Mariappan v A.R. Safiullah (2008)

Summary

“One A.R.Safiullah, sole Proprietor and trading as S.A.Safiullah & Company” “has instituted a suit” “praying for a judgment and decree for a permanent injunction restraining the defendants from in any manner infringing the plaintiff’s registered patent under No.198079 in respect of ‘food-grade laminated paper, method and apparatus for manufacturing the laminated paper’” ... “And restraining the defendants from in any manner passing off artificial banana leaves (food-grade laminated paper) manufactured and sold by the plaintiff” (para 1). The learned single Judge “granted ad-interim injunction restraining the respondents/defendants from in any manner passing off the artificial banana leaves” (para 6) and, on the application founded on the patent, “has closed the said application.” (para 7) Each side appealed (para 8). The 4th defendant had argued “that the patent obtained by the applicant/plaintiff is only the process patent and not a product patent and even at the time of pendency of the application for patent, he filed application before the concerned authority for patent pre-grant opposition and after the grant of patent also, he filed post-grant opposition and the same are pending adjudication.” (para 5)

The Division Bench held that “the patent granted in his favour on 20.01.2006 is only a process patent” and that “it is prima facie opinion of the Court that no invention is involved” (para 59), that “the patent granted need not be taken into consideration at least at the time of granting order of interim injunction” (para 60), and that the view in “Manicka Thevar’s case reported in AIR 1965 Madras 327” “has lost its significance in view of the latest development in the field of science and technology.” (para 66) On passing off it held that “the interim order granted by the learned single Judge in O.A.No.495 of 2006 is sustained and accordingly, O.S.A.No.263 of 2006 filed by the 4th respondent/4th defendant challenging the vires of the said order, is dismissed.” (para 70) On the patent it held that “In terms of Section 13(4) of the Patents Act, the grant of patent itself cannot be deemed to be prima facie case on the side of the patentee” and that “O.S.A.No.283 of 2006 filed by the applicant/plaintiff is dismissed and the orders passed by the learned single Judge in O.A.No.494 of 2006 are confirmed.” (para 71)

What the court decided

1. The test for interim relief. “It is a settled position of law for granting an order of ad-interim injunction including the infringement of Designs, Copyrights and Patent, the applicant/plaintiff must prima facie establish that balance of convenience lies clearly in his favour and irreparable loss that may be caused to him on account of non granting of an order of ad-interim injunction.” (para 53)
2. Section 48 after 2003. “As per Section 48 of the Patents Act which came to be amended with effect from 20th May 2003, while deciding about the prima facie case, even though no presumption of the validity of the patent can be drawn, certainly the patent obtained after the amendment is having more significant. Therefore, the patent obtained by the patentee can be given more weight for deciding the prima facie case, however, the ones of proving the prima facie case about the validity of the patent and its infringement is very much on the applicant/plaintiff.” (para 55)
3. A process patent, no invention. “A comparison in US patent Nos. (document Nos. 1 to 5) in O.S.A.No.263 of 2006 and the application filed for patent by the applicant/plaintiff would reveal that the process involved in the manufacture of food-grade laminated paper the contents are almost verbatim similar to that of the manufacture of layers of plastic film laminated” ... “materials available on record in the form of process patent and the applicant/plaintiff’s application for patent would clearly establish that the patent granted in his favour on 20.01.2006 is only a process patent. The art of making laminated food-grade paper is very well known in India as well as in other parts of the world and therefore, it is prima facie opinion of the Court that no invention is involved. But at the same time, innovation in the form of making banana leaf with artificial structure of food-grade quality and artificial scented smell of banana leaf is found in the said product and therefore, it could be termed as innovation and some novelty is also involved in the said product.” (para 59)
4. Inventive step and a valid patent. “Therefore, an ‘inventive step’ which is a necessary ingredient of invention in order to make an Applicant eligible for grant of patent under the Act, must be relating to an invention involving technical advance or having economic significance or both along with a necessary factor that such invention should make it not obvious to a person skilled in the art. Therefore, a patent must have characters of novelty, non-obviousness and enablement, out of which, enablement being the concept of putting the novelty into action and all the above said ingredients must consecutively be present to have a valid patent.” (para 60)
5. Pending oppositions. “Admittedly, in the case on hand, pre and post grant oppositions had been raised in respect of the patent granted to the applicant/plaintiff and under Section 43 of the Patents Act 1970, it is open to a party who is opposing the patent to prove that there are no inventive steps in the invention of the patent and therefore, the patent granted need not be taken into consideration at least at the time of granting order of interim injunction.” (para 60)
6. Rights under a process patent. “Since we earlier held that the patent granted to the applicant/plaintiff is only a process patent, in terms of sub-section (b) of Section 48, the exclusive right to prevent third parties, who do not have his consent, from the act of using that product, and from the act of using, offering for sale, selling or importing for those purposes, the” “product obtained directly by that process in India is available to the applicant/plaintiff.” (para 61)
7. A patent in force. “Therefore, prima facie, and as on date, patent is in force in favour of the applicant/plaintiff.” (para 62) “as long as the patent is in force, the applicant/plaintiff who is the patent holder is entitled to some protection.” Recording that in “(2007)2 MLJ 907 - K.Ramu vs. Adayar Ananda Bhavan, Chennai” “it has been held that issuance of patent right is an admitted fact and the same is valid for a period of 20 years, the plaintiff is deemed to have discharged his initial responsibility of proving that they are protected by the certificate issued by the competent authorities under the Patents Act and therefore, it should be presumed to be a prima facie case on the strength of a certificate.” (paras 62–63)
8. Maintainability under section 108. “Under Section 108 of the Patents Act, when third parties infringe the right granted under the Patents Act, Court may grant relief s including injunction and ordering the goods to be seized, forfeited or destroyed.” (para 64) “We further hold that under Section 108 of the Patents Act, the applicant/plaintiff is entitled to maintain the suit under Patents Act.” (paras 64, 67)
9. Procedure. Order 39 and section 151. “in the absence of pleadings regarding common law right, the applicant/plaintiff is not entitled to invoke Order 39 Rules 1 and 2 of C.P.C., we hold that such an application is maintainable.” Applying “(2008)4 MLJ 252 (SC) - Tanusree Basu and others vs. Ishani Prasad Basu and others”: “even assuming that the application under Order 39 Rule 1 and 2 of C.P.C. is not maintainable in the absence of pleadings regarding common law right, the Court can very well invoke Section 151 of” (para 65) “C.P.C. and grant an order of interim injunction.” (paras 65, 68)
10. The six-year rule. “As regards the submissions made by the learned senior counsel appearing for the appellant in O.S.A.No.263 of 2006 that a patent which is less than 6 years old can be regarded as a recent one, as held in Manicka Thevar’s case reported in AIR 1965 Madras 327, the said view has lost its significance in view of the latest development in the field of science and technology. Now, the patent life is very short in view of new innovations and inventions which are frequently taking place, wherein a new product is using its significance and market very quickly.” (para 66)
11. An innovative product. “Therefore, applying the principles laid down in the above cited decisions, we hold that even though the banana leaf is a natural product, the invention on the part of the applicant/plaintiff to use artificial laminated food-grade shape in the form of banana leaf with its colour with artificial scented smell is prima facie innovative and that in view of the Patent granted in his favour for the said product, he is entitled for protection pending disposal of the suit.” (para 66)
12. The passing-off injunction. “we hold that even prior to the grant of patent, the applicant/plaintiff got a registered Design in respect of artificial laminated paper and the 4th respondent/4th defendant has not denied the fact that he is also manufacturing and marketing the similar kind of artificial laminated banana leaf” (para 69) “Admittedly, even prior to the year 2000, the applicant/plaintiff is manufacturing the said product and marketing it and therefore, is having goodwill and trade name for his product and unless the 4th respondent/4th defendant is restrained by way of an interim measure from selling or marketing the said product, the applicant/plaintiff is bound to suffer irreparable loss and grave hardship and also financial loss. Therefore, prima facie appears that the balance of convenience is in favour of the applicant/plaintiff.” (paras 69–70)
13. Section 13(4) and the patent injunction. “Admittedly, as per the Patent Certificate dated 20.01.2006 patent was granted in favour of the applicant/plaintiff subject to the condition that the validity of the patent is not guarantee. In terms of Section 13(4) of the Patents Act, the grant of patent itself cannot be deemed to be prima facie case on the side of the patentee and it is a duty of the patentee to prove prima facie case as any other case of application for injunction. Since applications for opposition of grant of patent are pending adjudication before the appropriate authority, and that we are of the prima facie view that the concept of artificial banana leaf prima facie appears to be innovative only, we are not inclined to interfere with the order passed by the learned single Judge in O.A.No.494 of 2006.” (para 71)
14. Procedure. Disposition. “Therefore, the interim order granted by the learned single Judge in O.A.No.495 of 2006 is sustained and accordingly, O.S.A.No.263 of 2006 filed by the 4th respondent/4th defendant challenging the vires of the said order, is dismissed.” (para 70) “Accordingly, O.S.A.No.283 of 2006 filed by the applicant/plaintiff is dismissed and the orders passed by the learned single Judge in O.A.No.494 of 2006 are confirmed. However, in the circumstances, there will be no order as to costs.” (paras 70–71)

What the court did not decide

“We are not dealing with the question of invention or novelty involved in respect of the product namely the artificial banana leaf for which patent was given in favour of the plaintiff, as pre and post grant oppositions to the said patent are pending adjudication before the concerned authority at the behest of the 4th respondent/4th defendant and it is for the concerned authority to take a decision on that aspect” (para 66). “It is made clear that the observations made/findings given in these appeals are only for the purpose of adjudicating the issues involved and for deciding of these appeals and need not influence the mind of the appropriate authority at the time of deciding the pre and post grant oppositions of Patent granted in favour of the applicant/plaintiff.” (para 71)

Subsequent treatment

• Distinguished — In Chemtura Corporation v Union of India (2009) the Delhi High Court held that “The decision in Mariappan is also distinguishable on facts. A central feature of the present case is whether there is infringement by a supplier of the Railways pursuant to a public tender” (para 46).