Bombay Agarwal Co v Ramchand Diwanchand (1952)

Summary

“This appeal and Letters Patent Appeal No. 28 of 1951 are against the judgment of Mudholkar J. in a matter dealing with the infringement of a patent granted in March 1942 to the Appellants in these two appeals.” (para 1) “In the year 1942 it had obtained a grant of patent for a drink made out of gram husk which had been processed in the way described in the specifications appended to the patent. The case of the Plaintiff was that the Defendants in the two suits had started in the year 1950 to imitate the stuff produced by them and thus contravened their patent.” The Defendants “claimed revocation of the patent granted to the Plaintiff-company and as a result under the proviso to Section 29, Patents and Designs Act, 1911, the case was transferred to this Court.” (para 2) The single Judge “has found against the Plaintiff on the question of infringement and has also revoked the patent of the Plaintiff.” (para 2) On appeal counsel for the Respondents “confined himself to Clauses (d) and (e) of Section 26(1), Patents and Designs Act.” (para 38)

The Bench held that “the articles produced as impugned articles by the Plaintiff are the articles seized severally at the ginning factory, the (sic) Karkhana and the railway station” (para 22) and that “the quantity of ferrous sulphate was not of the essence of the invention or essential to its success.” (para 29) It held that “both that the process here as well as the finished powder must be treated as ‘manufacture’” (para 42), that “To that extent there is the subject-matter of the patent and also novelty” (para 43), and that the oral evidence of prior manufacture “appears to be too thin an evidence on which a patent which has been in vogue for 8 or 9 years, should be revoked.” (para 51) “In view of this, we must, differing respectfully from the learned single Judge, uphold the patent as also the case of infringement.” (para 58) “In the result, both the appeals are allowed with costs and the Plaintiff’s suits in the Court below will be decreed with all costs on the respective Defendants.” (para 60)

What the court decided

1. The burden in an infringement suit. “In all cases in which infringement of a patent is the subject of controversy before a Court, certain principles have to be borne in mind. Those principles are that the onus of proving the infringement lies upon the Plaintiff, who has not only to prove the patent in his favour, but also to prove that the patent is being infringed by resorting to a process patented by the Plaintiff. In doing so he must prove that the Defendant has produced the patented articles or used the patented process, and to that end, the burden is on him to prove that the article seized by him and produced in Court is the article produced by the Defendant.” (para 13)
2. Identity of the seized articles. “In our judgment, the slowness with which the amendment was urged and the long time which elapsed between the production of the impugned articles by the Plaintiff and their-denial by the Defendants are important factors in judging this issue.” (para 18) “It is obvious that for the purposes of the Evidence Act no fixed number of witnesses is needed to prove a fact: even the testimony of but one, witness is sufficient, if that witness can be believed.” “We, therefore, hold that the articles produced as impugned articles by the Plaintiff are the articles seized severally at the ginning factory, the (sic) Karkhana and the railway station.” (paras 18, 22)
3. Proportions of ingredients. “In the first case, the quality of chemicals used is an essence of the invention and a variation of its proportions might lead to the production of a totally different article. In the second case, the proportion of the chemicals to be used is not the essence of the patent and may not, by variation, lead to the production of a different article.” (para 27) Accepting the statement in Halsbury that “Proportions may be given broadly, unless the exact amount is of the essence of the invention and essential to success”, the Bench held that “the patent in this case did not involve the use of any exact amount of ferrous sulphate in proportion to the gram husk and therefore the quantity of ferrous sulphate was not of the essence of the invention or essential to its success. Lack of proof, therefore, on this head did not militate against the case of the Plaintiff” (paras 27, 29)
4. Notice and the trade name. “The name “Golden Drink” is not the subject-matter of any registration or patent, and it is the process by which the article is produced which is protected.” “However, the question of notice is irrelevant and a patent may be infringed even in ignorance.” (para 31) “In the present case, however, we are perfectly satisfied that the Defendants did have notice of the patent of the Plaintiff.” (paras 31–32)
5. Infringement and damages. “We are, therefore, satisfied on the evidence in the case that the patent (if valid) has been infringed and the Plaintiff in both the suite is entitled to a permanent injunction against the Defendants in the two suits, as also to damages as claimed.” “There is, however, proof that 67 bags were sold in Bombay for Rs. 2000/-; and considering the cheapness of the process, it is manifest that considerable profit must have, been made.” (para 34)
6. Subject-matter, novelty and utility. “In cases of patents we have to find out whether there is a proper subject-matter of the patent: also whether there is novelty and, lastly, whether there is utility. By the ‘subject-matter of a patent’ is meant the exact advance upon existing knowledge which the patentee claims. The subject-matter must be of substantial proportions. But it may be slight if it conduces to a better result than what had been achieved beforehand.” (para 37)
7. Manufacture. “The definition is a wide one and the produced article as well as the manner of production amount to manufacture.” “The amplitude in which the definition of the word ‘manufacture’ is couched in the Indian Act and the observations of the learned C.J. leave no manner of doubt that both that the process here as well as the finished powder must be treated as ‘manufacture’. Indeed, the definition is an inclusive one and its ambit is not to be confined to what is stated there.” (para 42)
8. Novelty of the process. “It is true that the action of ferrous sulphate upon tannic acid is well known in trades connected with dyeing, tanneries and allied industries. It was, however,’ not put to the use to which it was when this colouring was resorted to simulate the colour of tea in a decoction made, not from tea leaves, but from grain husk. To that extent there is the subject-matter of the patent and also novelty” (para 43)
9. Clauses (d) and (e). “Under Clause (d) the patent can be defeated if it is not “a new manufacture or improvement”, thereby indicating that ‘qua’ manufacture it was being indulged in by others prior to the date of the patent. Clause (e), however, relates to a totally different matter and is based upon the lack of inventive quantum in the new process. In that Clause the emphasis is laid upon existing knowledge and the use to which that knowledge was put and, with that background, one has to see whether the new invention involves any inventive step at all.” (para 44) “It is not shown that the action of ferrous sulphate on grain husk as a colouring medium was known to science.” (paras 44, 47)
10. Invention as a quid pro quo. Of “Pope Appliance Corporation v. Spanish River Pulp and Paper Mills Ltd. AIR 1929 PC 38”, the Bench held that “a definition of ‘invention’ given by their Lordships of the Privy Council is of great utility” (para 45), and that “for practical purposes the present Plaintiff must be regarded as the inventor who brought the process to the notice of the public, though by doing so he claimed a monopoly to himself. Unless it can be shown that it was not either a new process because the knowledge of the manufacture was public or that, regard being had to the knowledge which was then existing, there was no inventive step, the patent cannot be defeated.” (paras 45–46)
11. Public use. “In - Carpenter v. Smith (1842) 152 ER 127 (G) the ‘public use and exercise’ of an invention, which inhibited it from being called new, was discussed and it was laid down by Lord Abinger, C.B., that ’the public use and exercise of an invention means a use and exercise in public, not by’ the public’, that is to say, that it should become a knowledge not confined to the claimant but to others.” “We might add that the practice of it by others would also disclose that amount of knowledge which would inhibit its being characterised as new” (para 48)
12. Oral evidence after long working. Of “Canadian General Electric Co. v. Fada Radio AIR 1930 PC 1”, the Bench “with the utmost deference, adopt as our own” the observations it quoted (para 41). “Now, this appears to be too thin an evidence on which a patent which has been in vogue for 8 or 9 years, should be revoked. We may recall the words of their Lordships of the Privy Council which we have quoted elsewhere that a patent should not be defeated after a long lapse of time, when the challenge is based on oral testimony which is hard to check.” “Therefore, if, as their Lordships said, the subject-matter, utility and novelty and to be found, the Courts should do everything to upheld a patent, and not defeat it.” (paras 41, 51)
13. Procedure. The partner’s prior statement. Of Ex. D-4, “It is obvious that it was sought to be used as a piece of contradiction, but the provisions of Section 145, Evidence Act as explained by their Lordships of the Privy Council in - Bal Gangadhar Tilak v. Shrinivas Pandit AIR 1915 PC 7” ... “have not been followed. That apart, even if it is held as admission by a partner of the Plaintiff against the interest of the Plaintiff, it was incumbent to plead the fact of this admission in the written statement.” “No opportunity appears to have been afforded to the Plaintiff to explain or, if so advised, to withdraw the admission.” (para 52)
14. Secret manufacture by the inventor. “If the inventor secretly prepared the article and sold it to public in a manner that the public would not be possessed of the knowledge how it is manufactured, the patent can still be applied for.” (para 52) “Even apart from this, it is permissible for a person to manufacture and sell the goods without endangering a future patent.” Following “Madeley J., in - Ganendro Nath v. Dhanpal Das AIR 1945 Oudh 6”, “The test of publicity is whether or not the secret process was being carried out with the assistance of people who were not bound to secrecy. In the present case, there is no proof that any person other than the Plaintiff was in the secret” (paras 52–53)
15. Procedure. Disposition. “We are, therefore, satisfied that there was not that lack of newness or inventive step which would defeat the patent today. In view of this, we must, differing respectfully from the learned single Judge, uphold the patent as also the case of infringement.” (para 58) “In the result, both the appeals are allowed with costs and the Plaintiff’s suits in the Court below will be decreed with all costs on the respective Defendants. A copy of this judgment shall be forwarded to the Controller of Patents, Calcutta.” (paras 58, 60)

What the court did not decide

Of the drink’s popularity, the Bench said: “However, that is not a matter on which we have to express our opinion. We confine ourselves to the line of attack which has been adopted by the Defendants in the case in their counter claim and which has found favour with the learned single Judge.” (para 38) Of the Defendants’ own patent applications: “Since these matters are irrelevant for the purposes of the present case, we need not advert to them in more detail.” (para 59)

Subsequent treatment

• Followed — In Ajay Industrial Corporation v Shiro Kanao (1983) the Division Bench of the Delhi High Court, dismissing the appeals against the refusal to revoke a patent granted in 1967, relied on this judgment for the rule that a patent should not be defeated after a long lapse of time on a challenge based on oral testimony that is hard to check.