CTR Manufacturing Industries Ltd v Sergi Transformer Explosion Prevention Technologies Pvt Ltd (2015)

Summary

“This is an action in patent infringement.” “The Plaintiff (‘CTR’) says it has an Indian Patent No. 202302 granted on 3rd August 2006 with a priority date of 16th November 2005 for an explosion and fire detection technology for use in electrical transformers”, described as “A SYSTEM AND METHOD FOR PREVENTING AND/OR DETECTING EXPLOSION AND/OR FIRE OF ELECTRICAL TRANSFORMERS”, and “CTR claims that Sergi’s product, the SERGI 3000, is an infringement. Sergi says it is no such thing, and its product uses a different technology.” The first defendant said that “everything it claims was known in the prior art, including by CTR’s own publications”, that “it has filed a Counter-Claim here and, in the Patent Office, a post-grant opposition to CTR’s Patent”, and that there was “also said to be a pre-grant opposition yet pending” and “Sergi’s Revocation Application before the Intellectual Property Appellate Board.” (para 2)

The Court “found finally for the Plaintiff, being unable to accept the Defendant’s case that there is no infringement or that the Plaintiff’s patent was incapable of being granted”, noting that “the view that I have taken is clearly only prima facie and is not intended to affect any pending application by the Defendant or its Counter-Claim in this very suit.” (para 4) It held that “the Differential Relay’s use in conjunction with the Buchholz Relay seems to me to be the ‘pith and marrow’ of CTR’s Patent” (para 58), that “the addition of the PRV to CTR’s Patent is utterly inconsequential” (para 56), and that the PRV “fails the Catnic test and fails it utterly.” (para 79) It concluded that “Sergi has entirely abandoned its patent and has adopted CTR’s; Sergi could not have met the DTL” (“Delhi Transco Ltd”) “bid without such an infringement.” (para 82) “The Motion succeeds.” (para 84)

What the court decided

1. Mosaicing as a defence. On the defence of mosaicing to the patent of “The Plaintiff (‘CTR’)”, the Court held that “‘Mosaicing’, cobbling together bits and pieces, is not in and of itself a complete defence to a patent infringement action except in very limited circumstances”, that “the charge of mosaicing must itself be self-evident and plain, one that can be put together by” “an unimaginative man with no inventive capacity”, and that “The cobbling together must be so obviously non-inventive that ‘he who runs can read’.” It was “not enough to show (as both Sergi’s experts seem to do) that the patent has known devices or integers”, for the integers “do not work independently of each other in a known way; and the patent lies precisely in the combination of their use, the timing, and the manner in which their known functions are deployed to deliver a stated result.” (para 48)

2. Combination patents and inventive step. Of Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1979), the Court held that “to be patentable, an improvement on what was previously known, or a combination of matters previously known, must be more than mere workshop improvement”, that “It must be an ‘inventive step’”, and that “It is permissible to combine old, known integers such that in the new combination and their inter-dependency or interrelation they produce a new process or an improved result.” (para 50)

3. Comparing patent and device. “once it is found that there is a validly granted patent, i.e., that there is prima facie inventiveness and novelty, and the defence of mosaicing fails, then it is always necessary to compare the patent (or patented device) to the device said to be an infringement. If the latter adds merely non-essential or superfluous elements, or makes trifling variations, the charges of piracy and infringement are not deflected.” (para 54)

4. The pressure relief valve. “The DTL” (“Delhi Transco Ltd”) “Tender’s Technical Specifications do not in fact mandate a PRV”, the essentials being “the Differential Relay, the Buchholz Relay and a tripping system”, so that “the addition of the PRV to CTR’s Patent is utterly inconsequential.” (para 56)

5. The ‘pith and marrow’ rule. Reading the complete specification the Court found that “those claims make it clear that CTR has wholly eliminated and therefore disclaimed the PRV” and that the two critical integers, “working together, form the ‘pith and marrow’ of CTR’s Patent”; “Adding something superfluous to them does not defeat infringement.” (para 75) The purposive approach cast “a duty on the court to ascertain just what it is over which the patentee claims monopoly, i.e., to determining what is essential to the patent, its ‘pith and marrow’”, and “This is not to be read, in my judgment, as proposing that the addition of a superfluous element saves infringement.” (para 74)

6. The contradiction in the defence. “Sergi claims the PRV to be essential to both its product and its patent. But if it is essential it cannot possibly be sidelined with an ‘or’ as is shown in Sergi India’s brochure and even in the comparative chart.” “The PRV fails the Catnic test and fails it utterly.” (para 79)

7. The relevance of the grant. “while the grant of a patent is no guarantee of its validity, it is a material consideration for the determination of a prima facie case”, a plaintiff being “always entitled, at a prima facie stage, to rely on the secured patent as prima facie proof of validity”; but “the mere grant of the plaintiff is not in and of itself sufficient to warrant interim relief”, and the defendant “only needs to show prima facie vulnerability of the patent.” (para 59)

8. The speed of grant. “I do not believe it makes the slightest difference at this stage when or how quickly the patent was granted”; “A patent is not improved for having been several years or a decade or more in the granting of it; conversely, it is not invalid for having been granted quickly.” (para 62)

9. Prosecution history estoppel. Though “Prosecution history estoppel is not restricted to amendments intended to avoid prior art but also applies to a narrowing amendment made to satisfy any statutory requirement or the demands of an examination report from the Controller’s office”, that was “not at all correct” on the facts “because its starting assumption, viz., that the PRV is essential to the DTL Tender, is not” (para 63); and “The Gillette Defence has no application to the present case.” (para 65)

10. Pre-publication. “I do not think it is possible to compare the fire prevention and extinguishing methods with the explosion detection and prevention ones in the manner Mr. Chagla suggests; these seem to me to be very different things.” (para 66)

11. Suppression in the plaint. “Once all the material is before the Court, such allegations of suppression are of no consequence”, for “The nondisclosure of the immaterial is immaterial” (para 72), and “The completeness of disclosure on the record is sufficient insulation (so to speak) against this charge.” (para 71)

12. Pendency of validity challenges. Noting Dr Aloys Wobben v Yogesh Mehra (2014), “If the grant of a patent is not determinative and does not yield an injunction for the asking, it must follow that the mere pendency of a Counter-Claim, oppositions or revocation applications cannot defeat an injunction claim either.” (para 77)

13. Principles for a combination patent. “the principles one may legitimately draw in a combination patent infringement case are these”: that “The invention cannot be a mere arrangement or rearrangement of previously known integers all functioning independently in a known way”; that they “may be combined in a previously unknown way, acting inter-dependently, each of them essential, to produce a new and improved result”; that “Each of the integers must be essential. If any one can be taken out without affecting the final result, it is not essential”; that “Where a patent has been granted on the patentee disclaiming a particular integer ... then the addition of that nonessential integer does not, per se, defeat the claim for infringement”; that “The patent must be read in a purposive manner to determine what constitutes its ‘pith and marrow’”; that “At an interim stage, a Court is not required to examine the validity of a patent so much as its vulnerability; and this is to be tested not on a mere say-so, but with the aid of cogent and persuasive technical and scientific material, including reliable expert opinions and other data”; that “the grant is not a complete answer to a charge of prima facie invalidity or vulnerability, it is still a factor to be considered”; and that “The speed of grant of a patent is wholly irrelevant”. (paras 81.1–81.9)

14. Finding for the plaintiff. “I find for the Plaintiff, CTR, because: the DTL tender specification required the Differential Relay, the Buchholz Relay ... and a Circuit breaker; the Sergi patent did not feature the Differential Relay; the PRV is not essential” ... “the addition of the PRV is a non-essential addition; the pith and marrow of CTR’s invention is the two integers working interdependently to produce what is, prima facie, a dramatically improved result” ... “Sergi has entirely abandoned its patent and has adopted CTR’s; Sergi could not have met the DTL bid without such an infringement.” (para 82)

15. Balance of convenience. “Where lies the balance of convenience? The answer suggests itself: it cannot possibly lie with Sergi”, there being “an overwhelming prima facie case, and it is difficult to see how CTR might be able to recoup its losses by a decree in damages; those losses are possibly beyond computation.” (para 83)

16. The order. “The Motion succeeds. There will be an interim order in the following terms”, restraining “Defendants Nos. 1 and 2” from infringing “the Plaintiff’s patent No.202302 by making, using, offering for sale, or selling either the impugned Sergi 3000 product or any other similar infringing product that contains the identical or substantially similar system of a principal of a Differential Relay and a Buchholz Relay (oil surge feature)”. (para 84)

17. Procedure. Costs. “I have long believed that costs must follow the event, and that our courts are altogether too timorous in the matter of costs”, and “not to award costs is, I think, a step in the wrong direction. It encourages useless defences and false suits.” Yet “so long as those Rules remain, and remain unchanged, it is not permissible to award costs beyond them. That is the only reason I am unable to award the costs that I might otherwise have thought reasonable. The Plaintiff will be entitled to costs in accordance with the Rules.” (paras 85, 88)

What the court did not decide

The Court recorded that it was “not, at this prima facie stage, required to assess the validity of the patent, or whether Sergi can maintain its pre- and post-grant oppositions, its application for revocation of the patent and its Counter-Claim all at the same time”, that issue being “pending in this very matter before another court.” (para 77)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 2 November 2026.