Trial and Evidence in Patent Suits

1The court shall ascertain from each party, at the first hearing, whether he admits or denies such allegations of fact as are made in the plaint or the written statement and shall record such admissions and denials. (Code of Civil Procedure 1908, O 10, r 1.) This enables the court to examine the parties with a view to ascertain the real points of controversy between them and to get admissions from them so as to eliminate irrelevant issues and thereby shorten the trial. (See Mulla’s Code of Civil Procedure, seventeenth edn, 2007, vol 2, p 623 onwards.)

2An issue arises when a material proposition of fact or law is affirmed by one party and denied by the other. Thus, issues may pertain to issues of fact or issues of law. (Code of Civil Procedure 1908, O 14, r 1.) The scope of the trial in an infringement suit is decided by the issues framed. By settling the issues, the real dispute between the parties is determined and the area of conflict is narrowed down. Though it is the duty of the court to frame issues, the parties may expedite this process by filing draft issues.

3Evidence is usually given by experts who are well-versed with the field of technology to which the invention relates. Evidence with regard to issues of novelty, obviousness and sufficiency pertain to the knowledge of a person skilled in the art.

4In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) the Supreme Court held of the alleged inventor that “Being a partner of the respondent-firm, and personally knowing all the circumstances of the case, it was his duty as well as of the respondent-firm, to examine him as a witness so that the story of the particular invention being a new manufacture or improvement involving novelty, could, in all its aspects, be subjected to cross-examination. By keeping Purshottam away from the witness-box, the respondent-firm, therefore, took the heavy risk of the trial Court accepting the charge of lack of novelty made by the appellant herein.” (para 47). The Court held that the trial Judge’s findings “were, as already observed, largely findings of fact, base on appreciation of the evidence of witnesses and the trial Court had the initial advantage of observing their demeanour in the witness-box” (para 50).