controls(I) Limited v. Schneider Electric Industries SA, which held that “this Court will not interfere with the exercise of the discretion of the court of first instance” “except where the discretion is shown to have been exercised arbitrarily or capricious or perversely or where a court has ignored the settled principles of law regulating grant or refusal of interlocutory injunctions” (para 24), the Court held: “Above all it will not be proper to upset the well reasoned judgment of the trial court at this stage. The trial court has meticulously checked the record with precision and clarity.” (paras 24–25)
8. The three conditions. “All the three essential conditions viz, prima facie case, balance of convenience and irreparable loss lean on the side of the respondents.” (para 25)
9. Disposition. “Appeal being merit-less is dismissed. The copy of this judgment be sent to trial court forthwith.” On the pending applications, “In view of the dismissal of the appeal, no further orders are required to be passed in these applications and the same are dismissed.” (para 26)

Subsequent treatment

Distinguished — In Bajaj Auto v TVS Motor Company (2008) (Madras High Court, 16 February 2008), the Court set out para 25 as holding that use of a patent for two years cannot be said to be sufficiently old, and distinguished it because the applicant’s patent there had been in use from 2003, nearly five years (paras 58–59).