Asian Electronics Ltd. vs Jumbo Electric Company
2009 Latest Caselaw 4625 Del

  *           IN THE HIGH COURT OF DELHI AT NEW DELHI

                                          Date of Reserve: October 09, 2009
                                          Date of Order: November 12, 2009

+IA Nos. 7337/08 & 10574/08 in CS(OS) 1177/2008
     %                                                  12.11.2009
         ASIAN ELECTRONICS LTD.               ..... Plaintiff
         Through: Mr. Shekhar Gupta, proxy counsel
                  Mr. Gaurav Barathi, Adv.

                      versus

         JUMBO ELECTRIC COMPANY                            ..... Defendant
         Through: Ms. Deepika Marwaha with
                  Ms. Themthingla, Advs.

         JUSTICE SHIV NARAYAN DHINGRA

1.       Whether reporters of local papers may be allowed to see the
         judgment?                                           Yes.

2.       To be referred to the reporter or not?                          Yes.

3.       Whether judgment should be reported in Digest?                  Yes.

         ORDER

1. The plaintiff had filed this suit for permanent injunction

to restrain the defendant from infringement of plaintiff's patent

no.193488 in respect of "conversion kit to change fluorescent

lighting units inductive operation to electronic operation". The

plaintiff has also prayed for issue of an injunction against the

defendant restraining defendant from manufacturing, selling,

distributing conversion kit embodying the plaintiff's registered

patent and from infringing plaintiff's copyright in industrial drawings

in respect of lighting unit and conversion kit and sought an order for

delivery up for destruction of all lighting units and conversion kits,

dies, labels, printed materials such as brochures, etc. and to render

accounts.

2. The plaintiff had moved an application for interim

injunction. An ex parte interim injunction was granted in favour of

the plaintiff restraining defendant from manufacturing, selling,

distributing the lighting system or conversion kit embodying

plaintiff's registered patent. The local commissioner was also

appointed by the Court to prepare inventory of goods. Thereafter

defendant moved an application under Order 39 Rule 4 CPC for

vacation of the injunction.

3. A perusal of the plaint of the plaintiff would show that

the plaintiff has claimed that it got a patent no.193488 registered in

respect of a conversion kit fitted with holders/pin for fluorescent

lighting units with electronic blast circuit. In the body of the plaint,

plaintiff had explained what its invention means and had also given

the claim plaintiff lodged with the patent office. The plaintiff

submitted that it also got its invention registered with US Patent

office vide no. 6100638 and had made application with Europe,

Korea and Canada. It is stated by the plaintiff that the defendant

was manufacturing and selling the identical conversion kits for

lighting units with electronic blast operation embodying claims of

the plaintiff's patent and such a conversion unit was purchased by

the plaintiff (manufactured by the defendant) from an electrical

shop in Delhi. It is stated that this unit was a copy of plaintiff's

patented product and embodied the patented product of the

plaintiff. Plaintiff had not granted a license to the defendant for the

use of the said patent and therefore manufacturing of lighting units

and conversion kits by the defendant was unauthorized and illegal

and amounted to infringement of plaintiff patent rights.

4. In order to consider the claim of the plaintiff and if there

was an infringement of patent of the plaintiff by the defendant it is

to be understood as to what is the invention claimed by the plaintiff.

5. In the field of electric appliances and lighting units

efforts are being made by industry to produce such appliances and

lighting system which are more energy efficient and this effort is

being made by different companies and individuals. The

conventional tube light being used in offices and homes earlier was

technically described as T12. This tube light has dimensions in FPS

system and its wattage is normally 36 to 40. In order to produce a

spark between the two ends of fluorescent tube an electro-magnetic

ballast used to be employed through a device which is normally

known as "choke" and a starter is used to initiate the ballast. This

fluorescent tube was considered to be more energy consuming

because of the length of the tube and the length of the spark to be

produced and because of the electro-magnetic device producing

ballasts. Instead of this tube of T12 standard, a sleeker and shorter

length tube known as T5 was introduced and instead of a device

creating electric-magnetic ballast, an electronic devise to create

electronic ballast was invented. These two inventions namely sleek

tube T5 and invention of electronic device to create electronic

ballast do not go to the credit of the plaintiff. The plaintiff has not

invented either T5 tube or the electronic ballast device. What is

claimed is that T5 tube, being shorter in length, could not be fitted

in the existing fitting of T12. If one wanted to use T5 tube one had

to change the fitting and if one wanted to use electronic device

instead of electro-magnetic ballast one had to replace the choke

with electronic ballast. The plaintiff claimed that it developed a

conversion kit with two pin unit fitted on both sides and the

electronic ballast fitted either on one side or within the wiring on the

strip so that in the existing fitting of T12, this new fitting with

adopter on both sides could be plugged in and a T5 tube could be

fitted into the conversion kit with the result that on the existing T12

fitting one could use T5 tube with electronic ballast. Claim no.1 as

given in para 10 of the plaint about the invention makes it

abundantly clear that the conversion kit developed by the plaintiff

was to the above effect. Para 10 of the plaint is as follows:

"Claim 1:

Conversion kit to change the fluorescent lighting units from inductive operation to electronic operation, comprising, a pair of sleeve-like adaptors which are adapted to be mounted at the ends of a straight T5 fluorescent lighting tube of shortened length, and a wiring assembly for electrically connecting the adapters, the structural components forming the electronic ballast being mounted in one or both of the adapters, or being mounted in the wiring assembly."

6. However, perusal of para 11 of suit shows that the

plaintiff also made a deceptively wrong claim in the plaint when it

claimed that Mr. Shah developed a new fluorescent lamp. The claim

reads as under:

"Mr. Shah not only developed a new fluorescent lamp but also achieved the advantage of providing lamps that do not flicker, that are long-lasting and consume less electricity. These lamps are energy efficient since they consume 35% less energy and can be easily fitted into the current systems without any further rewiring."

7. So-called invention of plaintiff did not have any of the

attributes as mentioned in para 11. Neither Mr. Shah had developed

a new fluorescent lamp nor he had developed any device of energy

saving. What Mr. Shah had done was to assemble already existing

devices into a conversion kit so that the tube T5 could be used in

existing fittings of T12.

8. The defendant is also marketing a conversion kit which

allows a person having fitting of T12 to use a tube of T5 and to use

electronic ballast instead of electro-magnetic ballast. The question

which arises is whether the defendant is guilty of infringement of

the patent of the plaintiff.

9. Merely by deceptively worded pleadings one cannot

achieve the object of stopping another from producing a product

which is not violative of plaintiff's patent. In order to show that the

defendant has violated the plaintiff's product, the plaintiff was

supposed to give analysis of its patent and show that the invention

claimed by it involved some technical/scientific advance as

compared to the existing knowledge and it was not obvious to a

person having skill and knowledge in electronic and electrical field.

10. Adopters are known to the technical word from time

immemorial. The electric voltage used in USA and some other

European countries for domestic purpose is 120 volts while the

voltage being used in India and some other Asian countries is 240

volts. All such electrical appliances manufactured in USA and some

other countries are based on 120 volts system. All such domestic

appliances which work on 120 volts are used in India and other

countries with the help of adopters. The adopters are also

otherwise used because of different nature of electrical fittings used

in Europe and in India. The adopters are used not only in the field of

electric fittings but are used in mechanical and electronic fittings.

Thus, use of adopters and conversion kits is neither a new idea nor

is something unknown to the public. Any person having technical

knowledge of electrical engineering/electronic engineering can

create adopters so that, the electronic gadgets or devices being

used in one country can also be used in other countries. Creating of

an adopter (conversion device) is not an IPR offence unless it

involves copying of a unique electronic circuit invented by someone.

If the plaintiff had to establish a case that its patent had been

violated then plaintiff was supposed to specify those innovative

steps which were created by the plaintiff which could not have been

conceived by a person having skill and technical knowledge of the

trade but had been copied from patent of plaintiff. The plaintiff has

not specified such violation by the defendant. There is no bar in

using existing inventions by other persons, so there could be no bar

on using T5 tube or electronic ballast by the defendant or any other

person. If the circuit of the electronic ballast device as invented by

the plaintiff had been copied by the defendant, the plaintiff could

have been justified in complaining of violation of a patented

product. But it is not the case of the plaintiff that he even invented

an electronic ballast circuit or it had a patent of the electronic

ballast circuit. Connecting two wires to the electronic ballast device

which go to the pins of the strip where tube is fitted, does not

amount to an invention or innovative steps. Any person having a

little knowledge of electrical can do this. Moreover, if a patent of a

device is registered it does not bar development of alternative

devices and substitute technologies nor it shut out others from

using existing inventions which have been used by the plaintiff, for

creating another conversion device. The plaintiff has no monopoly

either over the electronic ballast or over T5 tube. Plaintiff had come

out with a conversion kit. The defendant had also come out with a

conversion kit. Merely because defendant had come out with a

conversion kit does not mean that the defendant has copied the

invention of the plaintiff.

11. The plaintiff has also failed to show how the defendant

has copied the invention of the plaintiff. The plaintiff has not

presented the circuit which was invented by the plaintiff for its

conversion device. The word retrofit is being used in the market by

several other players and retrofit cannot be a trade mark or

monopoly of the plaintiff. A perusal of documents filed by the

defendant would show that such conversion devices were being

commonly used in the market. The defendant has placed on record

the catalogue and literature of company CH Lighting which has been

marketing and selling conversion devices. The plaintiff has also

placed on record that there was an already existing patent of retrofit

of Metric Lamp to existing fluorescent lighting

fixture in favour of Schmidt, Peter, Michael and Norris, Roger Erle

since April, 2004. Senergy Solutions was also marketing conversion

kits. Morning star Light, Jain industrial lighting corporation, Raj

Electricals, Myna Electronics Ltd., Light India all were supplying

conversion devices.

12. I consider that by getting a patent in respect of a

conversion kit (retrofit) created by the plaintiff, the plaintiff does not

get monopoly that nobody else can produce conversion devices so

that T5 tube can be used in existing T12 fittings either coupled with

electronic ballast or without electronic ballast. I find no force in the

injunction application. The application is hereby dismissed.

Consequentially, the ex parte injunction granted by this Court vide

order dated 16th July, 2008 stands vacated and application (IA No.

10574/2008) under Order 39 Rule 4 CPC is allowed.

13. The views expressed hereinabove are only prima facie

and shall not affect the merits of the case.

CS(OS) No. 1177/2008

List before the Joint Registrar on 16th February, 2010 for

admission/denial of the documents.

November 12, 2009                           SHIV NARAYAN DHINGRA J.
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