Dhanpat Seth v M/s Nilkamal Plastic Ltd (2018)

Summary

“The plaintiffs have filed the present suit for grant of an injunction against the defendant, given the latter infringing, the apt Patent, and, for the recovery of damages amounting to Rs.51 lacs” (para 1). The plaint averred that “the plaintiffs have been granted patent No.195917, on, 11.07.2005” and that “The bamboo baskets are locally known as Kilta.” (para 2) The defendant pleaded that the “Pith and essence of the alleged invention as compared to the pith and essence of traditionally known Kilta (long Basket) is identical/ similar in each respect.” (para 3) “The defendant instituted a counter claim against the plaintiffs, for seeking cancellation, of, Patent No.195917” (para 7), and among the issues struck was “Whether a plastic ‘Kilta’, as manufactured by the plaintiffs, can be granted a Patent?” (para 9)

The Court held “that the patented product, being not construable, to be a ‘inventive step’” (para 16), and that the evidence “renders the patented product, to, rather fall within the opening coinage, of clause (p), borne in Section 3 of the Act” (para 17). “In sequel to findings on issues aforesaid, the plaintiffs’ suit is dismissed, whereas, the counter claim instituted by the counter-claimant/defendant is decreed and the patent No.195917, titled as ‘A Device for Manually Hauling of Agricultural Produce’ granted in favour of the plaintiff by the Statutory Authority is” ... “cancelled.” (para 21)

What the court decided

1. Procedure. The pending revocation appeal. Of “an appeal bearing No.” ... “OA/5/2—7/PT/Num, for revocation(s) of the apposite patent” before the “Intellectual Property Appellate Board, Chennai” the Court held that “dehors, the pendency, of, the revocation appeal, before, the aforestated Board, this Court would yet be vested, with, the apt jurisdiction” ... “given the provisions, borne in Section 64(1) of the Patents Act, 1970, (hereinafter referred to as the Act), hence, bestowing a right, upon the aggrieved to either seek revocation of the grant of patent, by availment, of, the apt statutory remedy or through, a counter claim instituted, in the plaintiffs’ suit, for infringement, of the apt patent.” (para 13)
2. The grant and its validity. Reading “sub section (4) of Section 13 of the Act” with “sub-section (4) of Section 64, of, the Act”, the Court proceeded on the counter-claim “given, conspicuously the grant of patent, embodied in Ex.PW1/C-2, not, per se comprising, any, unimpeachable hence evidence” as to the “validity, of, the apposite patented product.” (para 14)
3. Resemblance and infringement. Though DW-1 bore out “minimal difference(s), in the size(s), and, perforations, of, the Kilta” the Court held that “it cannot be concluded, of, hence the defendant, rather infringing the apposite patent” and that “it is imperative, for this Court to initially, decipher, from the evidence on record, qua the patented product, constituting, an ‘inventive step’, as, defined in Section 2 (ja) of the Act.” (para 15)
4. Technical advance. “the, parlance ascribable, vis-a-vis, the statutory coinage, ’technical advance’, (f) is, of, the plaintiffs being enjoined to make evident display, of, apart from user, of, the aforesaid substituted substance, as, a raw material, in the manufacture of Kilta, hence any significant mechanical, automated or robotic advances, visibly occurring” ... “hereat gross absence, of, the aforesaid evidence, renders the purported patent being not construable to hence secure a technical advance, vis-a-vis, traditional Kilta, nor it can be constituted to be an apt ‘inventive step’.” (para 16)
5. Economic significance. “the plaintiffs also omitted to adduce any material, personificatory, of the inventive product, in respect whereof, the apt patent was granted, holding economical significance” ... “vis-a-vis, the traditional kilta” (para 16)
6. The person skilled in the art. “Even though, PW-3, is, not a person skilled in the art” ... “Nonetheless, the aforesaid person skilled, in the art, omitted to be examined by the plaintiffs, hence, an adverse inference is drawable, against, the plaintiffs qua theirs acquiescing, to the factum of the patented product not being an ‘inventive step’” (para 16)
7. Obviousness of the similitude. “with, the evident imperative obviousness, of its similitude, vis-a-vis, the traditional kilta, it cannot be deemed” ... “an ‘inventive step’”. (para 16)
8. New form of known substance. The evidence “carries the further effect, qua, hence the mandate of clause (a) of Section 3 of the Act, rather being attracted, (i) imperatively, when the patented product, within, its ambit, is hence construable, to be, merely a discovery, of a new form, of, a known substance” and its user “is, further not proven to result in enhancement of the known efficacies, of, the traditional kilta” (para 17)
9. Traditional knowledge. The evidence of PW-3 “hence renders the patented product, to, rather fall within the opening coinage, of clause (p), borne in Section 3 of the Act, (iv) inasmuch, as, it being per se traditional knowledge, conspicuously, vis-a-vis, the known properties, of, the traditionally known component or components thereof, thereupon, the factum, of, it being an ‘inventive step’, is negated, (v) and also thereupon, the factum of, or it being construable to be an invention, is, negated” and the “substitution, of, the hitherto raw material, inasmuch, as of bamboo, by, plastic in the manufacture, of, the patented product, reinforcingly, does not either add or enhance,, the traditional knowledge” (para 17)
10. Validity and damages. The negation of the claim “constrains this Court, to, attract the mandate, of sub- section 64 of the Act, and, also the compatible therewith mandate, borne in sub-section (4) of Section 13, of the Act, wherewithin, jurisdiction, is bestowed upon this Court, to test validity of grant of patent” with the corollary “that the grant, of, patent vis-a-vis the patented product, in favour of the patentee, not, being an inventive step nor its purported infringement, if any, hence empowering the plaintiffs to claim any” ... “pecuniary damages, from, the defendant/counter- claimant.” (para 18)
11. Disposition. “In view of the above, issues No.1 to 6 are” ... “decided in favour of the defendants/counter claimants and against the plaintiffs/non-counter-claimants.” (para 19) “the plaintiffs’ suit is dismissed, whereas, the counter claim instituted by the counter-claimant/defendant is decreed and the patent No.195917, titled as ‘A Device for Manually Hauling of Agricultural Produce’ granted in favour of the plaintiff by the Statutory Authority is” ... “cancelled.” (paras 19, 21)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 17 October 2026.