Garware-Wall Ropes Ltd v Anant Kanoi (2006)

Summary

“The applicants, original plaintiffs, M/s. Garware-Wall Ropes Limited, filed Regular Civil Suit No. 2 of 2005 in the Court of the Principal District Judge, Surat,” praying that the defendants “are not entitled to do any act, which may infringe the plaintiffs’ Patented SRG Invention under Patent No. 195352.” (para 1) “The defendants, in the written statement, submitted that Patent No. 195352 be revoked under Section 64 of the Patents Act, 1970” and the trial Court “transferred the suit and the counter-claim to this Court” (para 3). The patent was “in relation to prefabricated collapsible gabion product in flexible form made from ropes of synthetic materials” “by weaving a number of horizontal, transverse and vertical chords of ropes in a continuous mesh of definite geometrical pattern” (para 5). The defendants pleaded that “the defendants are making gabions from intermeshing ropes and are not using the weaving method.” (para 7)

The Court held that in a patent case “the plaintiff though has a sealed application and registered patent in his favour, he is still required to make out a prima facie case to show to the Court that the patent is valid despite challenge to the validity of the patent.” (para 22) It found that “the defendants are not using any weaving process in manufacturing the gabions, their process is certainly intermeshing” (para 23), that “Mere use of one synthetic material or another synthetic material, would not bring into existence a new product, which was unknown to the world” (para 31), and that “no prima facie case exists in favour of the plaintiffs.” (para 33) “I hold that the plaintiffs have miserably failed in making out a prima facie case, balance of convenience is not in their favour and refusal of injunction is not likely to occasion irreparable injury to them. The application for grant of absolute injunction is rejected. Injunction is refused.” (para 37)

What the court decided

1. The three requirements. “For grant of temporary injunction, the Court has to consider three basic aspects, namely, prima facie case, which would mean a triable issue, secondly balance of convenience, meaning thereby, that who would suffer more inconvenience in case of grant or non-grant, and thirdly irreparable injury to be suffered by a party.” “While appreciating the question of balance of convenience and irreparable injury, the Court may have to enter into some guess work, but, while appreciating the question of prima facie case, the Court must be governed by sound principles of law, the facts floating on the surface of the record” (para 21)
2. Grant and validity. “The Apex Court in the matter of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 501, rejected the contention of the patent-holder that there is a presumption in favour of the validity of the patent, it rather held that grant and sealing of the patent does not guarantee its validity” “The Madras High Court in case of V. Manicka Thevar v. Star Plough Works, Melur , has held that in a suit for infringement of the patent, the plaintiff must make out a strong prima facie case for grant of temporary injunction.” “It is also the view of the Courts that if the patent is new and its validity is not established in judicial proceedings, and the defendant’s endeavour is to show that the patent ought not to have been granted, ordinarily, the Court should not issue a temporary injunction.” (para 20)
3. The patentee’s burden. “in case of a patent, the plaintiff though has a sealed application and registered patent in his favour, he is still required to make out a prima facie case to show to the Court that the patent is valid despite challenge to the validity of the patent. The plaintiff is further required to show that there is an infringement of his patented rights.” “When the validity of the patent is challenged on the ground that the patent has been obtained by fraud, there is no new invention or new product, but, it is simply an extension of what was earlier used or was known to the world, then, the burden extra weighs upon the plaintiffs to show to the Court that their work or the invention or the product is not simply an extension, but, is the result of inventive process and innovation.” (para 22)
4. Weaving and intermeshing. “The plaintiffs under the circumstances would be bound by the contents of the application. They cannot be allowed to say that method of weaving is the only statement in the application, but, they can refer to any other method of manufacture.” “After closely seeing the product of the defendants, I must immediately say that the defendants are not using any weaving process in manufacturing the gabions, their process is certainly intermeshing because in their product, one rope/cord crosses through the splice of another rope.” “If the two processes, intermeshing and weaving, are different, then, the defendants certainly would be entitled to say that their work is of intermeshing and the plaintiffs’ patent being work of weaving, are different works.” (para 23)
5. Prior use of gabions. “If the gabions made of different materials were used to avoid or protect soil erosion for more than 7000 years, then, invention of a gabion cannot be said to be a new or inventive invention, no research was required to be made into something which was publicly known.” “If nylone crates and gabions are used by these Governments for long many years and are being manufactured by M/s. Netlon and other Companies looking to the requirement, then, the plaintiffs would not be entitled to say that they have brought into existence a new product, which was not known to the world.” (para 24)
6. Improvements and inventive step. Adding to the observations in Bishwanath Prasad, the Court held that “the object of the patent law is not to discourage the marketability of a product, which is different from what has been registered, nor the object is to protect a fraud or misrepresentation.” “True it is, that an improvement would be taken to be an invention, but, to be so, the improvement must be something more than workshop improvement and independently, should satisfy the test of invention involving inventive steps.” (para 27)
7. Substitution of material. “Flexibility and collapsibility would obviously be a quality of a gabion made from rope, polymer or synthetic rope.” “Nylone, which is also used for manufacturing the gabions, is a strong polymer/material and if that use is known to the world, then, simply by replacing nylone by some other synthetic material, the plaintiffs would not be allowed to claim that they have invented a product, which is absolutely new or which was not known to the world.” (para 28) “In my opinion, the diameter of the thread/rope would not make any difference because nylone crate bags, which, in fact, are gabions, are known to the world.” (para 29) “Mere use of one synthetic material or another synthetic material, would not bring into existence a new product, which was unknown to the world.” (paras 28, 29, 31)
8. Official documents. “The challenge to the letters issued by different authorities in favour of the defendants, can be rejected by a simple observation that the letters have been issued by the Competent Officers of the Government, who have no interest in the defendants and do not bear any enmity with the plaintiffs. The documents filed by the defendants cannot be rejected just for nothing.” (para 30)
9. Opinion affidavits. “such opinion evidence can be relied upon only when they refer to scientific study and research, so also consider other material produced by the other side. The Court cannot rely upon the said opinion affidavits because they do not deal with the documents submitted by the defendants, nor the plaintiffs ever obtained second opinion from these experts on the documents submitted by the defendants.” (para 32)
10. No prima facie case. “I must immediately hold that the product of the plaintiffs does not involve any inventive step. Even otherwise it is clear that if a serious challenge is thrown to the said product or process and the legality of the patent has not been examined on the judicial side, the Court would not grant any injunction in favour of the plaintiff, who claims to be the patent-holder.” (para 26) “The product is neither new nor a result of the research, nor it is cheaper, nor it is something, which, for the first time, came into existence and was not known in the field. Taking into consideration the totality of the circumstances, I am of the opinion that no prima facie case exists in favour of the plaintiffs.” (paras 26, 33)
11. Balance of convenience. “An injunction under the statute can be granted in favour of a party entitled to it, but grant of an injunction is an act in equity.” “The balance of convenience is to be weighed not in the golden scales, but, on the strength of preponderance of probabilities. I hold that the balance of convenience is in favour of the defendants, who could successfully give a dent to the patent and are successful in showing that their product is something different than what has been registered in favour of the plaintiffs.” “The product manufactured by the defendants, in the considered opinion of this Court, is not same or similar to what is patented in favour of the plaintiffs.” (para 35)
12. Irreparable injury. “So far as the question of irreparable injury is concerned, I must hold that if a tripod does not have two legs out of three, it cannot stand.” “If injunction is granted simply on the ground that the party would suffer an irreparable injury, then, every producer/manufacturer, to avoid competition in the market as every competition leads to some injury, would come to the Court and pray for an injunction. I do not think that, that is the law.” (para 36)
13. Disposition. “The application for grant of absolute injunction is rejected. Injunction is refused.” “I direct defendant No. 1 to maintain accounts of sales. The defendant No. 1 shall also furnish a guarantee in favour of this Court, through the Registrar General, for payment of Rs. 5 Lakhs to the plaintiffs in case the plaintiffs finally succeed in the matter. There shall be no order as to costs.” (para 37)

Subsequent treatment

Appealed — the patentee’s appeal, Garware-Wall Ropes Ltd v Techfab India, was dismissed by the Gujarat High Court on 25 April 2008.