Surendra Lal Mahendra v Jain Glazers (1980)

Summary

The application arose because “the plaintiff has instituted a suit for permanent injunction restraining the defendants” ... “from infringing in any manner, patent No. 143964 dated 21st July, 1976 entitled ‘Laminating Apparatus’”, an invention that “relates to an apparatus for producing a laminate by wet process as distinguished from dry process” (para 1). The plaintiff alleged that “defendant No. 3 somehow managed to get the know-how of the plaintiff’s invention and he has mischievously copied the same.” (para 2) The defendants asserted “that the said patent was already known, published and used in India as well as throughout the world, prior to the date of the application in this case”, that the Morane machines “were being imported into India much before the priority date of the plaintiff”, and “have also lodged a counter claim for revocation of the patent in question” (para 3). For the plaintiff it was “pervently canvassed” that, there being no opposition, “an inference will be well warranted that ex facie the Controller did not find the claim in the complete specification submitted by the plaintiff to be invalid” (para 6).

The Court held that “this argument, although specious on its face, is not tenable as it runs counter to the specific provisions contained in sub-section 4 of Section 13 of the Act” (para 6), and that “the plaintiff has to make out a prima facie case about the existence of his monopoly right and its infringement by the defendant independently of the grant of patent as such to him.” (para 9) On merits it found “that the plaintiff’s patent is nothing more than an indigenous combination of certain integers which form part of Morane machine designed to be a less expensive and cheaper apparatus” (para 12), and held that “the plaintiff has failed to make out a prima facie case entitling him to ad interim injunction asked for.” (para 15) “As a result, the ex parte injunction granted vide order dated 6th of June, 1979 is hereby vacated but the defendants and directed to maintain status quo and furnish accurate and correct quarterly statement of accounts to this Court” ... “However, they shall not manufacture any new laminating apparatus.” (para 16)

What the court decided

1. Examination does not warrant validity. The plaintiff’s argument from the examination and the absence of opposition, “although specious on its face, is not tenable as it runs counter to the specific provisions contained in sub-section 4 of Section 13 of the Act which clearly lays down that the examination and investigation required under Sections 12 and 13 shall not be deemed in any way to warrant the validity of any patent.” The Court held that “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, notwithstanding examination and investigation made under Sections 12 and 13 thereof.” (para 6)
2. The patentee’s interim burden. Recording that in “Smith vs. Grigg Ld. 41 R.P.C. 149(1)” Scrutton LJ observed that “where the patent which you are seeking to enforce is a recent patent, an interlocutory injunction is not granted where there is a genuine case to be decided” (para 7), and that in Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) the Supreme Court held that “the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970” (para 8), the Court held: “Thus, it is manifestly clear that the plaintiff has to make out a prima facie case about the existence of his monopoly right and its infringement by the defendant independently of the grant of patent as such to him. So it matters little that under Section 48 of the Act the patentee has the exclusive right by himself, his agents or licensee to make use, exercise, sell or distribute the patented article in India.” (paras 7–9)
3. Novelty and utility. “Section 2(1)(j) of the Act defines ‘invention’ which inter alia includes any new and useful improvement of any art, process, method or manner of manufacture or machine apparatus or other article etc. Thus to be patentable an invention besides being a new manufacture must also be useful.” (para 5)
4. The bow roller. “On a visual comparison of the drawings etc. and reading the salient features and the technology involved in the process of producing laminates by both these machines, I am unable ex facie to find any fundamental or glaring difference in the two.” “However, I have grave doubts if the provision of the bow roller would make even the slightest difference.” “Indeed, the plaintiff impliedly concedes this proposition when he states in the specification that ‘any suitable adjustment means may be used’ while referring to the role played by the bow roller.” (para 11)
5. The other differences urged. “Another improvement claimed on behalf of the plaintiff is that traverse of the film from the loading roller is from the bottom in the patented contrivance while it is from the top in Morane machine. I wonder if that would make any difference whatsoever and would constitute a distinct improvement.” Of the water base of the plaintiff’s adhesive: “I again fail to see what difference would it make.” (para 12)
6. A cheaper combination of known integers. “Thus it would appear that the plaintiff’s patent is nothing more than an indigenous combination of certain integers which form part of Morane machine designed to be a less expensive and cheaper apparatus. No doubt it may be termed as simplification of the apparatus to some extent but it is difficult ex facie to say that it involves an exercise of inventive step or inventive faculty. No doubt, he has produced a workable machine but it incorporates almost all the integers and components of Morane machine.” (para 12)
7. Workshop improvement and the skilled craftsman. Adopting what was “observed by the Supreme Court in M/s. Biswanath Prasad Radhey Shyam’s case”, that “To be patentable the improvement or the combiniation must produce a new result, or a new article or a better or cheaper article than before” and that “Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent” (para 13), the Court held that “it cannot bo held by any stretch of reasoning at this stage that the invention claimed by the plaintiff involves something which is outside the probable capacity of skilled craftsman having regard to what was already known in the country.” (paras 13–14)
8. Status quo on terms. “The learned counsel for the defendant has candidly conceded that the defendants are not manufacturing any laminating machine for sale and they are simply using it for their own business.” “Hence, ends of justice would be well met if status quo is maintained, subject of course to the condition that the defendants are put to terms on equitable basis.” (para 15)
9. Procedure. Relief. “As a result, the ex parte injunction granted vide order dated 6th of June, 1979 is hereby vacated but the defendants and directed to maintain status quo and furnish accurate and correct quarterly statement of accounts to this Court with regard to their business vis-a-vis laminating apparatus already manufactured by them. However, they shall not manufacture any new laminating apparatus.” “The defendants shall also furnish security /indemnity bond in the sum of Rs. 50,000.00 to the satisfaction of the Registrar for payment of damages to the plaintiff, if any, which he may be eventually found to be entitled.” (para 16)

Subsequent treatment

• Followed — In Franz Xaver Huemer v New Yash Engineers (1996) the Division Bench of the Delhi High Court recorded that “In Surendra Lal Mahendra Jain v. Glazers, 1981 PTC 112 (117) it was held that a prima facie case about the existence of the monopoly, right and its infringement must be established.” (para 32)
• Followed — In Standipack v Oswal Trading Co (1999) the Delhi High Court held, citing this judgment, that “in an infringement act relating to a patent the plaintiff has to make out a prima facie case about the existence of a monopoly right and its infringement by the defendant independently of the grant of patent as such” (para 20).
• 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 “Surendra Lal Mahendra v. Jain Glazers (1979) 11 SCC 511” (para 53).