K. Ramu v Adyar Ananda Bhavan and Muthulakshmi Bhavan (2007)

Summary

The plaintiff sought injunctions against “infringing the applicant’s product patent under No. 200285 by making, using, selling or offering for sale of sweets made with fructose/levulose” (para 1) and “infringing the applicant’s process patent under No. 193899” (para 2). On the plaintiff’s case, “fructose/levulose which is a sweetener that does not have the injurious effect of sugar produced from sugarcane, can be used for the purpose of making traditional Indian sweets”, and “The process involves fructose being prepared in a particular manner so as to prevent fructose from browning due to maillard reaction and caramelization when exposed to high temperature.” (para 4) “After examining the application for process patent and product patent, registration certificate was issued for both process patent and product patent on 5.12.2005 under No. 193899 and on 1.5.2006 under No. 200285 respectively.” (para 4) The defendant “contended that the plaintiff made misrepresentation and played fraud upon the authorities for getting the patent rights and therefore they are taking steps to revoke the grants” (para 9), and submitted that “when the invention itself is questioned and until the patent right is tested before this Court, the plaintiff is not entitled to any order of injunction.” (para 13)

The Court held that “the plaintiff has discharged his initial responsibility by proving that they are protected by the certificate issued by the authorities under the Patents Act 1970. In other words the plaintiffs have established a prima facie case on the strength of their two certificates.” (para 16) Of the authority that a recent patent under challenge does not earn an injunction, it held that “Section 48 (with effect from 20.5.2003) and Section 108 (with effect from 20.5.2003) were not there at the time of delivering the above decision and therefore on the strength of this decision, the plaintiff cannot be denied the relief of interim injunction.” (para 26) “In the present case it has not been established that the process in making a sweet with fructose and the alternate low glycemic sweets made in this process are known to the entire world.” (para 31) “In the result, both the applications are allowed. No costs.” (para 34)

What the court decided

1. Prima facie case from the certificates. “It is an admitted fact that the Plaintiff has been issued with patent rights for both process and product.” “Thus the plaintiff has discharged his initial responsibility by proving that they are protected by the certificate issued by the authorities under the Patents Act 1970. In other words the plaintiffs have established a prima facie case on the strength of their two certificates.” (para 16)
2. The rights under Section 48. “In such circumstances Section 48 of the Patents Act, 1970 will hold the field according to which a patent granted under this Act shall confer upon the patentee the exclusive right to prevent third parties from the Act of making, using, selling or importing that product in India if the subject matter of the patent is a product.” (para 16) “Therefore the plaintiff having obtained the patent for both the process and product under the Patent Act, 1970 has got the statutory right to prevent 3rd parties from infringing those rights.” (paras 16–17)
3. Relief under Section 108. “When third parties infringe the rights granted under the Patent Act then Section 108 of the Act will come into operation according to which in case of infringement the court may grant the reliefs including injunction and ordering the goods to be seized, forfeited or destroyed.” (para 18)
4. The authorities applied. Of Telemecanique & Controls (I) Limited v. Schneider Electric Industries SA, 2002 (24) PTC 632 (Del)(DB), the Court recorded that “the Division Bench of Delhi High Court held that undoubtedly patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device and thus once violation is established, it will not he permissible to contend that the said patentee is not entitled to any injunction.” (para 21) Of Wockhardt v Hetero Drugs (Madras, 25 November 2005), “the Division Bench of this Court reiterated the guidelines to be considered by the court while dealing with the issue of grant of interim injunction.” (para 23) “In the light of the above legal principles, provisions of the Patent Act, 1970 and the facts of the present case I am of the considered opinion that the plaintiff is entitled to an order of interim injunction in both these applications.” (paras 21, 23–24)
5. Recent patents before the amendment. Of the holding of “this Court” “that when the patent is a very recent one, and there is a controversy about the validity of the grant of patent touching the originality or inventive genious of the plaintiff, to the grant of the patent, then the plaintiff is not entitled to an order of interim injunction” (para 25), the Court held: “The above decision has been rendered prior to amendment made to Patent Act and Section 48 (with effect from 20.5.2003) and Section 108 (with effect from 20.5.2003) were not there at the time of delivering the above decision and therefore on the strength of this decision, the plaintiff cannot be denied the relief of interim injunction.” (paras 25–26)
6. A validity not yet established. Of the holding in “AIR 1976 Delhi 86” “that court will be reluctant to grant the injunction if the defendant disputed the validity of the grant and if the patent is new and its validity has not been established in a judicial proceeding till then” (para 27), the Court held: “This decision was also rendered before the amendment and in fact in the recent decision of Delhi High Court reported in 2002(24) PTC 632 (cited supra), the Division Bench held otherwise. Therefore this decision is not helpful to the defendant.” (paras 27–28)
7. A substance known throughout the world. Of the Supreme Court’s holding “that when the plaintiffs were merely camouflaging a substance whose discovery was known through out the world, the patent is liable to be revoked” (para 29), the Court held that “The facts in the above Supreme Court decision are totally different from the case on hand and therefore that decision is easily distinguishable.” (para 30) “In the present case it has not been established that the process in making a sweet with fructose and the alternate low glycemic sweets made in this process are known to the entire world. On the other hand until such sweets made by the plaintiff no such sweets were ever made. It is also established before me that even the defendant has started manufacturing sweets containing fructose only after plaintiff’s sweets hit the market.” (paras 29–31)
8. Disposition. “Hence I do not find any merits in the contentions of the defendant to reject the injunction applications.” (para 32) “As the plaintiff has established a prima facie case its statutory right and the injury that would be caused to him. I am satisfied, that the plaintiff is entitled to an order of injunction in both the above applications.” (para 33) “In the result, both the applications are allowed. No costs.” (paras 32–34)

Subsequent treatment

• Distinguished — In Chemtura v Union of India (2009) the Delhi High Court held that “K. Ramu v. Adyar Ananda Bhavan 2007 (34) PTC 689 (Mad), did not deal with the question of non-compliance with Section 8 and consequently the patent being rendered vulnerable to revocation under Section 64 (1) (m) of the Act.” (para 46)
• Followed — In Mariappan v A.R. Safiullah (2008) the Madras High Court, 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”, held that “as long as the patent is in force, the applicant/plaintiff who is the patent holder is entitled to some protection.” (paras 62–63)
• Followed — In Merck Sharp and Dohme v Glenmark Pharmaceuticals (2015) the Division Bench of the Delhi High Court cited this case among those in which “the fact that the patentee was already dealing in the market on the basis of the patent weighed in as a factor in granting the interim injunction” (para 87).