Raj Parkash v Mangat Ram Chowdhry (1977)

Summary

“The plaintiff/appellant produces and markets a toy called a viewer.” “The plaintiff obtained a patent bearing No. 111926 for what he calls his invention.” His case was that “the defendants have infringed the patent of the plaintiff inasmuch as they are manufacturing and selling in the open market film strip viewers utilising a medially cut 35 mm. cinematograph film in viewers in a manner which is identical to and a copy of the viewers being manufactured and marketed by the plaintiff.” (para 2) “In short, not only the invention claimed by the plaintiff was disputed but also its worth or value.” (para 3) “The learned single Judge partly upheld the patent of the plaintiff but dismissed the suit for infringement of the patent.” (para 5) Then “The Bench by its order of April 30, 1974 framed an additional issue and remanded the case back to the learned single Judge” (para 1), and “He again recorded a finding that there was no infringement by the defendants.” (para 5) In the appeal “the counsel for the plaintiff/appellant and defendants 1 and 2 (respondents 1 and 2 herein) gave almost similar construction to the claims in patent No. 111926.” (para 9)

The Division Bench held that “It is the pith and marrow of the invention claimed that has to be looked into” (para 12). “In our view, the plaintiff/appellant has rightly construed the scope of his patent as in claim 1 to 5. The learned single Judge, and we say it with great respect, went wrong in holding that the patent lay in the process of filming by masking.” (para 18) “The patent in its entirety is, therefore, upheld as valid.” (para 19) It found “neither anticipation nor prior user” (para 23). “Unessential features in an infringing article or process are of no account.” “A person is guilty of infringement if he makes what is in substance the equivalent of the patented article.” (para 25) “Therefore, we hold that there is clear infringement of the plaintiff’s patent, which we have delineated above.” (para 26) By its formal order “R.F.A. (CS) 2 of 1973 is allowed, and the judgments of the trial Court dated December 15, 1972 and January 27, 1975 are discharged.” (para 32)

What the court decided

1. What an invention is. “Invention, as is well-known, is to find out something or discover something not found or discovered by anyone before. Whether a patent sets out an invention is to be determined by a true and fair construction of the specifications on the basis of which an inventor claims that he is the first inventor of an invention which is to be patented.” (para 10)
2. Construing the specification. “In order to properly construe the specifications, one should give ordinary meaning to the words but where necessary the words must be construed in the sense in which they are used at a particular trade or sphere in which the invention is sought to have been made.” (para 10) “As observed by us a little earlier, the first thing to do is to determine what the invention is. ... A careful reading of the claims put in by the plaintiff and understanding the same in their ordinary meaning would clarify the whole situation.” “As was said by Heald K. C. in Electrical and Musical Industries, Ld. and Boonton Research Corporation Ld. v. Lisson Ld. and another, 1937 (54) R.P.C. 307 and affirmed by Romer, J. in the same case”, “the specification must be construed with a proper appreciation of the meaning that it would convey to persons engaged in the art to which it relates, for it is to those persons that it is addressed and it must be read with their eyes.” (para 11) “We have, therefore, to read the specifications and the claims from the point of view of the persons in the trade manufacturing film strip viewers. It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims” (paras 10–12)
3. Simple inventions. “It is not necessary that the invention should be anything complicated. The essential thing is that the inventor was the first one to adopt it. The principle, therefore, is that every simple invention that is claimed, so long as it is something which is novel or new, it would be an invention and the claims and specifications have to be read in that light, as, was observed in the famous hair-pin case” (para 12)
4. The title of the specification. “Sometimes people fall into error in construing specifications by relying too much on the title given to the specifications of the invention. It is settled law that the title of the specifications of an invention claimed does not control the actual claim. A misleading title similarly is of little consequence. It is on a proper construction of the specifications and the claims that the true nature of the invention claimed is to be determined and the patent granted has to be construed. Rule 33 of the Indian Patents and Designs Rules, 1933, inter alia, lays down that the title should give a fair indication of the art or industry to which the invention relates. ... Thus, the rule itself indicates that the title of the specifications does not govern the specifications or the claims.” (para 13)
5. Disclosing the best method. “The patentee is obliged under Rule 34 of the aforesaid Rules to describe means of performing the invention in the best manner known to him and disclose the same. The law in this behalf has long been settled.” From Grove J in Westinghouse v The Lancashire and Yorkshire Railway Company the Bench set out that “It is, therefore, incumbent upon the patentee to let the public know in clear terms, or as clear as the nature of the case will permit, the nature of his invention.” “The above proposition is codified in India in the form of Rule 34 of the aforesaid Rules. Form No. 3A, inter alia, requires” that “The Complete Specification must describe the best method known to the patentee of performing the invention and all his knowledge relating thereto” (para 15)
6. Article and process. “The invention for which patent is claimed may be a product or an article or a process. In the case of an article the patent is in the end product or the article; in the case of a process, the patent does not lie in the end product, but only in the process by which it is arrived at. Section 5 of the Patents Act, 1970, speaks of inventions where methods or processes of manufacture are patentabic but also speaks of inventions claiming substances intended for the use, or capable of being used, as food or as medicine or drug which may also be patentable. Regarding other substances the law continues to be the same as before and any invention so long as it does not fall within Section 3 of the Patents Act, 1970, is patentable.” (para 16)
7. Monopoly and quid pro quo. “The grant of patent, no doubt, creates a monopoly in favour of the patentee but then law throughout the free world recognises that an inventor must first get the benefit of his invention even if it means creating a monopoly.” (para 10) “The effect of the grant of a patent is quid pro quo. quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. Section 12 of the Patents and Designs Act, 1911 sets out that a patent once granted confers on the patentee the exclusive privilege of making, selling and using the invention throughout India and of authorising others so to do. This is the quo. The quid is compliance with the various provisions resulting in the grant of the patent.” The passage it set out from the hair-pin case, Hinde v Osborne, includes: “If a man obtains a patent, and thus obtains a monopoly, it makes no difference that somebody clse who has not got a patent has thought of the same thing and has used it. He is not permitted to do that where the monopoly has been secured to an inventor.” (paras 10, 24)
8. Known techniques and the novel idea. “Therefore, use of a particular type of film or camera or taking plurality of pictures on one film or in one frame is neither novel nor new. The technique of masking, super-imposing etc. are also well-known. Therefore, the trial Court fell in error in being confused by the defendants. who put up a case of cine-frames, leica frames, technique of photography etc. as defence to their infringement. The patent consisted, inter alia, in the novel idea mentioned in the statement of the counsel for the appellant recorded by us earlier. In the claims put forward by the plaintiff in the Patent Office the entire process was described. From this process the essential and the unessential parts have to be separated and the same stand separated in discerning and finding out the invention of the plaintiff, when we read his counsel’s statement set out hereinabove. The patent in its entirety is, therefore, upheld as valid.” (para 19) “The process of photography mentioned in the specifications and the claims, in our view, unduly prolific, does not detract from the essential features of the plaintiff’s invention of which, as has already been held by us, there is neither anticipation nor prior user.” (paras 19, 23)
9. Prior publication and anticipation. “the next aspect is to determine whether the invention is new with reference to (a) prior publication, and (b) prior use. The defendants did not disclose any case of prior publication in the written statement. ... Reading the statement of V. K. Singhal, who appeared as D.W. 3, we have no hesitation in rejecting the contention of the defendants. ... This is something quite different from preparing medially cut strips of 35 mm. films having plurality of pictures for use in viewers specially adapted for these half-strips to give a virtual image of a full cine-frame. ... There is no evidence of prior user and the rule enunciated in Pope Appliance Corporation v. Spanish River Pulp and Paper Mills Ltd., 1929 (18) R.P.C. 23(9) is clearly attracted.” (para 20) “Therefore, it is obvious that at no stage were film strips, as claimed by the plaintiff to be his patent, produced or got produced by the defendants prior to 1967.” (paras 20–21) “To establish this it had to be proved by the defendants that in some prior publication there is found information about the alleged invention more or less similar to what is claimed by the plaintiff. Mere possibility of such a thing being made is of no consequence. A new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers. The claim for anticipation has to be either by prior user or by prior publication.” From the House of Lords in Martin and Biro Swan Ltd v H. Milwood Ltd the Bench quoted that “It is not enough, to use the familiar metaphor which has perhaps been run to death, to make a mosaic of prior publications and to say that thus the whole invention has been already disclosed.” (paras 20–22)
10. The test of infringement. “The patented article or where there is a process then the process has to be compared with the infringing article or process to find out whether the patent has been infringed. This is the simplest way and indeed the only sure way to find out whether there is piracy. ... Unessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no piracy. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. Some trifling or unessential variation has to be ignored. There is a catena of authority in support of this view.” From Lord Denning MR in Beecham Group Limited v Bristol Laboratories Ltd it quoted that “He cannot get out of it by some trifling or unessential variation” and that “The process is so similar and the product so equivalent that it is in substance the same as ampicillin.” (para 25) “We have seen the viewers marketed by the defendants and the viewers produced by the plaintiff. ... The defendants have made certain variationsn its viewers but these are unessential; and what the defendants market is substantially the same thing, as was conceived by the plaintiff. By trifle variations if the effect obtained by the defendants is the same, and we hold that it is the same, then according to the rule enunciated in the Ampicillin case, referred to above, there is a clear piracy. The idea of the plaintiff which is a novelty is clearly infringed. In any case, the infringement is admitted by defendants 1 and 2. We have dealt with this matter in detail because defendant No. 3 has put in appearance at the last stage but does not admit infringement. Therefore, we hold that there is clear infringement of the plaintiff’s patent, which we have delineated above.” (paras 25–26)
11. Injunction and accounts. “The infringement having been proved and admitted by defendants 1 and 2, an order of injunction and accounts must follow.” (para 27) “Apart from admitting the patent, as claimed by the plaintiff, defendants 1 and 2 also admitted infringement thereof and prayed that a decree declaring the validity of the patent of the plaintiff with an injunction against the defendants be passed prohibiting them from infringing such patent. With regard to the claim for accounts and damages the plaintiff and defendants 1 and 2 agreed that out of the sum of Rs. 15,000 deposited by defendants 1 and 2 by way of security in this court a sum of Rs. 5,000 be refunded to defendants 1 and 2 with proportionate interest thereon and the balance be paid to the plaintiff in full and final satisfaction of all claims of damages and accounts for the past period. ... As against defendants No. 3 who has been proved to be a seller of infringing viewers a decree for accounts is passed. A preliminary decree for accounts is passed. The final decree will be made up after a Local Commissioner has gone into the accounts and submitted a report. Against all three defendants a declaration is given about the validity of the patent of the plaintiff, as claimed and set out by us hereinabove, and an injunction is issued restraining the defendants from in any way infringing the said patent of the plaintiff during its turn or extension thereof. The plaintiff/appellant would also be entitled to delivery up order of infringing articles and dies in accordance with the delivery up order to be made by the court.” (paras 27, 30)
12. The case for revocation. “Before we draw up the order, we would like to clearly state that the case of revocation of the patent put up by the defendants stands disproved, not only by the admissions but in view of the discussion of evidence hereinabove.” (para 31)
13. Disposition. “The patent claimed by the plaintiff and construed by this Court, is that the plaintiff/appellant is the owner of the patent which is in a medially cut positive 35mm printed film (with one or plurality of picture) and its use in combination with viewers specially adapted for the use of such medially cut strips, so as to get a virtual image of the same size as the virtual image of normal 35mm frame. The patent thus is also in a half cut 35mm positive film and the viewers with such film fitted therein.” (para 32) “R.F.A. (CS) 2 of 1973 is allowed, and the judgments of the trial Court dated December 15, 1972 and January 27, 1975 are discharged. The plaintiff having raised the question of the enforcement of his patent, the same being upheld, the defendants by themselves or through their servants and agents are restrained during the continuance of patent No. 111926 dated August 11, 1967, or any extension thereof from infringing the said patent of which the plaintiff is the owner.” “It is further ordered that an enquiry be made what damages have been sustained by the plaintiff by marketing of the infringing viewers by defendant No. 3 ... Costs of the proceedings will be borne by the parties themselves. This court hereby certifies, pursuant to Section 151 of the Patents Act, 1970, that the plaintiff has proved the particulars of breaches and defendants 1 and 2 have failed to prove their claim for revocation of the patent.” (para 32) “The appeal is disposed of in terms of the above order.” (paras 32–33)

Subsequent treatment

• Followed — In Bajaj Auto v TVS Motor Company (2008) the Madras High Court held that “The effect of patent granted under the Act and its consequential user apart from a third person using the patented product in the substance equivalent to the patented article has been dealt with by the Division Bench of Delhi High Court in Raj Prakash v. Mangat Ram Choudhary and Ors.”, set out paras 24 and 25, and concluded: “Therefore, it is clear that the applicant has made out a prima facie case for injunction against the respondent.” (para 55)
• Followed — In Novartis v Cipla (2015) the Delhi High Court cited it for the rule that “once it is held by the Court that it is a valid patent and it has been infringed by the defendant, normally an injunction order can be passed”, recording that “it was held in paragraph 25 that minor variations in the two relevant products are irrelevant for the purpose of deciding whether there is infringement and if the infringing article is an equivalent of the patented article, infringement would be proved” (para 76).
• Followed — In Inphase Power Technologies v ABB India (2016) the Karnataka High Court held that “It is settled that unessential features in an infringing article or process are of no account”, reproducing para 25 (para 25); and in Sotefin v Indraprastha Cancer Society and Research Centre (2022) the Delhi High Court recorded that “a division bench of this court held that a minor variation cannot be treated as a shield from piracy”, reproducing paras 12, 16, 25 and 26 (para 33).
• Distinguished — In FMC Corporation v Natco Pharma Limited (2022) the Delhi High Court held that in this case the “Division Bench of this Court found in the facts of the case that Defendants had made variations which were unessential”, “which is diametrically opposite to the facts of the present case”, and that “the Plaintiffs cannot seek refuge under the said judgment” (para 42).