Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978)

Summary

"M/s Hindustan Metal Industries, respondent herein, (hereinafter called the plaintiff) is a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur" (para 2). "Purshottam Dass, one of the partners of the plaintiffs-firm, invented a device and method for the manufacture of utensils, in 1951", and "The plaintiff after filing the necessary specifications and claims in the Patent Office, got the alleged invention patented under the Indian Patents and Designs Act, 1911 (hereinafter called the Act), at No. 46368-51 on May 6, 1953 with effect from December 13, 1951 as assignee of the said patent" (para 4). "On August 8, 1953, the plaintiffs instituted a suit for injunction and damages" (para 3); "The defendant also filed a counter-claim, praying for revocation of the patent" (para 7) and "filed a petition under Section 26 of the Act for revocation of the patent" (para 8). "Both the suits were consolidated and tried together by a learned Single Judge (V.G. Oak, J.)" (para 9), who "dismissed the plaintiff's suit (No. 3 of 1955), but allowed the petition for revocation (in Suit No. 2 of 1954) with costs; and revoked the Patent (No. 46368-51)" (para 10). The Appellate Bench concluded that "the method of mounting patented by the appellant did involve and an inventive step and was a manner of new manufacture and improvement" and "decreed the plaintiff's suit with costs" (para 12). "Hence, these appeals." (para 13)

The Court recorded that "in this appeal before us the controversy has narrowed down into two issues" of new manufacture and inventive step (para 36). It held that "an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'" (para 21), and that the grant "does not guarantee the validity of the patent" (para 32). On the facts, "The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a workshop improvement" (para 50), and the Appellate Bench's finding of novelty in the pointed tailstock "goes beyond the scope of the specifications and claims made by the patentee himself", where "it is stated that 'the pressure spindle may be pointed or blunt'" (para 54). "The grant of the patent in question was therefore, invalid and was liable to be revoked on the grounds mentioned in clauses (d) and (e) of Section 26 (1) of the Act." (para 56) Of the utility argument: "As pointed out already, the crucial test of the validity of a patent is whether it involves novelty and an 'inventive step'? That test goes against the patentee." (para 57) "In the result, the appeals are allowed, the judgment of the Appellate Bench is set aside and that of the trial Court restored. In the peculiar circumstances of the case, the parties are left to bear their own costs throughout." (para 58)

What the court decided

1. Obiter. The object of patent law. "The subject of Patent Law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office which, after the expiry of the fixed period of the monopoly, passes into the public domain." (para 17)
2. Novelty and utility. "The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was already known before the date of the patent." (para 18)
3. Utility under the 1911 Act. "It is to be noted that unlike the Patents Act, 1970, the Act of 1911 does not specify the requirement of being useful in the definition of 'invention'. But Courts have always taken the view that a patentable invention, apart from being a new manufacture, must also be useful. The foundation for this judicial interpretation is to be found in the fact that Section 26(1) (f) of the 1911 Act recognises lack of utility as one of the grounds on which a patent can be revoked." (para 19) "'Manufacture' according to the definition of the term in Section 2 (11) of the Act, includes not only 'any art, process or manner of providing, preparing or making an article' but also 'any article prepared or produced by the manufacture'." (paras 19–20)
4. Improvements and combinations. "It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old, known integers may be so combined that by their working inter-relation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent." (para 21)
5. Novelty in the mode of application. After quoting Lord Davey in Rickmann v. Thierry that "there must be novelty in the mode of application" and Cotton L. J. in Blackey v. Lathem that "to be new in the patent sense, the novelty must show invention", the Court held: "In other words, in order to be patentable, the new subject-matter must involve 'invention' over what is old. Determination of this question, which in reality is a crucial test, has been one of the most difficult aspects of Patent Law". (para 21)
6. The capacity of a craftsman. Holding that "Since in India, also, the law on the subject is substantially the same, it will be profitable to extract the same", the Court adopted the passage that "it may be only a normal development of an existing manufacture" and that "A patentable invention, therefore, must involve something which is outside the probable capacity of a craftsman--which is expressed by saying it must have 'subject-matter' or involve an 'inventive step'", for "it is hard to conceive how there can be an 'inventive step' without novelty." (para 22)
7. Mixed question of law and fact. "Whether an alleged invention involves novelty and an 'inventive step', is a mixed question of law and fact, depending largely on the circumstances of the case. Although no absolute that is uniformly applicable in all circumstances can be devised, certain broad criteria can be indicated." (para 23)
8. Prior public knowledge. "Whether the 'manner of manufacture' patented, was publicly known, used and practised in the country before or at the date of the patent? If the answer to this question 'Yes', it will negative novelty or 'subject-matter'. Prior public knowledge of the alleged invention which would disqualify the grant of a patent can be by word of mouth or by publication through books or other media." The Court added from Hindmarch: "If the public once becomes possessed of an invention ... by any means whatsoever, no subsequent patent for it can be granted either to the true or first inventor himself or any other person". (para 23)
9. Obviousness judged objectively. "The expression 'does not involve any inventive step' used in Section 26 (1) (e) of the Act and its equivalent word 'obvious', have acquired special significant in the terminology of patent law. The 'obviousness' has to be strictly and objectively judged." Of the forms of the question, the one in Radio v. John Two & Son Ltd. "is apposite. It is: 'Whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known.'" (para 24)
10. The draftsman and the skilled worker. "Another test of whether a document is a publication which would negative existence of novelty or an 'inventive step' is suggested": "Had the document been placed in the hands of a competent draftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, 'this gives me what I want ?'" and "Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned ?", the latter as "referred to by Vimadalal, J. of Bombay High Court in" Farbwerke Hoechst v Unichem Laboratories (1968). (para 25)
11. No presumption of validity. "It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970. In the light of this principle, Mr. Mehta's argument that there is a presumption in favour of the validity of the patent, cannot be accepted." (para 32)
12. Grounds of revocation as defences. "Section 29(1) of the Act entitles a patentee to institute a suit against any person who, during the continuance of the plaintiff's patent, infringes it. Sub-section (2) of the section provides that every ground on which a patent may be revoked under Section 26 shall be available by way of defence to a suit for infringement." (para 34)
13. Construing the specification. "As pointed out in Arnold v. Bradbury", "the proper way to construe a specification is not to read the claims first and then see what the full description of the invention is, but first to read the description of the invention, in order that the mind may be prepared for what it is, that the invention is to be claimed, for the patentee cannot claim more than he desires to patent." With Lord Esher, M. R. in Parkinson v. Simon, "as far as possible the claims must be so construed as to give an effective meaning to each of them, but the specification and the claims must be looked at and construed together." (para 43) "The learned trial Judge precisely followed this method of construction." (paras 43–44)
14. Procedure. Findings of fact on appeal. "We have ourselves examined the evidence on record with the aid of the learned Counsel for the parties, and have ourselves compared the machine (Ex. CC and Ex. XVI) which were produced before us." "The view taken by the trial Court was quite reasonable and entitled to due weight." (para 40) The trial Judge's findings "should not have been lightly disturbed by the Appellate Bench. These were, as already observed, largely findings of fact, base on appreciation of the evidence of witnesses and the trial Court had the initial advantage of observing their demeanour in the witness-box." (paras 40, 50)
15. Procedure. The inventor who did not testify. Purshottam "was the best informed person who might have answered the charge of lack of novelty levelled by the opponent side, by explaining what was the novelty of the alleged invention and how and after what research, if any, he made this alleged 'discovery'." "Being a partner of the respondent-firm, and personally knowing all the circumstances of the case, it was his duty as well as of the respondent-firm, to examine him as a witness so that the story of the particular invention being a new manufacture or improvement involving novelty, could, in all its aspects, be subjected to cross-examination. By keeping Purshottam away from the witness-box, the respondent-firm, therefore, took the heavy risk of the trial Court accepting the charge of lack of novelty made by the appellant herein." (para 47)
16. A workshop improvement. "The patented machine is merely an application of an old invention, known for decades before 1951, for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application, which is no more than a workshop improvement", "a normal development of an existing manner of manufacture not involving something novel which would be outside the probable capacity of a craftsman. The alleged discovery does not lie outside the track of what was known before." "There has been no substantial exercise of the inventive power or innovative faculty. There is no evidence that the patented machine is the result of any research, independent thought, ingenuity and skill." "Nor does this combination of old integers involve any novelty. Thus judged objectively, by the tests suggested by authorities, the patent in question lacked novelty and invention." (para 50)
17. Old contrivance, old way. The Court referred to Harwood v. Great Northern Rly. Co. "as, in principle, that case is analogous to the one before us", recording the rule as "Blackburn, L. J., succinctly summed up": "a mere application of an old contrivance in the old way to an analogous subject, without any novelty or invention in the mode of applying such old contrivance to the new purpose, is not a valid subject-matter of a patent." "The above enunciation squarely applies to the facts of the present case." (paras 51–52)
18. Novelty the claims do not assert. The Appellate Bench's finding (7) "goes beyond the scope of the specifications and claims made by the patentee himself, in the subject of the patent. From a perusal of the specifications and the 'claims', extracted earlier, it is evident that there is no assertion therein, of novelty for the pointed tailstock; rather it is stated that 'the pressure spindle may be pointed or blunt'." (para 54) "In the face of the admissions of the representative of the patentee, it was not possible for the Court to work out finding (7) on its own, without allowing itself to get into the unenviable position of appearing more Royalist than the King." (paras 53–55)
19. Utility no answer. Mr. Mehta's "argument is that since the Courts below have concurrently held that the invention had utility the patent should be sustained. We are unable to accept this contention. As pointed out already, the crucial test of the validity of a patent is whether it involves novelty and an 'inventive step' ? That test goes against the patentee." (para 57)
20. Disposition. "The learned trial Judge was right in holding that the patented machine was neither a manner of new manufacture or novel improvement, nor did it involve any inventive step, having regard to what was publicly known or used prior to the date of the patent. The grant of the patent in question was therefore, invalid and was liable to be revoked on the grounds mentioned in clauses (d) and (e) of Section 26 (1) of the Act." (para 56) "In the result, the appeals are allowed, the judgment of the Appellate Bench is set aside and that of the trial Court restored. In the peculiar circumstances of the case, the parties are left to bear their own costs throughout." (paras 56, 58)

What the court did not decide

"Although the defendant had both in his defence and in the counter-claim for revocation of the patent pleaded six grounds mentioned in clauses (d), (e), (f), (g), (i) and (b) of Sec. 26(1), yet, in this appeal before us the controversy has narrowed down into two issues" (para 36).

Subsequent treatment

• Followed — In Cipla v F Hoffmann-La Roche (2015) the Delhi High Court Division Bench held that "Obviousness has to be strictly and objectively judged" and that in this case "the Supreme Court laid down the principles to test 'inventive step'", reproducing para 25.
• Followed — In Bajaj Auto v TVS Motor Company (2008) the Madras High Court held that "the effect of Section 13(4) has been clearly held by the Hon'ble Supreme Court in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries", reproducing para 32.
• Followed — In Allergan v Controller of Patents (2023) the Delhi High Court relied on this case for "the object of patent law" and, on "patent claim construction, vis-à-vis the complete specifications", reproduced para 43.