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
