Standipack Pvt Ltd v Oswal Trading Co Ltd (1999)

Summary

“Injunction applications have been filed by the plaintiff seeking for a temporary injunction restraining the defendant from manufacturing or using the patented pouch of the plaintiff.” The plaintiff’s case was “that the patent in respect of pouch for storage and dispensing of a liquid such as lubricating oil was granted to the plaintiff by the Controller of Patents.” (para 1) The defendants contended “that the patent was granted to the plaintiff illegally and in violation of the provisions of the Patents Act and the Rules framed therein”, that “the goods in question were pre-published”, and “that there was suppression of material facts” (para 2). “Indian Oil Corporation and Castrol India have filed petitions praying for revocation of patent, which are registered as C.O. 25/1995 and C.O. 11/1998 respectively.” (para 2) Counsel for the plaintiff submitted that “the plaintiff is entitled to injunction following the ratio of the decision in American Cynamid Company Vs. Ethicon Ltd.; reported in 1975 RPC 513.” (para 3) The Court framed seven points, among them post-dating, prior publication, invention, the pending revocation, the conflicting stand of the plaintiff and suppression of facts (para 6).

The Court held that “post-dating the Patent to 11.7.1989 appears to be illegal in view of the provisions of Section 9(4) of the Patent Act and the provisions of Section 17 are subject to Section 9” (para 8), that “it is crystal clear that the patent was pre-published, publicly known and used in India before the priority date of claim” (para 9), and that “prima facie the invention claimed by the plaintiff in respect of the thickness of the layers of the aforesaid pouch cannot be called an invention as envisaged within the definition clause of the Patents Act” (para 11). It held that “It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed” (para 16), and that “the plaintiff suppressed material facts in the suit filed in the Ambala Courts and did not approach the court with clean hands” (para 18). “The application seeking for interim injunction stands rejected and the applications filed under Order 39 Rule 4 CPC stand allowed. The injunction order granted by Ambala Court stands vacated.” (para 21)

What the court decided

1. Post-dating. “The aforesaid provisions make it crystal clear that post-dating of the patent can be done only to the date of filing of the complete specifications.” (para 8) “The Controller of Patents however, post-dated the patent to 11.7.1989 although complete specifications followed by the provisional specification was filed on 11.10.1990. Thus the post-dating of the patent by the Controller to 11.7.1989 prima facie appears to be in violation of the provisions of Section 9 of the Act. The date of the patent, therefore, should have been 11.10.1990.” “Thus post-dating the Patent to 11.7.1989 appears to be illegal in view of the provisions of Section 9(4) of the Patent Act and the provisions of Section 17 are subject to Section 9.” (para 8)
2. Prior publication. “The documentary evidence on record proves and establishes that construction of the said pouch was publicly known and used in India before the date when the patent was granted in favour of the plaintiff on 11.10.1990 and even before the application filed by the plaintiff on 11.4.1989 alongwith provisional specifications.” “The said report further indicates that the sale of the pouches was not in small quantity but pouches with similar construction and layers were available and sold in the market in lakhs prior to the date of patent. Thus it is crystal clear that the patent was pre-published, publicly known and used in India before the priority date of claim.” (para 9)
3. Thickness of the layers. “It may however, be noted that thickness of the plastic film/layer depends upon the tolerance of the contents in the pouch. Thus the same is merely an arrangement and re-arrangement of the mixture of the material and cannot be termed as a novel concept and does not have any novelty. Such arrangement and rearrangement of mixture of the material cannot become an invention, for it is only an improvement by adding microns as per the strength of the layers. Thus prima facie the invention claimed by the plaintiff in respect of the thickness of the layers of the aforesaid pouch cannot be called an invention as envisaged within the definition clause of the Patents Act.” (para 11)
4. The examiner’s acceptance. The submission that the examiner had found novelty “cannot be accepted in view of the fact that the examiner who examined the patent accepted the patent on the basis of the declaration made by the plaintiff and the examiner had no knowledge at that point of time that the pouches were already available in the market.” Applying Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978), in which “the Supreme Court held that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or ‘inventive step’”, the Court held: “The invention as claimed by the plaintiff does not satisfy the test laid down in the aforesaid decision for an invention.” (para 12)
5. No presumption of validity. “Thus, grant of patent in any manner does not guarantee the validity of the patent.” (para 14) “It has been held in a series of judgments that no presumption of validity attaches to a patent granted by the Controller under the Act”, among the decisions cited being Surendra Lal Mahendra v Jain Glazers (1980), in which “the Delhi High Court relying upon the judgment in Smith Vs. Grigg Ld., 41 RPC 149(1) held that despite all the safeguards and circumspection contemplated in various provisions of the Act against grant of patent in respect of a spurious, purloined or fake invention, the Legislature minced no words in clarifying its intendment that no presumption of validity would attach to a patent granted by the Controller under the Act” (paras 14–15)
6. A pending revocation. “There are cases where it is held that when an application is filed seeking for revocation of the patent and questioning the validity of the patent the court should not grant an injunction. It is settled law that in an action for infringement of a patent an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed.” Of V. Manicka Thevar v Star Plough Works: “it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant from pursuing his normal business activity.” (para 16)
7. Conflicting pleadings. “Foregoing discussions have clearly revealed that the plaintiff has taken a stand in the plaint that novelty in the exclusive right of a patent rests in respect of the pouch whereas in the reply and the replication filed the stand is that the novelty is in respect of the specific thickness and construction of the layers that can successfully hold the liquid in the pouch. The pleadings, therefore, are self-contradictory and conflicting.” (para 17)
8. Suppression of material facts. “The aforesaid position makes it crystal clear that the plaintiff suppressed material facts in the suit filed in the Ambala Courts and did not approach the court with clean hands and therefore, the said order of injunction is liable to be vacated on that count alone which the Supreme Court rightly stayed.” Of “S. P. Chengalvaraya Naidu Vs. Jagannath; (1994) 1 SCC 1”: “The Supreme Court further held that in case there is suppression of material facts and concealment of facts the High court would be justified in vacating the injunction order as the plaintiff has failed to come before the court with clean hands.” (para 18) To the plea of distinct causes of action: “This contention is without any merit.” “Thus causes of action in the two suits cannot strictly be called to be distinct and separate and definitely the two suits are inter-connected.” (paras 18–19)
9. American Cyanamid in India. “The aforesaid submission of the learned counsel for the plaintiff, in my considered opinion, is misplaced.” “There is a strong prima facie case in favour of the defendant in the application filed for revocation and the defendants have strong arguable case.” Of Franz Xaver Huemer v New Yash Engineers (1996): “It was also noticed in that case that the law in India has deviated from the principles laid down in American Cynamid case (supra) and the rule of triable issue stands mellowed down in favour of prima facie case.” Of Hindustan Lever Ltd v Godrej Soaps Ltd (1996): “It was also held that in a patent case the onus of showing a prima facie case justifying the grant of an injunction is a heavy one and it is comparatively easy for the respondent to establish a defense sufficient to prevent the grant of such an” injunction. (para 20)
10. Procedure. Disposition. “Considering the entire facts and circumstances of the case and the principles discussed above, I am of the considered opinion that the plaintiff has failed to make out any prima facie case for the grant of temporary injunction in its favour. The injunction as sought for is also refused on the ground that the plaintiff did not act with clean hands rather suppressed material fact from the Court at Ambala where a suit was instituted by the plaintiff against one of the defendants. The application seeking for interim injunction stands rejected and the applications filed under Order 39 Rule 4 CPC stand allowed. The injunction order granted by Ambala Court stands vacated.” “It is, however, made clear that whatever opinion has been expressed in this order is my tentative opinion and shall have no bearing on the merits of the case.” (para 21)

What the court did not decide

Of the differences urged between the plaintiff’s pouch and the defendants’ pouches, the Court held: “This however, is a matter which is required to be gone into at the time of trial of the final suit and no opinion, even prima facie is expressed at this stage.” (para 13)

Subsequent treatment

• Followed — In F Hoffmann-La Roche v Cipla (2009) the Division Bench of the Delhi High Court held that the contention of a heavy burden on the defendant “is contra indicated of the decisions in the context of Section 13(4)”, citing among them “Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd. AIR 2000 Del 23” (para 53).