U. VARADARAYA NAYAK case

COMMENT: 1.The Suit relates to infringement of Patent. The Hon’ble Court declined the injunction.

2. The Hon’ble Delhi High Court has reiterated the General Principles of Interim Injunction, which is as follow: On the question of grant of interim injunction it may be useful to recall the principles explained by the Supreme Court in Wander Limited v. Antox India Private Limited 1990 Supp (1) SCC 727 as under: "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted." (Para 25).

3. Regarding the challenge of the Patent by the Defendant, the Hon’ble Delhi High Court has given the following finding:

In F. Hoffmann-LA Roche v. Cipla Ltd. 159 (2009) DLT 243 a Division Bench of this Court was considering, in the context of the prayer for an interim injunction in a patent infringement action, the question whether the Defendant therein had raised "a credible challenge to the validity of the patent". The Court held out that "the Defendant resisting the grant of injunction by challenging the validity of the  patent at this stage is required to show that the patent is vulnerable and that the challenge raises a serious substantial question and a triable issue." (Para 30).

4.         Expanded Metal Company v. Bradford 214 U.S. 366 to urge that merely because the invention seems simple after it is made, it does not cease to be novel and that the person who first discovers and makes improvements is entitled to protection as an inventor.

5.

                        IN THE HIGH COURT OF DELHI AT NEW DELHI

                        IA No. 3997 of 2012 in CS (OS) No. 523 of 2012

                                        Reserved on: November 26, 2013

                                                Decision on: December 12, 2013

U. VARADARAYA NAYAK ..... Plaintiff Through: Ms. Swathi Sukumar with

Mr. Anirudha Mitra, Ms. Anur Paarcha and Ms.Essenese Obhan, Advocates.

                                                    Versus

S.K. ANAND & ORS. ..... Defendants Through: Mr. Mahender Rana, Advocate for

Defendant No. 1.

Mr. Amarjeet Singh, Mr. Hari Subramanium, Ms. Vernika Tomar and Ms. Vibha Arya, Advocates for Defendants 2 to 4.

Mr. Sanjeev Mahajan, Advocate for Defendants 5 and 6.

CORAM: JUSTICE S. MURALIDHAR

JUDGMENT

12.12.2013

1. This judgment disposes of the application by the Plaintiff U. Varadaraya Nayak under Order 39 Rules 1 and 2 of the Code of Civil Procedure 1908 ('CPC') for interim relief.

Background facts

2. The Plaintiff has filed the above suit seeking a permanent injunction to restrain the Defendants from infringing Patent No. 184118 granted in his name for "a twin blade razor". At the time of filing of the suit on 28th February 2012, the Plaintiff was 68 years old and a retired school teacher living in Mangalore, Karnataka. He states that he holds a B.Sc. degree in Physics, Chemistry and Mathematics and a B.Ed. in Education from Mysore University. He is stated to have been bestowed four National Awards and three International Awards for his research and innovations. He states that he has also been working as an individual inventor in the field of technologies related to solar energy, laboratory apparatus, teaching apparatus, utility devices such as shaving razors etc. for the last 29 years.

3. On 7th March 1994, the Plaintiff applied for a patent for an invention titled 'a twin blade razor'. It is stated that the grant of patent was opposed by Gillette Company, USA. After the examination of the patent as well as the opposition, the Controller of Patents ('COP'), by an order dated 9th April 2008, granted the Plaintiff the patent for the above invention. The grant of patent was recorded in the Register of Patents on 29th July 2008. The patent is valid for a period of 20 years from the date of filing. In other words, the patent is valid up to 7th March 2014.

4. It is stated that by an order dated 14th December 2007 the Deputy COP, Chennai held that the inventive feature of the Plaintiff's Patent No. 184118 was "the novel manner in which the holes are positioned in relation to the upper blade and lower blade". It was held that positioning of holes "can neither be a routine choice for the cartridge designer nor can the cartridge designer be aware of it and therefore is non-obvious...[in] the sense that it would not have occurred to any specialist in the field of razor manufacture or design, had such a specialist been asked to find a solution to the particular problem of cleaning the gap between blades (5,6)." It was held that the inventive feature of Patent No. 184118 did not occur to the opponent though it was simple.

5. The Plaintiff states that there are as many as five claims in the above Patent No. 184118. It is stated that the novelty and inventive step of the suit patent reside in the combination of the following integers/elements of the Plaintiff's razor:

"(a) A lower blade separated from an upper blade by a spacer

(b) The lower blade partly overlapped by the upper blade

(c) Holes provided on the lower blade such that each hole is partly covered by the upper blade and remains partly exposed."

The plaint

6. In para 13 of the plaint, the Plaintiff states that he wrote a letter dated 8th October 2003 to Laser Shaving (India) Pvt. Ltd. ('LSIPL') (Defendant No.2) having its offices at New Delhi, Hyderabad and Mumbai, expressing his willingness to license/assign his inventions related to shaving equipments (i.e. the then pending suit patent and granted Patent No. 181580 related to a protective case for a safety razor head). The Plaintiff states that in the said letter he had explained the inventive features of his inventions to Defendant No.2.

7. In para 14, the Plaintiff states that Mr. S.K. Anand (Defendant No.1), "is CS (OS) No. 523 of 2012 Page 3 of 28 believed to be the Chief Executive Officer ('CEO') in Harbans Lal Malhotra & Sons Pvt. Ltd. (Defendant No.3)". In the same paragraph the Plaintiff avers that LSIPL (Defendant No.2), Malhotra International (P) Ltd. (Defendant No.4), Vidyut Metallics Pvt. Ltd. (Defendant No.5) and Supermax Personal Care Pvt. Ltd. (Defendant No. 6) are associated companies of the 'House of Malhotra' and involved in the activity of manufacturing and selling razors that are using the Plaintiff's patented invention, thereby infringing the patent of the Plaintiff. It is further averred that Defendants are a common economic entity. The Plaintiff states that the exact relationship between the Defendants could be ascertained after discovery in the present suit.

8. In para 15 of the plaint it is stated that following the letter of 8th October 2003, the Plaintiff on 14th October 2003 had a telephonic conversation with Mr. S.K.Anand (Defendant No.1) in respect of both the inventions related to shaving equipments. It is further stated that Defendant No.1 responded to the Plaintiff's letter dated 8th October 2003 written to Defendant No.2 and requested the Plaintiff to send him the detailed specifications of both inventions along with the correspondence related to the suit patent. The Plaintiff states that he sent a letter dated 22nd October 2003 to Defendant No.1 sending him the "complete specifications, drawings and patent certificate in respect of Patent No. 181580 and in the same letter assured him that he would be sending documents pertaining to the suit patent including the documents related to the opposition proceedings initiated by the Gillette Company, USA." It is then stated that on 23rd October 2003, the Plaintiff sent Defendant No.1 the documents pertaining to the suit patent which included provisional as well as complete specifications, drawings related thereto and all the documents and correspondences received by the Plaintiff from the Patent Office, Chennai. By a letter dated 29th October 2003, the Plaintiff requested Defendant No.1 to "reconsider his Patent No. 181580 for assignment/licensing." It is stated that when he did not hear from the Defendants, the Plaintiff sent reminder letters dated 27th December and 29th December 2003 requesting them to let the Plaintiff know if they were interested in licensing/assignment of any of his inventions.

9. In para 20 of the plaint, it is stated as under:

"20. It is only thereafter when the Plaintiff had a telephonic conversation sometime in January 2004 with Defendant No.1 that the Defendants responded that they are not interested in any of his inventions. Considering that the Defendants indicated disinterest in commercial exploitation of the invention forwarded by the Plaintiff, the Plaintiff considered the matter closed and did not thereafter pursue or interact with the Defendants".

10. The plaint is silent on what happened for a period of seven years thereafter. In para 21 it is stated as under:

"21. In or around last week of December 2011, the Plaintiff was shocked to learn that the Defendants are involved in the manufacture and sale of razors that using the same technology/invention shared by the Plaintiff in 2003. The Plaintiff had in good faith treated the matter as closed and did not anticipate that the Defendants would blatantly exploit the Plaintiff's invention shared by the Plaintiff with the Defendants in good faith in 2003. It is pertinent to note that despite coming from a less privileged economic background, the Plaintiff had diligently expended his meagre resources in renewing the Patent No. 184118 from time to time spending in excess of Rs.43,000/-. The  consistency with which the Plaintiff, a retired school teacher, has maintained his rights in the suit patent speaks volumes about the faith that he reposed in the commercial viability of his invention and in the patent system of his country".

11. In para 22 of the plaint, the Plaintiff has listed out 12 infringing products manufactured by Defendants 2, 4, 5 and 6. It is not in dispute that each of the products list in para 22 is a triple blade razor. In para 25 it is stated that upon coming to know the above fact, the Plaintiff himself conducted an investigation and found that the Defendants' infringing products, using a technology identical to the one under the suit patent, were being sold in the domestic market including within the territorial jurisdiction of this Court.

12. In para 26 of the plaint, the Plaintiff sets out the particulars of infringement. He states that on perusal of the triple blade razors procured by the Plaintiff from the market, the Plaintiff noticed that the Defendants have unauthorisedly copied/incorporated all the essential elements and combination of elements/integers of the Plaintiff's registered patent namely: "(a) a lower blade separated from an upper blade by a spacer (b) the lower blade partly overlapped by the upper blade (c) holes provided on lower blade such that each hole is partly covered by the upper blade and remains partly exposed."

13. The Plaintiff has in his plaint relied upon a technical report obtained by him from Professor K.V. Gangadharan, National Institute of Technology, Surathkal, Mangalore, Karnataka ('NITK'). The comparison charts and tables explaining the similarities between the infringing products of the Defendants and the elements of claims of the Plaintiff in the suit patent have been set out in para 26. It is stated in para 29 that "the cause of action for the present suit arose when the Plaintiff came to know in or around last week of December 2011 that the Defendants were manufacturing and marketing the Plaintiff's 'Twin Blade Razor' using identical technology and know-how as that of the Plaintiff's patent". The cause of action is said to have further arisen in January 2012 when the Plaintiff received the report of Professor K.V. Gangadharan from NITK. Apart from praying for a permanent injunction, the Plaintiff has also claimed damages in the sum of Rs.20 lakhs and for rendition of accounts and profits earned by the Defendants and delivery up of infringing goods for destruction.

The written statement of Defendant No.1

14. Summons in the suit and notice in the application IA No. 3997 of 2012 were issued on 2nd March 2012. Defendant No.1 in his written statement filed on 16th April 3012 stated at the outset that there was no cause of action disclosed against him in the plaint. He was neither manufacturing nor selling any twin blade razor. He stated that the Plaintiff was aware that Defendant No.1 had retired from the services of Defendant No.3 way back in 1998 and was not thereafter entitled to represent Defendant No.3. Defendant No.1 denied having any telephonic conversation or correspondence with the Plaintiff in respect of the suit patent either in his personal capacity or on behalf of Defendant No.3. Defendant No.1 alleged that the Plaintiff had fabricated the correspondence to mislead the Court. He contended that he was neither a necessary nor a proper party to the proceedings.

15. Defendant No.1 pointed out that the product 'Laser3Petals' and Topaz3' have been manufactured and marketed only by Defendant No.2 and not by Defendant No.3. He further pointed out that Defendants 5 and 6 are competitors of Defendants 2, 3 and 4 and, therefore, the suit is bad for misjoinder of parties. Defendant No.1 has also listed out the prior art in the US and Canadian patents as well as some Indian patents in terms of which, according to him, the claims made by the Plaintiff in the suit patent were in public domain and, therefore, not an invention within the meaning of the Patents Act, 1970 ('PA'). Reference is made to US Patent No. 4641429 (hereafter 'US Patent '429') filed on 24th December 1984 i.e. at least nine years before the date of fling of Patent No.184118. Reference is also made to US Patent No. 3724070 (hereafter 'US Patent '070') filed on 15th March 1971 which also showed the presence of holes in the lower blade and that the holes in the lower blade were partly covered by the upper blade. Canadian Patent No. 1101652 filed on 31st October 1978 showed that the lower blade and the holes therein extended forward relative to the cutting edge of the upper blade. Reference is also made to PCT Publication No. WO 1991/19596 (hereafter 'PCT 596') published on 26th December 1991 i.e. 18 months before the filing of the suit patent which was also related to a twin blade assembly with the lower blade edge extending outward of the shaving edge of the upper blade. Since the alleged novel feature of Patent No. 184118 was anticipated by PCT 596, Patent No. 184118 was rendered invalid. Reference is also made to US Patent No. 4345374.

The written statement of Defendant Nos. 2 to4

16. A written statement was filed by Defendants 2 to 4 on 9th April 2012. They also filed a counter claim, CC No. 14 of 2012, seeking revocation of Patent No. 184118 granted in favour of the Plaintiff. Apart from reiterating that the suit patent lacked novelty and is, therefore, invalid, they stated that Defendants 2 to 4 are among the leading companies manufacturing and marketing safety razor blades for more than sixty years enjoying tremendous goodwill and reputation in the market. They contended that Claim 2 of the suit patent stipulated a mathematical theory whereby an artificial and non- constructional feature i.e. a plane drawn perpendicular to the plane surface of the lower blade, the shaving edge of the upper blade lying on the said plane, whereby the plane intersects the lower blade into the first portion and the second portion, cannot be patented under Section 3(k) of the PA. Further, Claim 3 envisaged each hole being quadrilateral and not circular or square whereas the holes in the infringing products did not contain square holes. Claim 3 of the suit patent was not workable and not capable of industrial application and, therefore, not an invention under Section 2(1) (j) of the PA. Further, there was no demonstration in the suit patent that the feature under Claim 4 i.e. the spacer strip extending from one end to the other on the longitudinal axis and tapering towards the shaving edge of the upper blade was practically feasible even as a working model. Claim 5 of the suit patent was an omnibus claim with no standing on its own.

17. Defendants 2 to 4 further pointed out that in 1984, CS (OS) No. 873 of 1984 was filed by the Gillette Company U.S.A against Defendants 3 and 4 and others for infringing Indian patents granted in favour of Gillette which pertained to a twin blade shaving system. These facts are urged to show that a complete arrangement with a lower and upper blade and with lower blade having holes was already in the public domain and, therefore, the said feature of the impugned patent could not be termed as a novelty. It was submitted that apart from the patent being revocable under Section 64(1) (e), (f) and (g) it was also revocable under Section 64(1) (j) of the PA since the Plaintiff had appropriated technology from the public domain through a copy-paste method in order to obtain an unjust enrichment on false pretentions. Inasmuch as Claim 1 was not an invention, it was not patentable under Section 64(1) (k) of the PA.

The written statement of Defendant Nos. 5 and 6

18. Defendants 5 and 6 filed their written statement on 11th April 2012. They submitted that there was a memorandum of understanding executed between the three sons of late Mr. Harbans Lal Malhotra on 19th August 1995. There was a settlement between the Harbans Lal Malhotra group ('HLM Group') (Defendants 2 to 4) on the one hand and Vidyut Metallics Pvt. Ltd and Supermax Personal Care Pvt. Ltd (Defendants 5 and 6) ('the Supermax Group') on the other. It is stated that the HLM Group and the Supermax Group are independent groups and competitors. The plaint failed to disclose any common dispute or common transaction to which the Supermax Group were parties. The plaint disclosed that the Plaintiff had correspondence with Defendant No.1 only. No cause of action was disclosed against the Supermax Group.

19. Defendants 5 and 6 also contended that the suit was bad for misjoinder of parties and causes of action. In addition to the grounds urged by Defendants 2 to 4, Defendants 5 and 6 urged that the complete specification of the suit patent "does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention, as contained in the complete specification are not by themselves sufficient to  enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection and which constitutes a ground for revocation of the patent under sub-Section (h) of Section 64 of the Act." It was submitted that the grounds of revocation of the suit patent under Section 64 (1) (g), (i) and (j) are also attracted.

20. Defendants 5 and 6 raised the plea of delay and laches. It is stated that Defendant No.5 began independently manufacturing the twin blade razors with improvised computer controlled assembly machine in the year 1986. They were under the brands SuperMax SII, SuperMax Style, SuperMax Lubra and SuperMax Delux. It is stated that the research and development ('R&D') for the three blades and four blades razors commenced in 1994 and the designs were ready in 1998. Manufacturing of three blade razors commenced in 2000 and marketing soon thereafter. Four blade razors were sold since 2006. It is stated that the Plaintiff at that time was certainly "quite aware of the fact that Defendant No.5 were manufacturing and selling twin blade razors fitting the description of what the Plaintiff calls conventional razors in his patent specification." It is also submitted that the suit patent has not been worked for the last 18 years. It is contended that the Plaintiff has filed a vexatious litigation more than 12 years after the three blade razors of Defendants 5 and 6 were manufactured and introduced in the market. It is denied that the Plaintiff ever corresponded with Defendants 5 and 6. Therefore, there was no question of them having any access to his patent.

21. Defendants 5 and 6 have assailed the expert report of Professor K.V. Gangadharan of NITK. In particular, it is pointed out that his report is only based on a visual analysis of the components of each razor. It is submitted that Professor K.V. Gangadharan had only analysed the suit patent vis-à-vis the Gillette Presto razor as prior art and he had not analysed the suit patent vis-à-vis other prior art razors such as the twin blade razors manufactured by the Defendants 5 and 6 or the prior published patent documents. It is pointed out that he had not disclosed the parameters set by him to perform the alleged rinsing operation on the Gillette Presto razor and the alleged prototype working model of the suit patent; he had not mentioned the details and conditions for conducting such experiments including the test subjects; he had failed to disclose details of fluid characteristics, viscosity, composition of the slurry being in shaving debris and the co-efficient of flow which influenced the experiment and on which he had based his conclusions. It is submitted that the conclusion of Professor Gangadharan that the triple blade razor of Defendants 5 and 6 can be described as a combination of an upper twin blade razor and a lower twin blade razor was 'preposterous'.

22. In the written statements filed by Defendants 5 and 6 it is further pointed out that the only way to establish infringement was to compare a razor manufactured on the basis of the suit patent with that manufactured by Defendants 5 and 6 but no razor was in fact manufactured on the basis of the suit patent. It was pointed out that the technology and engineering design for the twin blade on one hand and three and four blade razors on the other are completely different considering the size, positioning and alignments of blades in twin, triple and quadra blades razors. It is submitted that in triple and quadra blades only about 10% of the hole is exposed whereas 90% of the hole remains covered by the upper blade and the protrusion in the holes is not because of the change in size or placement of the holes but because the size of the upper blades gradually decreases in size which leads to the holes in the lower blade getting slightly exposed without there being any change in the size and placement of holes. Importantly, it is pointed out that the lowest blade in the three and four blades have two rows of holes in comparison to one row of holes in the suit patent. The size of lower blades is bigger in three and four blades. Defendants 5 and 6 have also filed a counter-claim, CC No. 73 of 2012 seeking revocation of the suit patent.

23. The Plaintiff has filed replication to the written statements as well as written statements to the counter-claims.

24. Ms. Swathi Sukumar, learned counsel for the Plaintiff, Mr. Mohinder Rana, learned counsel for Defendant No.1, Mr. Amarjeet Singh, learned counsel for Defendant Nos. 2 to 4 and Mr. Sanjeev Mahajan, learned counsel for Defendants 5 and 6 have addressed arguments on the question of grant of interim relief.

General principles regarding grant of interim relief

25. On the question of grant of interim injunction it may be useful to recall the principles explained by the Supreme Court in Wander Limited v. Antox India Private Limited 1990 Supp (1) SCC 727 as under: "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience lies". The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

Prima Facie Case

26. The Court first proposes to examine whether the Plaintiff has made out a prima facie case for the grant of an interim injunction in his favour.

27. In response to the query by the Court whether a prototype was developed from the suit patent and whether that was used for comparison with the infringing products by the expert, Ms. Sukumar, the learned counsel for the Plaintiff, initially showed a wooden model, the photographs of which have been included at pages 406 to 408 of the Plaintiff's documents. Later she produced a prototype purportedly used by the expert while preparing his examination report. She stated that he examined a Gillette blade which was available in the market and which was modified to incorporate the suit patent. The expert does not say so in his report. He states that he was given a 'working model/prototype' by the Plaintiff. He does not describe what the model was or how it was made. It will also have to be explained by the expert on what basis the Gillette Presto blade stated to have been modified to incorporate the suit patent can be compared for infringement with the products of the Supermax Group. The abstract preceding the report of the expert states that the analysis is based on visual inspection and analysis of the function of components in the devices. The expert, however, fails to notice or comment on the fact that there is more than one row of holes in the lower blade in the triple and quadra blade.

28. It was then urged by Ms. Sukumar that in a patent infringement action, the comparison is between the claim under the suit patent and the infringing product and not between the patented product and the infringing product. However, even on this basis there are several unanswered questions at this stage. The allegedly infringing products of Defendants 2 to 6 are three-blade and four-blade razors whereas the suit patent is for a twin-blade razor. Samples of blades used in the triple-blade and quadra blades have been produced in the Court. It is seen that in a triple-blade, the first blade has one row of holes, the second blade two rows of holes and the third blade, three rows of holes. The size of the first lower blade is bigger than the upper blade and the size of the second lower blade bigger than the first and so on. The shape and positioning of the holes in each of the lower blades is different. The report of the expert relied upon the Plaintiff is silent on whether the expert noticed the above features i.e. the number of rows of holes, the size, position and alignment of blades in the twin blades as compared to the triple and quadra blades. He will have to be questioned at the trial on whether the protrusion of the holes are not caused because of the change in size or placement in the holes but because of the size of the upper blades gradually decreasing when compared to the size of the lower blades. In short, the question which is yet to be convincingly answered by the Plaintiff is whether the three-blade and four-blade razors of the Defendants have been manufactured by using the suit patent.

29. In support of the plea that a triple blade or a quadra blade is merely an extension of a twin blade, and that in any event the claims in the suit patent are not confined to a twin blade razor, Ms. Sukumar relied upon the decision dated 29th April 2005 of the US Court of Appeals in The Gillette Company v. Energizer Holding Inc. The Defendants pointed out that in the said case Claim No.1 of the patent in question described the invention as relating to "particular safety razor blade having blade units with plurality of blades". In the instant case, the first paragraph of the specification of the suit patent states "this invention relates to a twin blade razor". There is no reference to 'plurality' of blades. Para 29 of the plaint states that "the cause of action for the present suit arose when the Plaintiff came to know in or around last week of December 2011 that the Defendants were manufacturing and marketing the Plaintiff's twin blade razor using identical technology and know-how as that of the Plaintiff's patent."

Vulnerability of the suit patent

30. The Court next takes up the question of vulnerability of the suit patent to a challenge as to its validity. In F. Hoffmann-LA Roche v. Cipla Ltd. 159 (2009) DLT 243 a Division Bench of this Court was considering, in the context of the prayer for an interim injunction in a patent infringement action, the question whether the Defendant therein had raised "a credible challenge to the validity of the patent". The Court held out that "the Defendant resisting the grant of injunction by challenging the validity of the  patent at this stage is required to show that the patent is vulnerable and that the challenge raises a serious substantial question and a triable issue." The Court referred to the decision dated 22nd June 2006 of the U.S. Court of Appeals for the Federal Circuit in Abbot Laboratories v. Andrx Pharmaceuticals Inc. where it was held that "in resisting a preliminary injunction, however, one need not make out a case of actual invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is the issue at trial. The showing of a substantial question as to invalidity thus requires less proof than the clear and convincing showing necessary to establish invalidity itself."

31. The Plaintiff has admitted that two of the three features integral to Claim 1 of the suit patent are known features through the prior art. These are: (i) One lower blade separated from the upper blade by a spacer and (ii) Lower blade partly overlapped by upper blade. This is evident from the reply filed by the Plaintiff on 28th August 2001 to the opposition by Gillette at the pre- grant stage before the Deputy COP where he states "the use of spacer means is not the novel feature or claim of my invention of Patent No.184118. The provision of apertures or holes for the passage of lather and debris in the lower leading blade as in the conventional twin blade razors wherein all the holes/apertures are wholly situated beneath the upper blade is not the claim of my invention of Patent No.184118." The use of the twin blade system i.e. providing a razor with upper trailing blade and lower leading blade is also admitted by him to be known. What the Plaintiff claims as a novel feature is providing apertures or holes in the lower blade of twin blade shaving system such that one part of each of the holes lie in the portion of the lower blade situated beneath the upper blade and the remaining part of each hole lie in the remaining portion of the lower blade situated beyond (outside) the shaving edge of the upper blade.

32. Ms. Sukumar relied on Expanded Metal Company v. Bradford 214 U.S. 366 to urge that merely because the invention seems simple after it is made, it does not cease to be novel and that the person who first discovers and makes improvements is entitled to protection as an inventor. The Defendants argue that the prior art sufficiently depicts the partial covering of the holes and that the suit patent is revocable on the grounds of both anticipation and obviousness. At this stage, the Court proposes to discuss illustratively one such prior art referred to in the report of the expert produced by the Supermax Group. The said report refers to US Patent No. '070 and concludes that it shows the existence of partially covered and partially existing holes in the blades. In response, learned counsel to the Plaintiff relies upon the fact that the Deputy COP has in the order dated 14th December 2007 observed that in US Patent No. '070 the lower blade is fully covered by the upper blade and that no portion of the slots and holes in the lower blade are situated forward of any beyond the shaving edge of the secondary blade though they may be proximate to shaving edge. However, the expert produced by the Supermax Group states in his report that US Patent No. '070 is a "prior art showing debris formation proximate to the cutting edge". These are conflicting expert opinions that need to be tested at the trial. The Court is not required to express a final view at this stage. Likewise, there is serious contestation between the parties as regards the other prior art as well, all of which need not be discussed at this stage. Suffice to say that the material placed on record by the Defendants persuades the Court to hold that they have raised a credible challenge to the validity of the suit patent in terms of Section 64 (1) PA.

33. The challenge to the suit patent is also on other grounds. It is urged that it is not clear whether any prototype was examined at the stage of grant of patent. During the hearing it was sought to be explained by the counsel for the Plaintiff that under Section 10 (3) of the PA, the COP had the discretion to ask for a product to be developed for examination and that it was possible to grant a patent even without the product being developed. The novel aspect of the suit patent is purportedly the partial covering of the holes which facilitates easy clearing of the debris when the blade is washed with running water. How this can be verified by the COP without a working model is a matter for experts to explain at the trial.

34. In response to the submission of the Defendants 2 to 6 that the suit patent lacked the requisite complete specification, Ms. Sukumar referred to the decision in Corevalve Inc. Edwards Lifesciences [2009] All ER (D) 66 and submitted that the suit patent sufficiently described how the holes in the blade are designed to achieve the desired result of cleaning the debris and any person involved in manufacturing razors would easily be able to make a workable product out of the specifications. As against this, it is urged by learned counsel for the Defendants that in the above case there was no allegation that no workable device could be produced. A device did exist but its description was such that it could not be implemented clinically. The Defendants argue that in the present case there is no specification of either the size of the holes, the placement of the holes, the number of holes and the manner of achieving the result of the debris being removed by pouring water rather than forcing tap water and that these would be the very basic specifications for making a product on the basis of the suit patent. Given the nature of the product, in the present case, it cannot be concluded, without the matter going to trial, that the specification of the suit patent is sufficient to develop the infringing products.

35. There was much argument on the question whether the fact that the patent was not worked by the Plaintiff could be a ground for revocation of the patent. The Defendants placed considerable reliance Sections 83 and 85 of the PA and on the decision in Franz Xaver Huemer v. New Yash Engineers AIR 1997 Del 79. In response, it is submitted by Ms. Sukumar that the question of non-working of a patent is relevant only in the context of compulsory licensing of the patent which in the instant case has not happened. The Court keeps open these contentions as a decision thereon is not considered necessary for deciding the question of interim relief.

36. The Court holds that while the Defendants have been able to raise a credible challenge to the validity of the suit patent, the Plaintiff has not been able to prima facie show that the Defendants 2 to 6 were, in October 2003, aware of the specification of the suit patent and made the allegedly infringing products on that basis.

The case against Defendants 2 to 6

37. The respective cases of the parties show that the Plaintiff in the first place proceeded on the presumption that the Defendants were either related to each other or were associated companies. Importantly, the Plaintiff presumed that Defendant No.1 continued to be the CEO of Defendant No.3 even as of the date of filing the suit. In the replication filed to the written statement of Defendant No.1, the Plaintiff is unable to dispute the fact that Defendant No.1 has ceased to be an employee of Defendant No.3 since 1998. Defendants 2 to 4 have placed on record a letter dated 1st April 1998 addressed by Defendant No.3 to Defendant No.1 informing him of his retirement with effect from the close of business on 30th April 1998 and documents concerning payment of his gratuity. Prima facie it does show that Defendant No.1 was no longer an employee of Defendant No.3 at the time the Plaintiff purportedly wrote him on 8th October 2003.

38. While Defendant No.1 has completely denied that the Plaintiff wrote to him on 8th October 2003 and the telephone conversation with him on 14th October 2003, the Plaintiff relies on a letter dated 18th October 2003 written by Defendant No.1 acknowledging receipt of the Plaintiff's earlier letter dated 8th October 2003. Defendant No.1 has denied receiving the letter dated 18th October 2003 as well. The Plaintiff has placed on record a copy of the said letter. It is unsigned. The Plaintiff has on 10th September 2013 filed a copy of the cover bearing a postal stamp of 2nd October 2003 of the Post Office at Mangalore. This shows the sender to be Defendant No.3. It is by ordinary post. It will be for the Plaintiff to prove at the trial on the basis of these two documents that the said unsigned letter was in fact sent by Defendant No.1 in a cover bearing the name of Defendant No.3. At this stage, it is not possible to conclude that the said unsigned letter was in fact sent by Defendant No.1. This is an important document for the Plaintiff since it purportedly links Defendant No.1 and through him the remaining Defendants. There is admittedly no correspondence between any of the other Defendants and the Plaintiff. In this background, the burden will on the Plaintiff to show at the trial that despite the fact that Defendant No.1 ceased to be an employee of Defendant No.3 with effect from 1st May 1998, he continued to act on behalf of not only to Defendants 2 to 4 but also on behalf of Defendants 5 and 6 in October 2003.

39. The case of the Plaintiff is that Defendants 2 to 6 became privy to the suit patent specifications and drawings through Defendant No.1. In support of his plea that he sent to Defendant No.1 the complete specifications and drawings of the suit patent, the Plaintiff has placed on record copies of the handwritten letter dated 23rd October 2003 addressed to Defendant No.1 as 'CEO (Mr. Anand)' at the address of Defendant No.3 and the speed post receipts. Photocopies of the subsequent handwritten letters dated 29th October 2003, 27th December 2003 and 29th December 2003, all addressed to 'CEO (Mr. Anand)' at the address of Defendant No.3 have also been filed. All of these documents have been denied by Defendant No.1. Therefore, it would be a matter for proof at trial that these letters were in fact delivered to Defendant No.1 at the address to which it was sent. The further burden on the Plaintiff would be to show that Defendant No.1 in turn handed over or conveyed the contents of these documents to the other Defendants. At the present stage, the documents placed on record do not enable the Court to come to even a prima facie conclusion that the Defendants 2 to 6 were privy to the said information.

40. The Plaintiff then relies on information received by him from BSNL pursuant to an application under the Right to Information Act, 2005 ('RTI Act') about the outgoing calls from his telephone number 2231542 for the period 1st October to 30th November 2003. These show that three telephone calls were made: one on 28th October 2003, the second on 7th November 2003 and the third on 25th November 2003. The two calls on 28th October 2003 were to 03326549000, stated to be the number of Defendant No.5. The lengths of the two calls were 38 seconds and 31 seconds. There is no averment that Defendant No.1 was connected with Defendant No.5. Three calls were to Mobile No. 9831047909. It will be a matter for evidence as to whether this mobile number pertains to any of the Defendants. In any event, the telephonic conversations that the Plaintiff is said to have had as averred in para 15 of the plaint on 14th October 2003 does not appear to be established by the above call details. There is no outgoing call from the Plaintiff's number on 14th October 2003. In the plaint there is no reference to outgoing calls on 28th October 2003, 7th November 2003 and 25th November 2003. As regards the purported telephonic conversation with Defendant No.1 in January 2004, the Plaintiff relies on the call details obtained from the Dakshina Kannada District of BSNL which shows one call made on 12th January 2004 to Mobile No. 98310479091 for a brief duration. These details by themselves do not enable the Court to conclude even prima facie that the conversation pertained to the suit patent.

41. These are the prima facie conclusions of the Court. Certainly, the Plaintiff would have to discharge the burden of proving the facts as pleaded by him in the plaint. For the present purpose, however, the Plaintiff has not been able to even prima facie show that Defendants 2 to 6 would have known of the suit patent as a result of the Plaintiff's alleged correspondence and telephone conversations with Defendant No.1 in October 2003 and January 2004 and despite the latter having ceased to be an employee of Defendant No.3 since 1st May, 1998.

Delay and laches

42. The Court next examines the question of delay and laches. It has been explained by the Supreme Court in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 that mere delay in bringing an action is not sufficient to defeat the grant of injunction. However, it would have to be shown that the Defendants were dishonest in adopting the suit patent to manufacture the infringing product. As already observed, the Plaintiff has not been able to show that the Defendants 2 to 6 actually knew of the suit patent in October 2003 itself.

43 Ms. Sukumar referred to the decision in IXYS v. Advance Power Technology 321 F. Supp. 2d 1156 (N.D. Cal. 2004) to urge that since Defendants declined to obtain a licence from the Plaintiff, any delay on the part of the Plaintiff in filing the suit cannot be held against him since he was under a bona fide belief that Defendants would honour their decision not to use the suit patent. As already concluded, the Plaintiff has not been able to prima facie show that he ever corresponded with Defendants 2 to 6 and that they communicated to him their disinclination to obtain a licence for the suit patent.

44. The explanation that the Plaintiff gives for waiting till May 2012 to file the present suit is not very convincing. It is difficult to believe that a person who holds patents for several inventions, and has succeeded, in 2008, in obtaining a patent for a twin blade razor after pre-grant opposition, was not aware of similar products in the market till December 2011. The case of the Supermax Group is that they entered the market with the triple and quadra blades in 2000 and 2006 respectively. Their products have been sold throughout the country and abroad. The Supermax Group are proprietors of the trademarks SuperMax SII, SuperMax Style etc. since 1990 and SuperMax Sensation and SuperMax Lubra since 2000 and 2001 respectively. Defendants 2 to 4 have also shown that they are manufacturing their products pursuant to the patent granted in their favour which has not been challenged till date.

45. In the circumstances, the Court is of the view that the Plaintiff has not been able to sufficiently explain the delay in approaching this Court for the grant of interim injunction.

Balance of convenience and hardship

46. The Court next examines the factors of balance of convenience and irreparable hardship. Defendants 2 to 4 and 5 and 6 have produced the sales figures of their products which run into several crores annually. They submit that the grant of an interim injunction would effectively mean shutting down their business. Whereas the Defendants 2 to 6 would be in a position to compensate the Plaintiff if he ultimately succeeds, the Plaintiff would be in no position to compensate the monetary losses likely to be suffered by the Defendants 2 to 6 if ultimately he does not succeed. On the other hand, it is urged by Ms. Sukumar that since the suit patent expires in March 2014, the Plaintiff would suffer irreparable injury if the interim injunction is not granted. It is submitted that if the Court fails to issue an injunction, the Defendant would continue to use the products as if they have a licence for the suit patent and this would set an undesirable precedent for the other potential infringers apart from rendering the Plaintiff's prayer for a permanent injunction infructuous. Reliance is placed on the decision of the Supreme Court inZenit Metaplast Pvt. Ltd. v. State of Maharashtra (2009) 10 SCC 388.

47. Para 23 of the decision in Zenit Metaplast Pvt. Ltd. reads as under: "23. Interim order is passed on the basis of prima facie findings, which are tentative. Such order is passed as a temporary arrangement to preserve the status quo till the matter is decided finally, to ensure that the matter does not become either infructuous or a fait accompli before the final hearing. The object of the interlocutory injunction is, to protect the Plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial". (emphasis supplied)

48. The Plaintiff has not been able to dispute the sales figures of the triple blade and quadra blades since 2000 and 2006 respectively. The documents placed on record by the Defendants 2 to 4 and 5 and 6 show the sales figure for triple blades for the year ending 31st March 2010 was Rs.17,75,38,729 and for the quadra blades it was Rs.2,75,25,184.The Plaintiff filed the suit in December 2012 despite obtaining the patent registration in 2008. If at this stage an interim injunction is granted, the business of the Defendants 2 to 6 in the allegedly infringing products which commenced since 2000 and 2006 would undoubtedly be adversely affected. Also, in that event, the losses of the Defendants 2 to 6 cannot be expected to be adequately compensated by the Plaintiff if he ultimately does not succeed in the suit. In the period during which the Plaintiff has delayed the filing of the suit for infringement, the businesses of the Defendants 2 to 6 have grown significantly. This would be a factor that has to be taken into consideration in deciding where the balance

CS (OS) No. 523 of 2012 Page 26 of 28 of convenience lies. In American Cyanamid Company v. Ethicon Ltd. [1975] 2 W.L.R. 316 it was observed as under:

"the governing principle is that the Court should first consider whether, if the Plaintiff were to succeed at the trial in establishing his right to a permanent injunction, he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the Defendant's continuing to do what was sought to be en joined between the time of the application and the time of the trial. If damages in the measure recoverable at common law would be adequate remedy and the Defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the Plaintiff's claim appeared to be at that stage. If, on the other hand, damages would not provide an adequate remedy for the Plaintiff in the event of his succeeding at the trial, the Court should then consider whether, on the contrary hypothesis that the Defendant were to succeed at the trial in establishing his right to do that which was sought to be enjoined, he would be adequately compensated under the Plaintiff's undertaking as to damages for the loss he would have sustained by being prevented from doing so between the time of the application and the time of the trial. If damages in the measure recoverable under such an undertaking would be an adequate remedy and the Plaintiff would be in a financial position to pay them, there would be no reason upon this ground to refuse an interlocutory injunction."

49. The Court concludes that the balance of convenience in declining the interim relief sought by the Plaintiff is in favour of the Defendants. However, the Defendants 2 to 6 are directed to maintain full accounts of the sales of the respective products listed in para 22 of the plaint as reflected in the audited accounts from the date of filing of the suit and shall produce those accounts at the trial. If the Plaintiff succeeds in the suit, the damages payable to him would be determined on that basis.

50. It is clarified that nothing said in this order will affect the final decision in the suit.

Conclusion

51. IA No. 3997 of 2012 is dismissed with the above directions and observations with no order as to costs.

S. MURALIDHAR, J.

DECEMBER 12, 2013