Recent Grant of Patent is Valid Ground of Defence for Refusal of Interim Injunction in Infringement Suits: Galatea Ltd & Anr. V. Diyora and Bhandari Corporation & Ors.

BRIEF FACTS

Plaintiffs are Israeli companies, engaged in the business of developing and providing inclusion scanning methods in rough diamonds and the Defendants are Indian companies are also engaged in the business of manufacturing and providing inclusion scanning services and in some cases are engaged in selling of inclusion scanning machines and rendering inclusion scanning services to its customers. The Plaintiffs claimed infringement of their suit patent by the Defendants by using of infringing machines, directly or indirectly. An ex-parte interim injunction prayed by the Plaintiffs was rejected by the Ld. Single Judge on the ground that the Plaintiffs have not fulfilled the prima facie conditions necessary for an ex-parte injunction. The said Order rejecting the injunction was challenged in Gujarat High Court.

 CLAIMS

 Plaintiffs claimed that previous several inventions have been made to the presence of inclusions in transparent and partly polished stones through imaging but none could determine the exact location of the inclusion since refractive index of the stone and the air lead to generation of multiple images produced by a single inclusion further more inventions took place to reduce the refraction and to obtain accurate location of inclusions but they also failed. Plaintiffs’ claims to have invented an apparatus and a method which are the subject matter of Plaintiffs’ suit patent and the Defendants are manufacturing or procuring, importing and selling duplicate/infringing machines. They are using such machines to provide services to third parties.

JUDGEMENT OF LEARNED SINGLE JUDGE 

By the judgement dated 26.03.2008, Ld. Single Judge rejected the interim injunction application of the Defendants on the following ground:

  1. On the basis of commissioner’s report, no apparatus was found in the machine of the Defendants which would infringe Plaintiffs suit patent prima facie and the said machine is liable to be tested and after such only it can be determined whether infringement has taken place or not.
  2. The suit patent was considered to be new in the sense that it is granted on 22.2.2016 and its validity is yet to be adjudicated.
  3. Patents which are granted to the Plaintiffs in other countries cannot be made basis of an action of infringement in India.

Similarity in the end results of the machine does not determine the infringement

  1. Defendants pleaded against the use of vacuum pump or any apparatus for removal of bubbles and only because the end result of the two machines is the same, would not constitute infringement of the Suit Patent.
  2. The Defendants were directed to maintain separate accounts for sale of any machines manufactured and/or sold by any of the defendants and restrained them from using any device for bubble removal in their machines till final disposal of the suit.

Appeal was preferred by the Plaintiffs against such Order of the Ld. Single Judge.

APPEAL BEFORE DIVISION BENCH

Interpretation of Section 107(1) and 64 of Patents Act

Mere grant of patent would not give an indefeasible right to the plaintiffs to enforce the patent in a suit and to claim the interim injunction pending such suit. If the patent is old time tested one, existing since long, the Court would consider it with due regard and would lean in favour of enforcing it in absence of any other reason to the contrary. On the other hand, if the patent is relatively new, the Court would be slow in enforcing it at the interim stage, unless shown to be beyond vulnerability. In the context of patent being new or old, the Courts have often employed a yardstick of six years time. The Bench relied on judgments of TVS Motor Company Limited(supra), V. Manioka Thevar v. Star Plough, TEN DC Wireless Inc and Anr. V. Mobi Antenna Technologies (Shenzhen) Co Ltd Works, Melur.

 Essentials for deciding to grant or refuse an injunction in a Patent infringement suit are:

  1. Whether patent is an old time tested one or a recent one?
  2. Whether the person interested have either applied for revocation of the patent or opposed the patent in the suit?
  3. Whether in such proceedings the defendants have made out a prima facie case of vulnerability of the patent on any of the grounds otherwise available for revocation of the patent such as lack of any innovative step or existence of prior art?

Held

The Bench held that the predominant prima facie feature of the patented apparatus and method invention claimed by the Plaintiff is the vacuum pumps which remove the impurities and bubbles to eliminate the possibility of third refractive index which removes distortion in images of inclusions in the gemstone.  Controller’s report was also taken into account that vacuum pumps are essential part of the suit patent and Defendants also stated that they are not using vacuums pumps in their device which was also revealed from the Court Commissioner’s report who, at the time of inspection, did not find any device containing vacuum pumps.

Most integral reasoning given by the Court for refusing the interim injunction to the Plaintiffs was that the Patent itself is a recent one and has not been previously tested in court of law, also the Defendants have succeeded in demonstrating the vulnerability of the suit patent by citing various similar techniques used widely for of inclusion in gemstones. Considering all factors and arguments, the Hon’ble Court refused the interim injunction since it was found that prima facie case, irreparable loss and balance of convenience bends towards the Defendants, at the present stage.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] R/APPEAL FROM ORDER NO. 109 of 2018, High Court of Gujarat

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