Ravi Kamal Bali v Kala Tech (2008)

Summary

“On 6.5.1991 the Plaintiff, to protect his invention, filed an application for grant of patent for an invention titled ‘An improved tamper proof seal for directly locking the container’.” (para 4) He later “applied for a grant of patent of addition which was granted under Patent No. 178879” (para 6). “The Plaintiff alleges that in June, 2004 he came across similar products bearing the name ‘SEAL TECH’ which had constructional and functional features similar to the Plaintiff’s patented inventions” (para 8), and sought “an injunction restraining the Defendants from making of, using, selling or distributing tamper proof locks/seals that fall within the scope of the claims” (para 2). He “filed the suit only about nine months later on 11.10.2005 and took out the Notice of Motion on 2.12.2005 and made an application for ad-interim reliefs on the same day. I passed an ex-parte order on 2.12.2005.” (para 41) “By an order dated 30.1.2006 S.U. Kamdar, J. (as His Lordship then was) vacated the ad-interim order” (para 42). Mr. Tulzapurkar for the Defendants “did not challenge the validity of the Plaintiff’s patents” (para 3), but “denied that the Defendants products infringed the Plaintiff’s patents” and submitted “that the Plaintiff is not entitled to the injunction on the ground of delay and in view of his conduct.” (para 13)

Mr. Kirpekar submitted that “the Court ought to apply the doctrine of equivalence” (para 15), and “Mr. Tulzapurkar did not dispute these submissions.” (para 16) The Court held that “The rectangular box shape has no functional novelty” (para 26) and that “Nor do the number of vanes make any difference to the question of infringement.” (para 27) On the patent of addition it held that “The error lies in equating - a patent with a patent of addition” (para 33) and that “A stranger to the main invention cannot apply for a patent of addition in respect of any modification or improvement of the main intention.” (para 34) On conduct it held: “I would however deny the Plaintiff an injunction the present case having come to the conclusion albeit prima-facie, that the injunction was sought on a representation which was incorrect as to a material aspect.” (para 58) “In the circumstances, the Notice of Motion is dismissed. However, the Defendants shall maintain accounts in respect of the said products and shall furnish copies thereof in a sealed cover to the Prothonotary and Senior Master” (para 62).

What the court decided

1. The doctrine of equivalence. “Mr. Kirpekar submitted that while considering the question of infringement of patents, the Court ought to apply the doctrine of equivalence by which a device is set to infringe a claim if it ‘performs substantially the same function in substantially the same way to obtain the same result’. The test is whether the Defendants product appears to have taken the essence or what is sometimes called the pith and marrow of the invention.” He submitted that “the Court must determine and distinguish the essential and non-essential elements of the product” and that “it is not necessary that the infringing goods must be identical in every respect to the patented goods and it is sufficient if it is found that what has been taken is the essence of the invention.” (para 15) “Mr. Tulzapurkar did not dispute these submissions. He contended that as a matter of fact, the Defendants invention/product did not infringe the Plaintiffs patents. In particular, he submitted that the Defendants device even if held to perform the same function, to obtain the same result, did not function in substantially the same way as the Plaintiffs device.” (paras 15–16)
2. Purpose, material and principle. “It is common ground that the usage or the purpose of the material produced by the Plaintiff and Defendant No. 1 are the same. The nature of the material viz. spring steal is the same. It is nobody’s case that the marginal difference in the quality of steal accounts for any difference in the invention.” (para 20) “I am inclined to accept the Plaintiff’s claim that the two products work/function on the same principle viz. compression and decompression/expansion.” To Mr. Tulzapurkar’s submission “that in the Plaintiff’s product physical pressure, minor as it may be, to compress the vanes is necessary whereas in the Defendant’s products, the compression does not require any physical force” (para 21), the Court held: “This does not appear to be even factually correct. From the samples produced in Court, it appears that even the Plaintiff’s products may be inserted without any use of physical pressure to compress the vanes. They are compressed upon insertion and decompress/open up once inserted. Even if I were to come to a conclusion that some amount of compression is required by pinching the two sides of the ‘V’ shaped body between the thumb and the index fingure, it would make no difference. This would be a mere cosmetic or superficial difference which does not have any bearing on the invention.” (paras 20–22)
3. Essential features. “Mr. Tulzapurkar submitted that the top flap really does not make any difference as, a top flap would necessarily be required in any such locking system to ensure that the lock does not slip out. While I agree that the mere provision of a top flap would not be decisive of the matter, it is one of the facts which must be considered along with the other facts specially while determining the intention to infringe. The manner in which the Defendants have provided the top flap, indicates an intention to infringe. The top flap in both the products is an attachment/extension of the middle of the main body with two vanes on either side. It is not the Defendants case that the top flap could not have been provided in any other manner, for instance, by it being attached to the side portion of the Defendants product.” (para 23) “That the provisions of vanes and the operating system viz. compression and decompression are essential ingredients in the invention is admitted. While the term ‘vanes’ is not used in the claim of Defendant No. 1 in the patent application, it is clear that the Defendant considered the provision of vanes and the mode of operation thereof to be essential to the invention.” ... “Indeed, if this was not an essential feature of the invention, it might have been difficult for either side to support the patent at all. As stated above, the validity of the patent and therefore its status as an invention was not questioned by the Defendants.” (paras 23–24)
4. Shape and number of vanes. “Mr. Tulzapurkar then submitted that whereas in the Plaintiff’s product the main structure of the body is ‘V’ shaped, in the Defendant’s product the main body is a rectangular box type seal with four walls, two large and two small with vanes on all the four walls” (para 25). The Court held: “The difference in the shape of the main body does not by any stretch of imagination constitute the Defendants product as a separate or a new invention. The rectangular box shape has no functional novelty. At the highest, if it was the Plaintiff’s product, there may have been a case for registering the same as a patent of addition. It certainly does not constitute a novel independent invention by itself, warranting the registration thereof as a main invention.” (paras 25–26) “Nor do the number of vanes make any difference to the question of infringement. A view to the contrary would enable any manufacturer to use the Plaintiff’s invention by the mere provision of a different number of vanes.” (para 27) “The provisions of vanes on the sides does not carry the Defendants case further either. The constructional and functional structure of the product still remains the same. Nor am I impressed by the Defendants contention that his product provides protection on all four sides. So do the Plaintiff’s products.” ... “The provision of an outwardly facing notch/flap window for additional safety also makes no difference to the question of infringement. It does not change the essential functional system.” (paras 25–28)
5. Features worth a patent of addition. “At the highest, if the features of the Defendants products were the work of the Plaintiff, it would have entitled the Plaintiff to a patent of addition in respect thereof vis-a-vis the Plaintiff’s main invention and not to independent patents in themselves.” (para 29)
6. Patent and patent of addition. Mr. Tulzapurkar “submitted that if two additional vanes makes for a new invention, the Defendants invention would also constitute a new invention qua the invention that is patented, as the differences between the Defendants invention and the Plaintiff’s patented invention is greater than the difference between the patent of addition and the patent itself.” (para 32) The Court held: “The submission is not well founded. The error lies in equating - a patent with a patent of addition. There is to my mind, a fundamental difference between the two.” (paras 32–33) “The terms ‘improvement’ and ‘modification’ involve a reference to an existing state of affairs or article. Under the Act, the terms ‘improvement’ and ‘modification’ refer to a comparison of the improved or modified version of the main invention with the main invention. The validity of the patent of addition granted to the Plaintiff is not challenged including on the ground that it ought to have been the subject of an independent patent and not a patent of addition. In other words, the status of the invention as an improvement in or modification of the Plaintiff’s main invention was not challenged.” (paras 32–34)
7. The patentee of the main invention. “Sections 54 and 55 in terms establish the link between the main invention and the patent of addition. It posits that the patentee of the main invention and the patentee of the patent of addition, are the same. Section 54 permits the grant of a patent of addition only if the applicant thereof applies or has applied for a patent of the main invention in respect whereof the notification or improvement is claimed. It is obvious therefore that only the patentee of the main invention is entitled to improve or modify the main invention for otherwise it would permit anybody to benefit from it by exploiting the main invention. A stranger to the main invention cannot apply for a patent of addition in respect of any modification or improvement of the main intention.” (para 34) “A view to the contrary would lead to the most incongruous results. A view to the contrary would dilute if not obliterate the rights of a patentee in respect of a main invention entirely. For instance, if the patentee of the main invention and the patentee of the patent of addition are different, the validity of the patent of addition would continue only till the validity of the patent of the main invention. Even if the patent in respect of the main invention is revoked, the validity of the patent of addition can under the proviso to Section 55, continue only for the remainder of the term for the patent of the main invention.” (paras 34–35)
8. Delay and mala fides. “I would not deny the Plaintiffs the reliefs which I find he is otherwise entitled to on merits if I am satisfied that there were no mala-fides on his part regarding the manner in which he made the application on 2.12.2005. Mere delay of the nature in the present case would not disentitle the Plaintiff to reliefs atleast at the hearing of the Notice of Motion. If however the delay was with a view to snatching an order from this Court without notice to the Defendants in a dishonest manner, the Notice of Motion ought to be dismissed.” (para 43)
9. Disclosure of the caveats. “I am unable to agree with Mr. Tulzapurkar that there was any suppression on the part of the Plaintiff in making the application on 2.12.2005. In paragraph 15 of the plaint the Plaintiff had fairly disclosed the fact of the cease and desist notice, the reply thereto and about the caveats filed by Defendant No. 1/2.” ... “The Plaintiff having disclosed the necessary facts, no fault can be found with him that I was persuaded to grant the ad-interim injunction.” (para 44) “Indeed, the observation of the Division Bench in the order dated 14.2.2006 that there was no justification in passing the ad-interim order dated 2.12.2005 in view of the Defendants having earlier filed two caveats are directed not against the Plaintiffs conduct but against the correctness of the order I passed on 2.12.2005. A party that discloses the necessary facts cannot be faulted or penalized for the Court having passed a wrong order or an order held by the Appeal Court to be wrong.” (para 45) “This observation of the Division Bench therefore cannot be a ground for rejecting the Notice of Motion without considering the merits.” (paras 44–46)
10. The explanation for delay. “The question that remains is the tenability of the Plaintiff’s contention that after the receipt of the reply to the cease and desist notice in June/July 2004 the Defendants had in fact stopped manufacturing the infringing products. This is the Plaintiff’s explanation, for having filed the suit almost ten months after the expiry of the validity of the second caveat.” (para 47) “The Defendants furnished particulars thereof which indicate that the sales between May, 2004 and December, 2005 ranged from about Rs. 22,000/- to Rs. 1,25,000/- and the total quantity of material during this period ranged from about 8000 pieces to about 56000 pieces. These are not high priced products. Considering the nature of the product, I would consider the sales to be substantially enough for a competitor to be aware of the same.” (paras 47, 49) “Prima-facie therefore, the Plaintiff’s averments in paragraph 15 of the plaint that he believed that the Defendants had stopped manufacturing the goods after June 2004 appear to be incorrect and made only with a view to making an application for ad-interim reliefs without notice” (paras 47, 49, 56)
11. Relief without notice. “The power of the Court to grant ad-interim reliefs without notice to the other side is an important one to do justice in certain cases where the issuance of a notice to the other side would defeat the purpose of the application and very often the suit itself. It is a power which atleast in this Court is exercised sparingly. Indeed, it ought to be exercised sparingly as it affects the rights of parties without affording them an opportunity of being heard. The power is important, and indeed invaluable including in cases which involve the protection of intellectual property rights.” (para 57) “However, a party seeking an order without notice to the other side ought to make a honest and full disclosure of facts. There may be cases where an incomplete disclosure may not be significant. There may be cases where the omission to disclose a fact may not be deliberate. Where however, the Court finds that the application contained a representation which was deliberately incorrect, it would be justified in denying the discretionary relief of an injunction.” (para 57)
12. Refusal of the injunction. “I do not suggest for a moment that mere delay would itself disentitle the Plaintiff to the injunction. I would however deny the Plaintiff an injunction the present case having come to the conclusion albeit prima-facie, that the injunction was sought on a representation which was incorrect as to a material aspect. There is every possibility that had the Court been informed that the Plaintiff was aware since June 2004 of the Defendants continued infringement, it may not have entertained the ad-interim application made after a delay of 18 months without notice to the Defendants.” (para 58)
13. Disposition. “In the circumstances, the Notice of Motion is dismissed. However, the Defendants shall maintain accounts in respect of the said products and shall furnish copies thereof in a sealed cover to the Prothonotary and Senior Master on or before the 10th of January and 10th of July each year. Defendant No. 1/2 shall within eight weeks from today file the accounts for the period June 2004 to date in a sealed cover with the Prothonotary and Senior Master. The Plaintiff is at liberty to make an application to inspect the same after notice to the Defendants Advocates.” (para 62)

What the court did not decide

“Mr. Tulzapurkar further submitted that the Plaintiff’s patent of addition is itself an inventive step. He submitted that a patent of addition can also be granted only if the improvement or modification constitutes an inventive step.” ... “Mr. Kirpekar did not deny this submission. I would proceed on the basis therefore that it is well founded.” (para 31)

Subsequent treatment

• Distinguished — In SABMiller India Ltd v Som Distilleries & Breweries Ltd (Bombay High Court, 8 February 2013), the defendant relied on this judgment, with two others, for its plea that the plaintiff was guilty of suppression; the Court held that “the Plaintiff has not suppressed any facts from this Court and the judgments relied upon by the Defendant lend no assistance to them” (para 25).