Lallubhai Chakubhai Jariwala v Chimanlal Chunilal & Co (1935)

Summary

“This is a patent action. Plaintiff is the holder of a Patent No. 18164 dated July 4, 1931, for an improved process of treating dried fruits, the process being particularly applicable to the treatment of dried shell almonds and betel-nuts. Defendants are betel-nut merchants, and the plaintiff’s case is that since about April-May, 1933, defendants have been using his process, or substantially the same process, for the treatment of betel-nuts” ... “Defendants deny the validity of the patent on various grounds, and they also deny the infringement.” (para 1) By a “preliminary judgment delivered on March 4, 1935” (para 4) the Court refused to non-suit the plaintiff, holding that “there is some evidence of infringement which the defendants must meet.” (para 3) The specification described soaking the fruit in chemical solutions, after which it is “subjected to the action of sulphur dioxide fumes or gas in a closed chamber under pressure of 5 lbs. to a square inch for about an hour” (para 6). The validity of the patent had been upheld “by the Appeal Court in Lallubhai v, Shamaldas”, but “the validity of the patent has to be considered anew, as various additional defences have been taken and materials put forward by the defendants which were absent in the earlier suit.” (para 7)

The Court held that “It is the combination that is claimed as an invention, and it is the combination that in my opinion was patented.” (para 8) It held that “There was sufficient invention in the combination, and the combination has not been anticipated by prior publication” (para 12), that “the sales of the betel-nuts in public did’ not amount to a public user of the invention” (para 13), and that “the plaintiff’s invention is a new invention within Section 38 of the Act” ... “The patent is, therefore, valid” (para 14). On infringement it held that “Pressure is an essential part of the plaintiff’s process ; its absence from the defendants’ process would constitute a material difference between the two” (para 17) and that “the onus of proving the issue as to infringement being upon the plaintiff, I cannot hold that it has been discharged.” (para 18) “In the result the suit will be dismissed, but I make no order as to costs.” (para 21)

What the court decided

1. Procedure. The application to non-suit. “In my opinion it was not necessary for the plaintiffs counsel to tender exhibit 2’ as the defendants’ admission. Exhibit 2 is annexed to the defendants written statement, and it is for the Court to consider whether the description of that process is consistent or inconsistent with the infringement complained of” (para 2). “In my opinion this is a question which can reasonably be argued, and I cannot hold at this stage that the plaintiff should be non-’ suited.” “All that I hold is that there is some evidence of infringement which the defendants must meet.” (paras 2–3)
2. The burden of proving infringement. “The onus of proving the infringement is undoubtedly on the plaintiff. It has been held that the question of infringement is a mixed question of law and fact.” “This being a suit for infringement of the patent, the plaintiff must, under Section 29 of the Indian Patents and Designs Act (II of 1911), prove that during the continuance of the patent acquired by him under the Act in respect of an invention the defendants have made, sold or used the invention without his license or counterfeited it or imitated it.” (para 2)
3. Manufacture and subject-matter. “Manufacture, therefore, comprehends not only the production of an article but also the means or method of producing it, so that a new process or the improvement of an old process can be a manufacture within the meaning of the Act.” “The question whether there is an invention is a question of fact in each case. A new and useful application of an old principle may be good subject-matter.” “A patentable combination is one in which the component elements are so combined as to produce a new result or to arrive at an old result in a better or more expeditious or more -economical manner.” “The mere collocation of two or more things, however, without some exercise of the inventive faculty in combining them is not subject-matter for a patent.” (para 7)
4. Construction of the specification. “The construction of a specification is a matter of law and is for the Court. It must be construed as a whole. The claiming clauses are an important part of the specification and they must be fairly -construed in reference not only to the specification but also to the title.” Following “Arnold v. Bradbury”, the proper way 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” (para 8). “A specification must be construed impartially, and the Court is generally slow to construe it against the patentee. But the construction must not only be a ’ benevolent’ but a reasonable one.” (para 8)
5. The combination as the invention. “On reading the specification and the claims together, I cannot say that the first claim has been clearly put forward as a separate invention by itself.” “In my opinion Claim No. 2 is the real claim and the-real object of the plaintiff’s patent.” “It is not this combination that is claimed as a new invention and patented, but the combination of bleaching powder and sulphur dioxide under pressure.” “It is the combination that is claimed as an invention, and it is the combination that in my opinion was patented.” (para 8)
6. Novelty under section 38. “The two features necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention. Novelty is essential, for otherwise there would be no benefit given to the public and consequently no consideration moving from the patentee. The plea of want of subject-matter is included in the plea of want of novelty.” “There must, therefore, be an absence of prior publication or of prior public user ; and if the user is secret or experimental, the profits made by the inventor from his invention must not be excessive.” (para 9)
7. Disclosure in confidence. “Varmani was a chemist, but he was really helping the plaintiff, and the process was shown to him in confidence, so that he stood in confidential relationship with the inventor. The inventor is entitled to ask his friends confidentially to help him to advise him, provided they are not so many that they may be regarded a portion of the public.” (para 9)
8. Anticipation by prior publication. “Two questions thereupon arise for consideration in connection with those earlier publications. Was there in the first place sufficient publication, and did the document or documents so published and relied upon furnish sufficient knowledge ?” “it is enough if the publication is accessible to the public without much trouble” ... “With regard to the sufficiency of the knowledge, the earlier publication must give the requisite knowledge clearly, and it is not enough that it merely gives the means pi attaining such knowledge.” “How far that knowledge anticipates the new invention is again a question of fact depending on the facts and circumstances of each case.” (para 10)
9. The publications relied on. “Plaintiff had to perform numerous experiments in order to arrive at the result he has obtained, and if such experiments were necessary for the purpose, the inference in his favour would be strong that such result was not obvious but constitutes a real addition to public knowledge. The inference is, however, rebuttable” (para 10). “It has been held in Hills v. Evans (1862) 31 L.J. Ch. 457, 468 that whatever is essential to the new invention must” “be read out of the prior publication. If further information and further discovery are required and difficulties have to be overcome before the desired result is finally arrived at and embodied in a form which would serve the uses of mankind, it cannot be said that the prior publication is an anticipation of the new invention.” (para 11) “In my opinion, therefore, the defendants cannot rely upon these earlier publications as an anticipation.” “There was sufficient invention in the combination, and the combination has not been anticipated by prior publication.” (paras 10–12)
10. Prior public user. “Public user does not mean a user or exercise of the invention by the public, but a user or exercise in a public manner; and it is in every case a question of fact.” “A use of the invention for the purposes of trade may constitute a prior user which invalidates the patent” ... “In order, however, for the sale to constitute sufficient evidence of public user it should be open and in the ordinary way of business.” Of the Appeal Court’s view: “That is the English law, and, with due respect, I do not agree with the Appeal Court that on this point there is a difference between the law in England and Section 38 of our Act. But as that is the view of the Appeal Court, I am bound to follow it; and I must, therefore, hold that the sales of the betel-nuts in public did’ not amount to a public user of the invention on account of the nature of the article treated by it.” (para 13)
11. Secret and experimental user. “But a distinction is drawn between the use of an invention for profit and the carrying out of experiments which turn out successful and only incidentally bring in profit to the inventor.” “There is no test nor any authority which lays down the limit beyond which the profits made by the inventor out of his invention are deemed excessive. It is the inventor’s profit alone that has to be considered.” “I cannot say that the amount of Rs. 300 per month received by him from March till July, 1931, when he applied for the patent:, is really excessive.” “In the result I hold that the plaintiff’s invention is a new invention within Section 38 of the Act.” “The patent is, therefore, valid” (para 14)
12. The title of the specification. Of the objection that the title “is false and misleading on the ground that the claim is too wide”, the Court held: “That, however, is not a material defect as the plaintiff has stated that he has not claimed that his process applies to each and every kind of dried fruits” (para 15)
13. Pith and marrow. “The onus is on the plaintiff, and it is for him to show that the two processes, namely, his own and that of the defendants, are substantially the same.” “Slight variations here and there may be immaterial; the Court has to see whether what is done takes from the patentee the substance of his invention” (para 16). “We have it from the mouth of the plaintiff himself that the pith and essence of his process is the combination of the use of bleaching powder and sulphur dioxide under pressure, and in order to show the infringement he must prove-that the defendants have pirated the substance of his invention.” “Pressure is an essential part of the plaintiff’s process ; its absence from the defendants’ process would constitute a material difference between the two.” (paras 16–17)
14. Infringement not proved. “But it was for the plaintiff to prove that pressure was used in the defendants’ process and not for the defendants to prove the negative.” “Moreover, it is necessary that pressure should not only be generated in the defendants’ chamber, but held, and there is no proof that, even if it was temporarily generated, it was held and that it reacted on the goods in the same way as it reacted in the plaintiff’s process. In any event, the evidence on the point’ leaves the matter in considerable doubt, and the onus of proving the issue as to infringement being upon the plaintiff, I cannot hold that it has been discharged.” (para 18)
15. Taking part of a combination. “A patent may sometimes be infringed by taking a part only of the invention, but that depends on whether the part for which protection is asked is a new and material part, especially in the case of a combination.” (para 19) “I have already held that the plaintiff’s rights are, according to his specification, in the whole combination for which alone he has made a claim, that is a combination of bleaching powder and sulphur dioxide under pressure, and a patent for a combination is not infringed by taking separately the integers comprised in it. The use of pressure by the defendants in their process has not been satisfactorily proved, and there is therefore no infringement of the combination” (paras 19–20)
16. Procedure. Disposition. “In the result the suit will be dismissed, but I make no order as to costs.” (para 21)

What the court did not decide

“It may be arguable, in the event of its being held that Claim No. 1 in the specification is a separate invention by itself, whether the defendants have committed an infringement of the same. According to them, if Claim No. 1 is an invention, the patent will be defeated for want of novelty on the ground that the process followed by the firm of Cooverji Raghavji & Co. before the date of the plaintiff’s application is an anticipation of the invention. But I do not wish to deal with this question at length.” (para 20)

Subsequent treatment

• Followed — In Ajay Industrial Corporation v Shiro Kanao (1983) the Division Bench of the Delhi High Court, dismissing the appeals, relied on this judgment’s statement that “A new and useful application of an old principle may be good subject-matter” and on its account of a patentable combination.